The Complainant is Philip Morris Products S.A., Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondents are Geroge Manaros, United Kingdom, Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / John Tikis, United Kingdom, self-represented. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2019. On November 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 12, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 22, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 22, 2019. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on November 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2019. The Response was filed with the Center on December 10, 2019. On December 16, 2019, the Center received an unsolicited supplemental filing from the Complainant. On December 19, 2019, the Center received an unsolicited supplemental filing from the Respondents. The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on December 20, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is the Swiss subsidiary of Philip Morris International Inc., which is an international tobacco company, with products sold in approximately 180 countries, and a large brand portfolio including the worldwide reputed trademark MARLBORO. The Complainant and its group have developed various products to substitute combustible cigarettes, one of them identified by the trademark IQOS, which was launched in Japan in 2014 being now sold in 51 markets across the world. The product identified by the mark IQOS is a controlled heating device, collectively referred as IQOS System, consisting of a pocket charger specially designed to charge a specific holder, into which specially designed tobacco products, identified by the trademarks HEET, HEETS or HEATSTICKS, are inserted and heated to generate a flavorful nicotine-containing aerosol. The Complainant holds a large portfolio of registered trademark rights in the marks IQOS, HEET, HEETS and HEATSTICKS (denominative, with specific graphic representations or in combination with other words), in many jurisdictions, of which the following are sufficiently representative for the present proceeding: - International Trademark No. 1218246 IQOS, word mark, registered July 10, 2014, in classes 9, 11 and 34, designating, among other jurisdictions, the European Union; - International Trademark No. 1217386 HEATSTICKS, word mark, registered July 21, 2014, in class 34, designating, among other jurisdictions, the European Union; - International Trademark No. 1312086 HEET, word mark, registered May 17, 2016, in classes 9, 11 and 34, designating, among other jurisdictions, the European Union; - International Trademark No. 1326410 HEETS, word mark, registered July 19, 2016, in classes 9, 11 and 34, designating, among other jurisdictions, the European Union; - International Trademark No. 1328679 HEETS, figurative, registered July 20, 2016, in classes 9, 11 and 34, designating, among other jurisdictions, the European Union; - European Union Trademark No. 013172581 HEAT NOT BURN TECHNOLOGY, word mark, registered July 25, 2016, in class 34. The disputed domain name Key contentions of the Complaint may be summarized as follows: Through its intensive use and promotion, with a USD 6 billion investment, the trademarks IQOS, HEET, HEETS and HEATSTICKS have achieved considerable international success and reputation with approximately 8 million relevant consumers. The IQOS System has been almost exclusively distributed through the Complainant’s IQOS stores and websites, as well as selected authorized distributors and retailers. In connection to these allegations, various excerpts from the Complainant’s corporate website under the domain name The fact that both disputed domain names refer to the same website shows that both are under the same control, and the content of this site reveals that the disputed domain names are related to a prior proceeding under the Policy, regarding the domain names The disputed domain names are confusingly similar to the Complainant’s trademarks HEET, HEETS and HEATSTICKS. The Complainant’s trademarks are recognizable in the disputed domain names regardless of other terms included in them. The terms “heet”, “heets” or “heat” are not commonly used to describe tobacco products, and, while the disputed domain names include the term “heat” (instead of “heet”), the combination of this term (“heat”), with the terms “my” and “products” and its position in the middle, indicate that the term “heat” refers to the kind of products offered through the disputed domain names. Further, the term “heat” is phonetically similar or identical to “heet”, being a common misspelling of the Complainant’s marks, and the content of the website associated to the disputed domain names corroborates that the disputed domain names target the Complainant’s trademarks. Furthermore, the generic Top-Level Domains (“TLDs”) “.com” and “.shop” are standard registration requirements normally disregarded under the first element confusing similarity test. The Respondents lack rights and legitimate interests in the disputed domain names. The Complainant has not licensed or otherwise permitted the Respondents to use its trademarks or to register the disputed domain names, and the Respondents are not making a legitimate noncommercial or fair use of the disputed domain names. The website linked to the disputed domain names does not meet the requirements for a bona fide offering of goods by resellers or distributors (set out by numerous panel decisions, being the leading case Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903), and the Respondents’ behavior show a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the Complainant’s trademarks. The Respondents are not only offering the Complainant’s products, but also competing products of other commercial origin illegitimately using the Complainant’s IQOS trademark, as well as the Complainant’s products imported from other jurisdictions (like Japan) without the Complainant’s consent, and the disputed domain names suggest at least an affiliation with the Complainant and its trademarks. The Website linked to the disputed domain names does not reveal its provider’s identity and presents a high number of the Complainant’s official product images (without authorization) claiming copyright in this material. This site includes a disclaimer positioned at the bottom of the site, which is inaccurate, as well as not sufficiently clear and prominent, highlighting the Complainant’s trademarks in capital letters and hiding the information about the lack of endorsement by the Complainant in the middle of the text. The disputed domain names were registered and are being used in bad faith. The Respondents chose the disputed domain names targeting the Complainant’s marks and creating a misleading association with the Complainant. The Respondents’ use of the disputed domain names, in a website that allegedly offers online the Complainant’s products, evidences that the Respondents knew of the Complainant’s trademarks when registering the disputed domain names. Further, the terms “heet”, “heets” and “heatsticks” are not commonly used to refer to tobacco products, being unique to the Complainant, and the provider behind the website linked to the disputed domain names has a history of registering domain names incorporating the Complainant’s trademarks in bad faith. The use of the disputed domain names evidences the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademarks, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The intensive unauthorized use of the Complainant’s official marketing material claiming copyright in this material, the fact some of the products offered on the Website are competing or products infringing the Complainant’s rights in the IQOS trademark, as well as the use of a privacy protection service to hide the Respondents’ identity, are further evidence of the Respondents’ bad faith. The Complainant has cited previous decisions under the Policy as well as various paragraphs of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) that it considers supportive of its position. The Complainant requests the transfer of the disputed domain names. B. Respondents The Respondents do not reveal its identity and contact details (except for the name “G Manaros” and the email address confirmed by the Registrar as the registrant’s email address), filing the common Response under the name “Registration Private”, providing the contact details of DomainsByProxy.com. Key contentions of the Response may be summarized as follows: The Respondents’ website clearly indicates the lack of affiliation with the Complainant and its trademarks. The Complaint contain misleading statements and false information using images (screenshots), which correspond to a previous proceeding, and cannot support this case. The tobacco and tobacco related market sector is full of “Heated Products” and their derivatives. “Heated sticks” are being produced on a mass scale by several companies. Particularly, concerning the HEALCIER Products, the Respondents’ business is an official reseller of non-nicotine, tealeaf heated tobacco sticks, which are produced and licensed in the Asian market, and which are not related to the Complainant. The Respondents’ business is a reseller of legitimately purchased items, aimed solely at a closed market. This business consist of scouting Internet offers of the Complainant’s products or other competing products on legitimate websites such as Japanese Private Shoppers and Kiosks, allowing the visitors of the Respondents’ website to purchase such items directly from the advertised stores or via the Respondents’ website platform under a small fee. There is no trademark infringement since all copyright or ownership matters have been clearly indicated in the website’s disclaimer. The disputed domain names do not refer to the Complainant’s trademarks. The words “my heat products” do not refer to the Complainant’s trademarks, and the word “heat” is not related to the mark HEET. A simple search on the Internet in Google for the word “heat” shall only reveal results relevant to heating and boiling systems. The disputed domain names do not divert traffic from the Complainant’s website under The Respondents do not provide any evidence in support of the above allegations, and requests the Panel to deny the transfer of the disputed domain names. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has authority to decide the dispute. Paragraph 15(a) of the Rules provides that “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. The Panel has taken into consideration all of the evidence, annexed material and submissions provided by the Parties, and has performed some limited independent research under the general powers of the Panel articulated inter alia in paragraphs 10 and 12 of the Policy. See section 4.8, WIPO Overview 3.0. A. Consolidation of the Complaint against Multiple Respondents Under the general powers of the Panel articulated in paragraph 10(e) of the Rules, this Panel admits the consolidation requested by the Complainant of the Complaint against two Respondents. The Panel considers that the disputed domain names are linked to the same website, and are subject to common control, as corroborates the Response filed by the Respondents, under a common private name (“Registration Private”) and referring to a common business, as well as the Registrar verification, which have revealed same contact details for both disputed domain names. The Panel further considers fair, equitable and procedurally efficient to permit the consolidation. See section 4.11.2, WIPO Overview 3.0. B. Supplemental Filings of the Complainant and the Respondents Under the general powers of the Panel articulated inter alia in paragraphs 10 and 12 of the Rules, the Panel is vested with authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition, being at its sole discretion to request any further statements or evidence considered necessary to decide the case. The panels have repeatedly affirmed in other prior decisions under the Policy that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some “exceptional” circumstance). See section 4.6, WIPO Overview 3.0. However, the Parties have not provided any justification in this respect. The Panel considers that the Supplemental Filings of the Parties are not relevant to decide the case, as most of the information they contain was included in this proceeding’s prior submissions (the Complaint and the Response, respectively). Therefore, the Panel do not admit the Supplemental Filings of the Parties. A. Identical or Confusingly Similar In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. In such cases, the addition of terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element, although the nature of such additional term(s) may bear on assessment of the second and third elements. Further, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered confusingly similar to the relevant mark if it contains sufficiently recognizable aspects of that mark, and employing a misspelling in this way, normally, signals an intention (typically corroborated by infringing website content) to confuse users seeking or expecting the complainant. See sections 1.7, 1.8 and 1.9, WIPO Overview 3.0. Further, the applicable generic Top-Level Domain (“gTLD”) in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test, irrespective of its particular ordinary meaning, although said meaning may be relevant to the assessment of the second and third elements. See section 1.11, WIPO Overview 3.0. The Complainant indisputably has rights in the registered trademarks HEET, HEETS and HEATSTICKS. The disputed domain names use the term “heat” which is very similar to the Complainant’s trademarks. The substitution of the second letter “e” in the term “heet” for a letter “a” is a common misspelling of the marks HEET and HEETS, as both terms, “heat” and “heet”, are phonetically identical. The Panel notes that “heat” is an English word included in the dictionary but this is not relevant for the purpose of the analysis under the first element. It is further to be noted that part of the Complainant’s trademarks use as well the term “heat” (HEATSTICKS or HEAT NOT BURN TECHNOLOGY). Further, the disputed domain names add the terms “my” and “products” that do not avoid confusing similarity with the Complainant’s trademarks. The dominant features of the Complainant’s marks are recognizable in the disputed domain names, and the gTLDs “.com” and “.shop” are technical requirements, generally disregarded for the purpose of the analysis of the confusing similarity. Accordingly, this Panel finds that the disputed domain names are confusingly similar to the Complainant’s marks, and the first element of the Policy under paragraph 4(a)(i) has been satisfied. B. Rights or Legitimate Interests Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, prior UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden production of rights or legitimate interests in the disputed domain name to the Respondent, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests. The Complainant has alleged that the Respondents have no license or authorization to use the Complainant’s trademarks and are not making a legitimate noncommercial or fair use of the disputed domain names, showing a clear intent to obtain an unfair commercial gain, not meeting the requirements set out by Oki Data Americas, Inc. v. ASD,WIPO Case No. D2001-0903, followed by numerous decisions under the Policy, for a bona fide offering of goods by resellers or distributors. This effectively shifts the burden to the Respondents of producing rights or legitimate interests in the disputed domain names. Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in the disputed domain name by demonstrating, without limitation: “(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The Respondents have confirmed that the disputed domain names are used in connection to a common business consisting of reselling the Complainant’s products among those of other competitors in the same market sector. The Respondents have even indicated being official resellers of other trademarks unrelated to the Complainant (like the trademark HEALCIER), which compete with the Complainant’s trademarks and products. Resellers or distributors, using a domain name containing the complainant’s trademark (or its dominant features) to undertake sales related to the complainant’s goods or services, may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name, if the following cumulative requirements are meet: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to “corner the market” in domain names that reflect the trademark. The analysis of these requirements is commonly known as the “Oki Data test” (referring to Oki Data Americas, Inc. v. ASD,WIPO Case No. D2001-0903). See section 2.8, WIPO Overview 3.0. The evidence in the file shows the disputed domain names are linked to a website, which indicates in its heading and its content as its owner “e-heatproducts.com”, not providing any further indication of its owner’s identity or contact information. This website allegedly offers online sale of the Complainant’s genuine products, including products imported from jurisdictions outside the European Union (with no authorization from the Complainant), and products recognized by the Complainant as made by third parties using its trademark IQOS with no authorization, as well as competing products unrelated to the Complainant (as the Response has corroborated). The Respondents’ names, according the Registrar verification, do not appear in this website, not providing any reference or details regarding the ownership of the site or that of the disputed domain names. Further, this website only acknowledges the Complainant as the real owner of the trademarks IQOS, MARLBORO and HEATSTICKS in an unclear and inaccurate disclaimer placed at the bottom of the site. As the Complainant has alleged, the above-mentioned disclaimer highlights the Complainant’s trademarks in capital letters including the information about the Complainant in the middle of a long sentence, and contains incorrect information about the ownership of the trademarks. Further, its position at the bottom of the site does not guarantee all Internet users acceding the site may notice it, and the Panel notes that said disclaimer does not contain any reference to the marks HEET or HEETS. Therefore, the Panel considers that this disclaimeris unclear, inaccurate and insufficiently prominent to avoid the affiliation with the Complainant. While the Panel notes the Respondents’ claim that there are other producers of “Heated Products” or “Heatsticks”, the Panel also notes that “my heat products” is different to “my heated products” or to “my heated sticks” (that “my heat products” does not seem to be the natural combination of these words in English for the meaning intended by the Respondent, also noting that in “my heated products”, “heat” would be a verb while in the disputed domain name it seems “heat” would be referring to a noun or to a brand for the products) and that some of the Complainant’s trademarks are HEATSTICKS, HEETS and HEET. The Panel further considers that the use of the disputed domain name linked to a website containing official images of the Complainant’s products (including products with the mark HEETS) is on the balance of probabilities a use targeting the Complainant’s trademarks which in the circumstances of the case shows the Respondent’s bad faith under the Policy. The Panel further notes the Respondents’ allegations are insufficient to rebut the Complainant’s case and that the Respondents are not providing any evidence connected to their allegations. All the above-mentioned circumstances lead the Panel to conclude that the Respondents have not produced relevant evidence to rebut the Complainant’s prima facie case, and all this case cumulative facts and circumstances point to consider that the Respondents lack of any rights or legitimate interests in the disputed domain names. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established. C. Registered and Used in Bad Faith The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name “has been registered and is being used in bad faith.” At the time of the disputed domain name’s registration, this Panel considers unlikely that the Respondents did not know about the Complainant’s trademarks HEET, HEETS, HEATSTICKS and IQOS, and did not have them in mind. Several factors in this case lead to this conclusion. The Panel notes the extensive presence of the Complainant’s trademarks over the Internet, as well as the extensive use of these marks worldwide, including United Kingdom, where the Respondents are apparently located, according to the information received by the Registrar, and the rest of the European Union, where the Respondents apparently operate, according to the website content linked to the disputed domain names. The Complainant’s trademarks are being used and extensively promoted worldwide for more than five years in 51 jurisdictions. Further, the Panel notes the continued use of the trademarks HEET, HEETS, HEATSTICKS and IQOS in United Kingdom as well as in the rest of the European Union, according to the information provided in the Complainant’s corporate website (under the domain name The Panel further notes the term “heet” is a fanciful term, purely imaginative, not being commonly used in the tobacco industry, and the term “heat” is not commonly used in the tobacco sector, unless referring to “tobacco heating or heated products”. The Panel, in use of the general powers articulated in the Policy, has conducted several searches over the Internet for the terms “heet”, “heets”, “heet products”, as well as “heat” and “heats products”. However, noting the evidence in this case and its circumstances, the Panel finds that the disputed domain names were registered with the Complainant’s trademarks in mind seeking to create an association with them by intentionally attempting to attract, for commercial gain, Internet users to their web site by creating a likelihood of confusion with the Complainant’s trademark. Under these circumstances, the disputed domain names incorporate the Complainant’s trademark HEET with a common misspelling, which intrinsically creates a likelihood of confusion or at least a high risk of implied affiliation, adding the descriptive terms “my” and “products”, which also may point to the Complainant’s notorious trademarks, as a general indication of its product range. In addition, the disputed domain names are used in connection to a website that refers and allegedly commercializes the Complainant’s products and systems, among other competing products of third companies in the same sector, which increases the intrinsic risk of confusion and association. Furthermore, said website does not include any clear reference to its ownership or that of the disputed domain names, not indicating its owner fiscal number, legal registration, or any reference to its social form and/or country of incorporation. The sole contact details included in this website is a contact form. While the website includes a disclaimer, the Panel does not consider it to be clear, accurate and prominent enough. See section 3.7 of the WIPO Overview 3.0. The Panel further notes that the contact details of the WhoIs were private, which in the circumstances of the case are further evidence of bad faith. It is further remarkable that the domain name The Policy’s non-exhaustive list of bad faith circumstances in paragraph 4(b) includes the following: “(i) circumstances indicating that you have registered or you have acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” Taking into account all cumulative circumstances of this case, the Panel considers that the disputed domain names were registered and used with the intention of creating a likelihood of confusion as to the affiliation or association with the Complainant and its trademark, trying to misleadingly attract Internet users to the Respondents’ website, and disrupting the Complainant’s business, as per paragraph 4(b) (iii) and (iv) of the Policy All the above-mentioned lead the Panel to conclude that the disputed domain names were registered and are being used in bad faith. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondents registered and are using the disputed domain names in bad faith under the third element of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names Reyes Campello Estebaranz
Sole Panelist
Date: December 30, 2019
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