The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Contact Privacy Inc. Customer 0155276950, Canada / Richard Chen, Heat it up, United States of America (“United States” or “USA”). 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2020. On March 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 4, 2020, 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 March 5, 2020 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 amended Complaint on March 6, 2020. The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on March 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 1, 2020. The Center appointed Gregor Vos as the sole panelist in this matter on April 9, 2020. 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 a company within the group of companies affiliated to Philip Morris International Inc (“PMI”). The Complainant has developed and sells a reduced risk product branded IQOS, a device into which a specially designed tobacco product is inserted and heated to generate a flavorful nicotine-containing vapor. This product is supplied under the brand names HEETS and HEATSTICKS. The IQOS product first went on sale in Japan in 2014, where it has gained 18.3 percent market share. At this point, the IQOS product is on sale in 52 markets around the world. To date the IQOS System has been almost exclusively distributed through PMI’s official IQOS stores and website and selected authorized distributors and retailers. PMI has received authorization from the Food and Drug Administration (the “FDA”) to sell version 2.4 of its IQOS product in the United States. This version uses “HeatSticks” inserts. The IQOS product has been developed to a version 3. Version 3 uses HEETS brand inserts. This version does not have regulatory approval in the USA and, according to the Complaint, offering it for sale there is illegal. The Complainant is the owner of inter alia the following trademark registrations (the “Trademarks”): - International Registration No. 1328679 for the word/device mark HEETS, registered on July 20, 2016; These trademark registrations predate the registration date of the disputed domain names. The disputed domain At the time this decision is being prepared, the disputed domain The Complainant states that its IQOS products, into which the HEETS product is inserted, have to date been distributed through its group’s official stores and websites and selected authorized distributors and resellers alone. The Complainant asserts that the Respondent is not known or in any way related to the Complainant and is not authorized to use the Trademarks. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register any domain names incorporating its Trademarks or domain names, which will be associated with the Trademarks. According to the Complainant, the Websites are purporting to be official online retailers of the Complainant’s IQOS System in the USA by using the Complainant’s Trademarks in its entirety in the disputed domain names together with the non-distinctive terms “shop” and “vip” and the geographical indication “us”. Furthermore, the Websites are provided in English and indicate their prices in USD currency as well as presenting the address of “123 Main St. Austin, TX 78681” which is located in the USA, and stating that “All products are shipped within the US”. The Websites are further presenting the word “heetshop” at the top of the Websites, where consumers usually expect to find the name of the online shop. The Websites are also using a number of the Complainant’s official product images and marketing materials, without the Complainant’s approval, while at the same time providing a Copyright notice at the bottom of the Websites’ pages claiming copyright in the material presented on the Websites. Thereby strengthening the false impressions of an affiliation with the Complainant. Also, the Websites do not acknowledge the Complainant as the owner of the IQOS System, leaving the consumers under the false impression that the online shops provided under the Websites are of the Complainant or that they are connected to the Complainant or one of its official distributors. The Complainant provided examples of the Websites on which the Complainant’s HEETS and IQOS products are offered for sale by the Respondent. The Complainant states that it cannot be sure that the products offered there are genuine IQOS products, but alleges that the Websites hold themselves out as being that of an official dealer, or as being otherwise affiliated with the Complainant since the disputed domain names reproduce the Trademarks in its entirety along with the non-distinctive terms “shop” and “vip” and the geographical indications “us” and “usa”. Furthermore, the Complainant points out that the marketing of tobacco products is only permitted in the USA upon authorization of the product by the FDA. PMI has received authorization from the FDA to sell version 2.4 of its IQOS product in the United States. This version uses “HeatSticks” inserts. The IQOS product has been developed to a version 3. Version 3 uses HEETS brand inserts. This version, which is the version that the Respondent offers on its Websites, does not have regulatory approval in the USA. In result, the offering of the Respondent’s sale of HEETS sticks, IQOS devices and accessories for IQOS products is illegal. The Complainant makes the following contentions: (i) The disputed domain names are identical or confusingly similar to the Complainant’s Trademarks: The Complainant alleges that since the disputed domain names reproduce the Trademarks in their entirety along with the non-distinctive terms “shop” and “vip” and the geographical indications “us” and “usa”, the disputed domain names are confusingly similar to the Trademarks. In respect of the Top-Level Domains (“TLDs”) “.shop” and “.online”, the Complainant states that this should be disregarded as it is a standard registration requirement. (ii) The Respondent has neither rights nor any legitimate interests in respect of the disputed domain names: The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register any domain names incorporating its Trademarks or domain names, which will be associated with the Trademarks. Furthermore, the Complainant states that the Respondent is not making legitimate noncommercial or fair use of the disputed domain names. The Complainant maintains that the Respondent’s incorporation of the Complainant’s Trademarks in the disputed domain names, the prominent website display of the Complainant’s Trademarks, the Respondent’s use of professional product images without authorization and falsely claiming copyright of these materials without any statement as to the true ownership or any disclaimer of association with the Complainant, all support the false impression that the websites are endorsed by the Complainant. The Respondent therefore fails to meet the cumulative requirements of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, which sets out the conditions under which, it is generally accepted, a reseller of genuine goods may be able to establish rights or legitimate interests in respect of a domain name. The illegitimacy of the Respondent’s use of the disputed domain names is further demonstrated by the fact that the Complainant does not offer for sale its HEETS products, and IQOS 3.0 and IQOS Multi devices or their accessories given that the Complainant has not yet been authorized for these sales by the FDA. (iii) The disputed domain names have been registered and are being used in bad faith. The Complainant argues that the disputed domain names have been registered and are being used in bad faith, since the Respondent started offering the Complainant’s IQOS System and accessories immediately after the registration of the disputed domain names. This demonstrates that the Respondent knew of the Trademarks when registering the disputed domain names. Furthermore, the terms “heet” and “heets” are imaginative terms and not commonly used to refer to tobacco products or electronic (tobacco) devices. The Complainant states that it is therefore likely that the Respondent chose the disputed domain names with the intention to invoke a misleading association with the Complainant. Again, the Complainant maintains that the Respondent’s incorporation of the Complainant’s Trademarks in the disputed domain names, the prominent website display of the Complainant’s Trademarks, the Respondent’s use of professional product images without authorization on the Websites and falsely claiming copyright of these materials, suggest the false impression of being operated by the Complainant or an entity affiliated to the Complainant or an official dealer of the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In view of the lack of a response filed by the Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(f), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of the Complainant’s undisputed factual presentations. For the Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that: (i) the disputed domain names are identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. Only if all three elements have been fulfilled, the Panel is able to grant the remedy requested by the Complainant. The Panel will deal with each of the requirements in turn. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are (i) identical or confusingly similar to a trademark or service mark, (ii) in which the Complainant has rights. With respect to having rights pursuant to paragraph 4(a)(i) of the Policy, it is noted that the Complainant is registered as the owner of the Trademarks, as can be seen from the submitted copies of Madrid Monitor (Annex 6 to the Complaint). Consequently, the Panel finds that the Complainant has proven that it has right in the Trademarks. With regard to the assessment of identity or confusing similarity of the disputed domain names with the Trademarks, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between a complainant’s trademark and a disputed domain name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). For the purpose of assessing confusing similarity under the Policy, the TLD suffixes (in the present case “.store” and “.online”) are generally ignored in the comparison between the disputed domain names and the Trademarks (see Bialetti Industrie S.p.A. v. Onno Brantjes, Stichting Taxaceace,WIPO Case No. D2016-1450; Canyon Bicycles GmbH v. Domains by Proxy, LLC / Rob van Eck,WIPO Case No. D2014-0206; Zions Bancorporation v. Mohammed Akik Miah,WIPO Case No. D2014-0269). This case does not contain any indications to the contrary. The disputed domain names incorporate the Trademarks in their entirety and only the dictionary words “shop”, “vip” and the geographical terms “us” and “usa” are added. The addition of such dictionary and geographical terms to the Complainant’s Trademarks does not avoid a finding of confusing similarity. See WIPO Overview 3.0, section 1.8. The fact that the first letter “s” of the “shop” part of the disputed domain names is also the last letter “s” of the “heets” part of the disputed domain names does not avoid a finding of confusing similarity either, as both words “heets” and “shop” remain distinctly recognizable within the disputed domain names. Accordingly, the Panel finds that the Complainant has established that the disputed domain names are confusingly similar to the Complainant’s trademarks and the requirement under paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names. The onus of proving this requirement, like each element, falls on the Complainant. Given the difficulty in proving a negative, however, it is usually sufficient for a complainant to make out a prima facie case that the respondent lacks rights or legitimate interests. If the Complainant does establish a prima facie case, the burden of production shifts to the respondent. See, e.g. WIPO Overview 3.0, section 2.1. Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the disputed domain name, by demonstrating any of the following: (i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is 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 Panel concludes that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. By defaulting, the Respondent has failed to address the prima facie case thus established by the Complainant. Furthermore, based on the record before it, the Panel does not see an indication that any of the circumstances of paragraph 4(c) of the Policy is present. To the contrary, UDRP panels have categorically held that the use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent (see WIPO Overview 3.0, section 2.13.1). The Complainant has substantiated that it is illegal to offer for sale the Complainant’s IQOS version 3 device and associated HEET sticks in the United States at this time, as this is not authorized by the FDA. These products are offered for sale on the Website “www.heetshopusa.online” (Annex 8.2 to the Complaint). Furthermore, as the Complainant demonstrates, the disputed domain names resolve to the Websites, which contain text and content that suggests falsely that the Websites are of the Complainant or of an affiliated entity or of an official dealer of the Complainant. The Complainant has substantiated that the Respondent is not an affiliated entity or an authorized reseller or distributor of the Complainant and no agreement, express or otherwise, exists allowing the use of the Complainant’s Trademarks on the Websites and the use of the disputed domain names by the Respondent. A reseller or distributor can be making a bona fide offering of goods or services and thus have a legitimate interest in a domain name only if the following cumulative requirements are met (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, WIPO Overview 3.0, section 2.8.1): (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. These requirements are not cumulatively fulfilled in the present case. The disputed domain names suggest that the Websites are official websites of the Complainant or affiliated to or endorsed by the Complainant. The Websites reproduce without authorization by the Complainant, the Complainant’s Trademarks and official product images from the Complainant, while they include a copyright notice, without any statement as to the true ownership or any disclaimer of association with the Complainant. Moreover, the Websites also offer for sale goods not bearing the Complainant’s Trademarks. The Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith Under paragraph 4(iii) of the Policy, a complainant must show that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four non-limitative circumstances, which may be considered as evidence of registration and use in bad faith of a domain name. The trademarks HEET and HEETS are distinctive and are registered by the Complainant in several jurisdictions. According to the Complainant, the Trademarks have been used since 2014 in 52 countries with a 18.3 percent market share. The Complainant has established that the Complainant’s HEETS trademark is well-known for tobacco related products. The Complainant’s trademark rights predate the registration date of the disputed domain names (see Section 4 above). The registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark can be evidence of opportunistic bad faith (see Ebay Inc. v. Wangming,WIPO Case No. D2006-1107). Based on this information the Panel finds that it is not conceivable that the Respondent would not have been aware of the Complainant’s trademark rights at the time of the registration of the disputed domain names. The Panel finds, based on these facts, that the Respondent targeted the Complainant and its Trademarks when it registered the disputed domain names. These facts show bad faith registration of the disputed domain names. The use of a domain name for per se illegitimate activity such as the offering for sale of products in the United States, which do not have the required regulatory approvals, is considered evidence of bad faith (see WIPO Overview 3.0, section 3.1.4). The Complainant has substantiated that it is illegal to offer for sale the Complainant’s IQOS version 3 devices and associated HEET sticks in the United States at this time as this is not authorized by the FDA. These products are offered for sale on the Website “www.heetshopusa.online” (Annex 8.2 to the Complaint). Furthermore, considering that the disputed domain names are directed to the Websites, which create an impression that the Websites are official sites of the Complainant or affiliated to or endorsed by the Complainant, it is likely that Internet users may be misled. The Websites reproduce without authorization by the Complainant, the Complainant’s Trademarks and official product images from the Complainant, while they include a copyright notice, without any statement as to the true ownership or any disclaimer of association with the Complainant. Absent any explanation from the Respondent, the Panel can ascribe no motive for the Respondent's registration and use of the disputed domain names except to capitalize on the Complainant’s trademark rights. Therefore, the Panel finds that the Respondent has registered and is using the disputed domain names in bad faith pursuant to paragraph 4(b)(iv) of the Policy, which provides that bad faith registration and use can be found where a respondent, by registering and using a domain name, intentionally attempts to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. The Complainant has established Policy, paragraph 4(a)(iii). 7. Decision Considering the above, the Panel orders that the disputed domain names, Gregor Vos
- International Registration No. 1326410 for the word mark HEET, registered on July 19, 2016;
- International Registration No. 1312086 for the word mark HEET, registered on May 17, 2016.
Sole Panelist
Date: April 23, 2020
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