The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Contact Privacy Inc. Customer 0157912178, Canada / Ilkham Aliev, Heets Shop in UAE, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2020. On June 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 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 July 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 July 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 29, 2020. The Respondent did not submit a formal response but did send an informal email on July 5, 2020. Accordingly, the Center informed the Parties about the commencement of Panel appointment process on July 30, 2020. The Center appointed Andrew F. Christie as the sole panelist in this matter on August 12, 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 part of the group of companies affiliated to Philip Morris International Inc. (“PMI”). PMI is a leading international tobacco company, with products sold in approximately 180 countries. PMI has developed a precisely-controlled heating device into which specially designed tobacco products, sold under the brand names “HEETS” or “HeatSticks”, are inserted and heated to generate a flavourful nicotine-containing aerosol. The device and its charger, which together is called the “IQOS System”, was first launched by PMI in Japan in 2014, and is now available in cities in around 53 markets across the world, with over 10 million consumers. To date, the IQOS System has been almost exclusively distributed through PMI’s official IQOS stores and websites and selected authorized distributors and retailers. The Complainant owns a large portfolio of trademark registrations, including United Arab Emirates Registration No. 256864 (registered on December 25, 2017) for the word trademark HEETS. The disputed domain name was registered on May 12, 2020. The Complainant has provided screenshots, taken on June 11, 2020, of the website resolving from the disputed domain name, at which appears the words “Heets Shop in UAE” and a selection of purported HEETS products offered for sale using the Complainant’s official product images. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights because: (i) it reproduces its HEETS trademark in its entirety, in addition to the non-distinctive and descriptive word “shop” and the geographical abbreviation “uae” for the United Arab Emirates; and (ii) the applicable generic Top-Level Domain (“gTLD”) is viewed as a standard registration requirement and as such is disregarded. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks, to register a domain name incorporating its HEETS trademark or to be associated with this trademark; (ii) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name; (iii) the Respondent’s behavior shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademarks owned by the Complainant; (iv) the Respondent is not an authorized distributor or reseller of the IQOS System; (v) the website resolving from the disputed domain name does not meet the requirements set out by numerous panel decisions for being a bona fide offering of goods, because it is not “fair” to falsely suggest an affiliation with the trademark owner; (v) the website resolving from the disputed domain name prominently, and without authorization, presents the Complainant’s registered HEETS trademark at the top center of the website in the phrase “Heets Shop in UAE”, and it uses the Complainant’s official product images without authorization, while at the same time falsely claiming copyright in this material; (vi) the website resolving from the disputed domain name includes no information regarding the identity of the provider of the website, which further serves to perpetuate the false impression of an official commercial relationship between the website and the Complainant; and (vii) as the Complainant’s IQOS System is primarily distributed through official and/or endorsed stores, Internet users are clearly misled regarding the relationship between the website resolving from the disputed domain name and the Complainant, and will falsely believe it to be an official and/or endorsed reseller. The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) it is evident from the Respondent’s use of the disputed domain name that the Respondent knew of the Complainant’s HEETS trademark when registering the disputed domain name, as the Respondent started offering repair services for the Complainant’s IQOS System immediately after registration and the term “heets” is purely an imaginative term, unique to the Complainant, and not commonly used to refer to tobacco products; (ii) the Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s registered HEETS trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location; (iii) by reproducing the Complainant’s registered trademark in the disputed domain name and the title of the website resolving from it, the Respondent’s website clearly suggests the Complainant or an affiliated dealer of the Complainant as the source of the website, which is not correct; and (iv) the fact that the Respondent is using a privacy protection service to hide its true identity may in itself constitute a factor indicating bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. However, the Respondent sent an email to the Center on July 5, 2020, stating “Hello, Please note we did not place any complaint. Thank you”. On July 11, 2020, an entity that appears to be the Respondent sent an email to the Center stating “Please note the website is closed”. 6. Discussion and Findings A. Identical or Confusingly Similar Once the gTLD “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the Complainant’s registered word trademark HEETS, followed by the string “hopuae”. The Complainant’s trademark is clearly recognizable within the disputed domain name. The addition of the string “hopuae” does not avoid the confusing similarity of the disputed domain name with the trademark. As provided in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its HEETS word trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name has been used to resolve to a website at which is displayed, without authorization, the Complainant’s images of its products. The contents of the website are such that many Internet users will form the false belief that the website is operated by, or affiliated with, the Complainant. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The disputed domain name was registered several years after the Complainant first registered its HEETS word trademark. The evidence on the record provided by the Complainant with respect to the use of its HEETS word trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s HEETS word trademark. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. In that regard, the letter “s” at the end of “heets” links up with “hop” to make the word “shop”, while “uae” is recognisable as an initialism of United Arab Emirates. A typical Internet user is likely to read the disputed domain name as identifying a shop in the United Arab Emirates from which HEETS products may be purchased. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 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 name Andrew F. Christie
Sole Panelist
Date: August 26, 2020
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