The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Tamer Uzun, Turkey. 2. The Domain Name and Registrar
The disputed domain name, The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2020. On July 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 23, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 27, 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 27, 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 August 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2020. The Center received an email from the Respondent on July 27, 2020, stating: “Dear Sir/Madam, This site has been closed. It has not engaged in any commercial activities.” In light of that email, on July 27, 2020 the Center emailed the parties informing them that if they wished to explore settlement options, the Complainant should submit to the Center by August 3, 2020, a request for suspension of the proceeding. The Center received no such request. Accordingly, the Center commenced the Panel Appointment on August 31, 2020. The Center appointed Tony Willoughby as the sole panelist in this matter on September 3, 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. The invitation to the Complainant to file an amended Complaint stemmed from the fact that the Domain Name was registered in the name of a privacy service. In response to the Center’s registrar verification request, the Registrar disclosed the name and address of the entity in whose name the Domain Name had been registered. The amended Complaint names the underlying registrant as the Respondent. 4. Factual Background The Complainant is a member of the group of companies headed by Philip Morris International Inc., a leading international tobacco company. In addition to its core business of production and sale of combustible cigarettes the Complainant has since 2014 included the production and sale of non-combustible alternatives, which it markets under the trade marks IQOS and HEETS. The Complainant is the registered proprietor of numerous trade mark registrations covering these trade marks. For present purposes it is only necessary to detail one of those registrations: International Registration No. 1326410 HEETS (word) registered on July 19, 2016, for a variety of tobacco-related goods in classes 9, 11 and 34. Turkey, the Respondent’s home jurisdiction, is designated as one of the countries covered by the registration. The Domain Name was registered on June 20, 2020. Currently, it is not connected to any active website, but the Complainant has produced evidence to show that as at July 15, 2020, it was connected to a Turkish language online shop offering for sale the Complainant’s IQOS HEETS products. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is confusingly similar to the Complainant’s HEETS trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that: (i) the Domain Name is identical or confusingly similar to a trade mark 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. B. Identical or Confusingly Similar The Domain Name comprises the name “heets”, the name “turkiye” and the generic “.com” Top Level Domain identifier. Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage: “While each case is judged on its own merits, 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 confusingly similar to that mark for purposes of UDRP standing.” The Complainant’s HEETS trade mark is readily recognizable in its entirety in the Domain Name. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests The Complainant asserts that it does not sell its IQOS HEETS products in Turkey and that it has no connection with the Respondent. It expressly states that it has given the Respondent no authorization to use its IQOS and HEETS trade marks. The Complainant has produced screenshots of the website connected to the Domain Name at the date of the Complaint, which features numerous images and textual references to the Complainant’s IQOS HEETS products. The Panel has been unable to identify from those screenshots the name of the operator of the website. However, a copyright notice reads: “Copyright 2020 © HEETS Turkiye”. The fact that the Complainant has not authorized the use of its HEETS trade mark for this online shop appearing to sell its HEETS products is not necessarily determinative of the issue as to whether or not the Respondent has rights or legitimate interests in respect of the Domain Name. An unauthorised user of another’s trade mark for a domain name may in certain circumstances be held to have a legitimate interest in respect of it. The issue is addressed in Section 2.8.1 of WIPO Overview 3.0: “Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs 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. Outlined in the “Oki Data test” [a test derived from the decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903], the following cumulative requirements will be applied in the specific conditions of a UDRP case: (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 Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.” The Domain Name fails the Oki Data test in one important respect. While the website was devoted exclusively to HEETS products, it appeared to be an official website of the Complainant. At any rate, there was nothing on the website to indicate that it was not. The Panel agrees with the Complainant that the name “HEETS Turkiye” featuring as the proprietor of the copyright in respect of the website is likely to indicate to most visitors to the website that it is a website of or authorized by the Complainant. The website did not “accurately and prominently disclose the registrant’s relationship with the trademark holder.” However, most cases determined in favour of respondents under the Oki Data test are cases where the Complainant’s trade mark is juxtaposed to a word such as “parts” or repairs”, indicating a potentially legitimate service provided by the respondent in connection with the complainant’s products. In this case the additional word is “turkiye”, the country of the Respondent. In the view of the Panel, the Domain Name is of such a nature that Internet users are likely to be deceived as to the nature of the website before they ever reach it. The Domain Name, of itself, is likely to indicate to visitors that it is the Complainant’s official Turkish website. The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in respect of the Domain Name. A prima facie case calls for an answer from the Respondent, but the only answer that the Respondent has provided is the email to the Center referred to in Section 3 above reading: “Dear Sir/Madam, This site has been closed. It has not engaged in any commercial activities.” That is no answer to the Complainant’s contentions. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith Using a domain name to connect to a website offering for sale a complainant’s goods, but not accurately and prominently disclosing that the website is not an official website of that complainant may not always lead to a finding of registration and use in bad faith. All depends upon the facts of each particular case. In this case, the Domain Name is likely to be seen by many Internet users as a domain name of the Complainant and on entering the website they will find nothing there to disabuse them. They will be purchasing through that website, confident that they are dealing with the Complainant or at least an entity authorized by the Complainant. Paragraph 4(b)(iv) of the Policy provides that a circumstance leading to a finding of bad faith registration and use under the Policy is where the Respondent has used the Domain Name intentionally to attract Internet users to the Respondent’s website for commercial gain “by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of [the] website …”. The Respondent’s email to the Center referred to above claims that the website “has not engaged in any commercial activities”. The Panel is unable to accept that statement. The website, albeit in the Turkish language, was clearly set up as a commercial site promoting the sale of the Complainant’s products. Here, it is clear that the Respondent (a) registered the Domain Name for the purpose for which he has been using it and (b) has been using it deceptively to induce visitors to his website to believe that they are trading with the Complainant or an entity authorized by the Complainant. The fact that the Domain Name is not currently being used for the offending purpose described above is of no moment. While the Domain Name remains in the hands of the Respondent, the Panel views it as representing an unjustifiable threat hanging over the head of the Complainant and, as such, a continuing use of the Domain Name in bad faith. The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) 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 Domain Name, Tony Willoughby
Sole Panelist
Date: September 5, 2020
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