The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Whois Agent, Domain Protection Services, Inc., United States of America / Mohammad Khawaldeh, Egypt. 2. The Domain Names and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2020. On October 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 28, 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 November 12, 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 November 16, 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 November 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2021. The Center received two email communications from the Respondent on November 17, 2020. At the request of the Complainant, the administrative proceeding was suspended on November 26, 2020 and reinstituted on December 24, 2020. Accordingly, the new Response due date was January 4, 2021. The Center appointed Marilena Comanescu as the sole panelist in this matter on February 8, 2021. 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 subsidiary of Philips Morris International, Inc., an international tobacco company which is selling its products in approximately 180 countries worldwide. The Complainant manufactures tobacco products, including a system promoted under the mark IQOS, which is an alternative to combustible cigarettes and consists of a controlled heating device into which specially designed tobacco products under the brand names “HEETS” or “HeatSticks” are inserted and heated to generate a flavourful nicotine-containing aerosol. The IQOS System was launched in Japan in 2014 and, with investments of USD 6 billion in sales and marketing, it is currently sold in 57 markets across the globe reaching over 11 million relevant consumers. The Complainant’s IQOS System is primarily distributed through official or endorsed stores. The Complainant holds a large portfolio of HEET and/or HEETS trademarks, including the following: - the United Arab Emirates (“UAE”) trademark registration number 253929 for the word HEET, filed on May 18, 2016 and registered on March 5, 2018, and covering goods in Nice class 9; The Complainant’s HEETS/HEET trademark is well-known and highly recognized within the area of innovative tobacco products. See also Philip Morris Products S.A. v. Whois Privacy Protection Service / Vitalij Solomin,WIPO Case No. D2019-2103. The disputed domain name According to Annex 8 to the Complaint, at the bottom of the website under the disputed domain name, below the shipping information, a disclaimer appears stating that “our site is not official site for IQOS inc.” 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to its distinctive trademark HEET and/or HEETS, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; The Panel will further analyze the potential concurrence of the above circumstances. A. Identical or Confusingly Similar The Panel finds that the Complainant holds rights in the HEET trademark. The disputed domain name Numerous UDRP panels have considered that the addition of other terms (whether geographical wording, descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to escape a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.com”, “.site”, “.info”, “.shop”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0. Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark HEET, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization whatsoever to use the marks HEET and/or HEETS, that the Respondent is not commonly known by the disputed domain name, and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services. Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0. The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case. There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name. Further, there is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain name, or has been known by this disputed domain name, or is making any legitimate noncommercial or fair use of the disputed domain name. In fact, at the time of filing the Complaint the disputed domain name resolved to a commercial website featuring the HEET/HEETS and IQOS trademarks and offering for sale unauthorized products bearing the Complainant’s trademarks without the Complainant’s consent. In this case, assuming that the products or at least some of the products offered for sale under the disputed domain name were genuine HEETS and IQOS branded products, the key question under this element is whether the Respondent’s use of the disputed domain name for such resale amounts to a bona fide offering of goods under paragraph 4(c)(i) of the Policy. Relevant UDRP panel decisions in relation to this issue are helpfully summarized in section 2.8 of theWIPO Overview 3.0 as follows: Normally, a reseller, distributor or service provider can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder and the respondent must not try to “corner the market” in domain names that reflect the trademark. This summary is based on UDRP panel decisions such as Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. At least one condition that is outlined has clearly not been satisfied by the Respondent in this case: at the time of filing the Complaint, on the website under the disputed domain name there was no accurate information regarding the Respondent’s rights and its relationship with the Complainant. Further, images of the Complainant’s trademarks and official products were displayed without any approval and the website falsely claims copyright protection for the website content, thus generating a likelihood of confusion for the Internet users accessing the Respondent’s website. The disclaimer stated at the bottom of the website under the disputed domain name is not presented in an clear and sufficiently prominent manner. The information included in the disclaimer is inaccurate and does not correctly identify the owner of the HEETS and HEET trademarks and its relationship (or lack thereof) with the Respondent. In fact, the provider of the website is identified as “Heets Delivery” and is presenting itself as an “unoficial” store thus suggesting a false commercial relationship between the website under the disputed domain name and the Complainant. As the Complainant’s IQOS System and products under the HEETS/HEET marks are primarily distributed through official/endorsed stores, the Internet users are misled regarding the relationship between the website corresponding to the disputed domain name and the Complainant and will falsely believe that the website under the disputed domain name belongs to an official, endorsed distributor of the Complainant. For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Complainant holds registered trademark rights for HEET and HEETS since at least 2016. The disputed domain name was created in 2020 and incorporates the Complainant’s well-known mark with an additional non-distinctive term “delivery”. For the above reasons, the Panel finds that the disputed domain name was registered in bad faith, with knowledge of the Complainant, its business and particularly targeting the Complainant’s trademark. The Respondent is using without permission the Complainant’s distinctive trademark in order to get traffic on its web portal and to obtain commercial gain from the false impression created for the Internet users with regard to a potential connection with the Complainant. This impression is created particularly by the incorporation of the Complainant’s well-known trademark in the disputed domain name, the content on the website provided thereunder which includes the Complainant’s trademarks, official product images and the notice claiming copyright protection for the material presented on such website. Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith. Given that the disputed domain name incorporates the Complainant’s trademark and the website operated under the disputed domain name displays the Complainant’s trademarks, official product images and claims copyright protection on its content, indeed in this Panel’s view, the Respondent intended to attract Internet users accessing the website corresponding to the disputed domain name who may be confused and believe that the website is held, controlled by, or somehow affiliated or related to the Complainant, for its commercial gain. The Respondent registered the disputed domain name under a privacy service and did not participate in the present proceedings in order to put forward any arguments in its favor. Having in view the other circumstances of this case, such facts constitute further evidence of bad faith behavior. Furthermore, it was consistently found by previous UDRP panels that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark constitutes, by itself, a presumption of bad faith registration for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0. For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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 Marilena Comanescu
- the UAE trademark registration number 253930 for the word HEET, filed on May 18, 2016 and registered on March 5, 2018, and covering goods in Nice class 11; and
- the International trademark registration number 1328679 for the word HEETS with device, registered on July 20, 2016, and covering goods in Nice class 9, 11, 34.
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Sole Panelist
Date: February 22, 2021
Full & Egal Universal Law Academy