The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Contact Privacy Inc. Customer 0159329067, Canada / Tarique Khan, Myle Heets Oman, Oman. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2020. On November 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 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 26, 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 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 December 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2021. The Center appointed George R. F. Souter as the sole panelist in this matter on January 31, 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, Philip Morris Products S.A. is a company which is part of the group of companies affiliated to Philip Morris International Inc. (jointly referred to as “PMI”). PMI is a leading international tobacco company, with products sold in approximately 180 countries. PMI is known for innovating across its brand portfolio. In the course of transforming its business from combustible cigarettes to Reduced Risk Products (“RRPs”), which PMI defines as products that present, are likely to present, or have the potential to present less risk of harm to smokers who switch to those products versus continued smoking, PMI has developed a number of RRP products. One of these RRPs developed and sold by PMI is called “IQOS”. “IQOS” is a precisely 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 also consists of an IQOS Pocket Charger, specially designed to charge the IQOS Holder (collectively referred to as “the IQOS System”). The IQOS System was first launched by PMI in Nagoya, Japan in 2014 and has obtained an 18.3% share of the market in Japan. Today the IQOS System is available in key cities in around 61 markets across the world. As a result of an investment of over USD 6 billion and extensive international sales (in accordance with local laws), the IQOS System has achieved considerable international success and reputation, and approximately 16.4 million relevant consumers using the IQOS System worldwide. To date, the IQOS System has been almost exclusively distributed through PMI’s official IQOS stores, websites, and selected authorized distributors and retailers. For its new innovative smoke-free products, the Complainant owns a large portfolio of trademark registrations internationally, details of which have been supplied to the Panel. These include the following registrations of the Complainant's HEETS trademark covering, inter alia, the country of Oman, where the Respondent is located: - International Registration No. 1328679, dating from July 20, 2016; and, - International Registration No. 1326410, dating from July 19, 2016. The disputed domain name was registered on September 15, 2020, and is currently in use in connection with an online shop website offering products for sale, in direct competition with the goods traded in by the Complainant. 5. Parties’ Contentions A. Complainant The Complainant alleges that the disputed domain name is confusingly similar to its HEETS trademark, in particular that it contains the Complainant’s HEETS trademark in its entirety, preceded by a third party brand name, MYLE, and followed by a descriptive or non-distinctive element, namely the geographical term Oman; the three terms in the disputed domain name being separated by hyphens. The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that the Complainant has never granted permission to use its HEETS trademark in connection with the registration of a domain name, or otherwise. The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith in connection with a website offering goods competing with goods sold by the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant: (i) the disputed 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 disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel is satisfied from the information provided that the Complainant has sufficient rights in its HEETS trademark for the purposes of these proceedings. It is well-established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top-Level Domain (“gTLD”) is irrelevant when comparing a trademark with a disputed domain name. Accordingly, the Panel considers the gTLD “.com” to be irrelevant in the circumstances of the present case, and so finds. It is standard practice in comparing a complainant’s trademark with a disputed domain name in proceedings under the Policy that recognizability of the trademark in the disputed domain name is taken into account. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. In the circumstances of the present case, the disputed domain name, is composed of three discrete terms, of which the Complainant’s HEETS trademark is in the central position. The Panel is of the opinion that the Complainant’s HEETS trademark is clearly recognizable in the disputed domain name. This, in the Panel’s opinion, is sufficient to justify a finding of confusing similarity, and the Panel so finds. Furthermore, the addition of the terms “myle” and “oman” does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8 and 1.12. Accordingly, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy. The Panel notes the Complainant has never granted permission to use its HEETS trademark in connection with the registration of a domain name, or otherwise. Furthermore, the use of the disputed domain name comprising the Complainants trademark to offer goods in competition with the Complainant does not constitute a bona fide or noncommercial fair use; and does not meet the criteria for fair use by resellers or distributors as set out in the WIPO Overview 3.0, section 2.8. The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The circumstance of the present case, in which the Panel regards it as self-evident that the Complainant’s HEETS trademark was deliberately appropriated in the disputed domain name, are such that the Panel concludes that a finding of registration in bad faith is justified, and so finds. It is well-established in prior decisions under the Policy that the use of a disputed domain name in connection with a website offering goods or services competing with those of the Complainant is sufficient to justify a finding of use in bad faith, and, in the circumstances of the present case, the Panel so finds. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 name George R. F. Souter
Sole Panelist
Date: February 14, 2021
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