The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is md akib, vape, Bangladesh. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2020. On December 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 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 December 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 January 4, 2021. 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 January 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2021. The Center appointed Fabrizio Bedarida as the sole panelist in this matter on February 4, 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., a Swiss company established under the laws of Switzerland, is part of the group of companies affiliated to Philip Morris International Inc. (jointly referred to as “PMI”). PMI is one of the leading international tobacco companies, with products sold in approximately 180 countries. PMI has developed a number of products, including the products branded “Iqos”. “Iqos” is a precisely controlled heating device into which specially designed tobacco products under the brand names “Heets” and “HeatSticks” are inserted and heated to generate a flavorful, nicotine-containing aerosol. The Complainant has proven to be the owner of the HEETS mark. The Complainant is inter alia the owner of: United Arab Emirates Registration HEETS (word) No. 256864 registered on December 25, 2017; United Arab Emirates Registration HEETS (word/device) No. 256867 registered on December 25, 2017; and United Arab Emirates Registration IQOS (word) No. 211139 registered on March 16, 2016. The disputed domain name was registered on October 5, 2020. The Complainant’s trademark registrations predate the registration of the disputed domain name. The disputed domain name resolves to a website which indicates the provider of the website as HEETS Dubai (also referring sometimes to itself as “IQOS HEETS Dubai”). On this website there is an online shop allegedly offering the Complainant’s IQOS and HEETS branded products. On this website a great number of the Complainant’s copyright-protected official product images and marketing materials is displayed. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to the HEETS trademark, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed 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 In order for the Complainant to obtain the transfer of the disputed domain name, paragraphs 4(a)(i)-(iii) of the Policy require that the Complainant must demonstrate to the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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 Complainant has established rights in the HEETS trademark. The disputed domain name consists of the HEETS trademark combined with the geographical term “dubai”. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests This Panel finds that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. The Respondent is offering for sale what appears to be the Complainant’s products without disclosing the (absence of any authorization and/or any) relationship between the Complainant and the Respondent. In addition, the Respondent does not appear to be commonly known by the name “Heets” or by a similar name. Moreover, the Respondent has not replied to the Complainant’s contentions, alleging any rights or legitimate interests in the disputed domain name. In addition, the Panel finds that the nature of the disputed domain name, consisting of the HEETS trademark with the added term “Dubai”, carries a risk of implied affiliation with the Complainant’s HEETS trademark. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered in bad faith and has been used in bad faith. Indeed, the Complainant gives several basis for its contention that the disputed domain name was registered and has been used in bad faith. Particularly relevant are the Complainant’s unchallenged assertions (which the Panel accepts and partially reproduces below) that: The Respondent could not be unaware of the existence of the Complainant’s trademarks when registering the disputed domain name; The term “heets” is purely imaginative, and is not commonly used to refer to tobacco products. It is therefore unlikely that the Respondent chose the disputed domain name without the intention of invoking a misleading association with the Complainant. In fact, 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. It also appears that the Respondent started offering the Complainant’s HEETS and/or IQOS branded products immediately after registering the disputed domain name; In addition, by displaying the Complainant’s registered trademarks (HEETS and IQOS) on the Respondent’s website, the Respondent misled consumers into believing that the Complainant or an affiliated dealer were the source of the website. This suggestion is further supported by the Respondent’s use of the Complainant’s official product images on its website. This Panel finds that the above use of the disputed domain name constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use under paragraph 4(b)(iv) of the Policy. The Respondent has also used a privacy shield registration service for the disputed domain name. While the use of a privacy or proxy registration service is not in and of itself an indication of bad faith, it is the Panel’s opinion that in the present case the use of a privacy shield, combined with the elements previously discussed, amounts to a further inference of bad faith registration and use. Finally, the Respondent has not responded to (nor denied) the assertions made by the Complainant in this proceeding. Accordingly, the Panel finds that the Complainant has satisfied 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 Fabrizio Bedarida
This Panel agrees with the Complainant’s assertion that the addition of the geographical term “dubai” in the disputed domain name is irrelevant in assessing the confusing similarity between the Complainant’s trademark and the disputed domain name.
The Respondent’s knowledge of the HEETS mark is particularly obvious, given that the HEETS trademark is displayed on the website at the disputed domain name.
Sole Panelist
Date: February 12, 2021
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