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 (“United States”) / Chris Nashed, Just Live LLC, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2021. On May 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 1, 2021, 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 June 3, 2021 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 June 3, 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 June 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2021. An informal Communication was submitted by the Respondent to the Center on June 24, 2021. On July 7, 2021, the Complainant transmitted by email a request to suspend the proceedings to explore settlement options. On July 8, 2021, the Center notified the Parties of the suspension of the proceedings for 30 days. On July 16, 2021, the Complainant requested the Center to reinstitute the proceedings. On July 19, 2021, the Center reinstituted the proceedings and proceeded to panel appointment. The Center appointed Nicholas Weston as the sole panelist in this matter on July 20, 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 part of the group of companies affiliated to Philip Morris International Inc. (collectively, “PMI”), a multinational company that sells nicotine based products in approximately 180 countries. The Complainant holds registrations for the trademark HEETS in several countries, including, for example, HEETS (word), International Trademark Registration No. 1326410, registered on July 19, 2016 in classes 9, 11, and 34 which it uses to designate what it describes as “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 (collectively referred to as the ‘IQOS System’).” The Disputed Domain Name The Complainant cites trademark registrations including International Trademark Registration No. 1326410 registered on July 19, 2016 in classes 9, 11, and 34 and United States Trademark Registration No. 5,860,364, registered on September 17, 2019 for the mark HEETS, as prima facie evidence of ownership. The Complainant submits that the trademark HEETS is well-known and that its rights in that trademark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the HEETS trademark, and that the replacement of the letter “s” with the letter “z” and addition of the word “guy”, or the addition the generic Top-Level Domain (“gTLD”) “.com” is not sufficient to avoid a finding of confusing similarity. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it “has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its HEETS trademark (or a domain name which will be associated with this trademark) [… and t]he Respondent is not making a legitimate noncommercial or fair use of the Domain Name. On the contrary, the Respondent’s behaviour 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”, and contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the widespread prior use of the Complainant’s trademark. B. Respondent The Respondent sent an email to the Center dated June 24, 2021. The email did not substantively reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the trademark HEETS in the United States and in many countries throughout the world. The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). Turning to whether the Disputed Domain Name is identical or confusingly similar to the HEETS trademark, the Panel observes that the Disputed Domain Name comprises (a) the Complainant’s trademark HEETS with the letter “s” substituted by the letter “z”, (b) followed by the word “guy”, and (c) followed by the gTLD “.com”. It is well-established that the gTLD used as part of a domain name is generally disregarded unless the gTLD takes on special significance where it has relevance to the analysis (see Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286; Alstom v. WhoisGuard Protected, WhoisGuard, Inc. / Richard Lopez, Marines Supply Inc,WIPO Case No. D2021-0859). The gTLD chosen appears to have no special significance in this proceeding. The relevant comparison to be made is with the Second-Level portion of the Disputed Domain Name: “heetzguy”. It is also well-established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the substitution of a letter or addition of words such as, in this case, “guy” (see Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller,WIPO Case No. D2008-1345). This Panel finds that substitution of the letter “s” with the letter “z” and the addition of the word “guy” do not prevent a finding of confusing similarity of the Disputed Domain Name (see sections 1.8 and 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name. The Policy also places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview 3.0, section 2.1). The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is not his name, there is no license from the Complainant to use the Complainant’s trademark, there is no evidence of the Respondent’s use, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and services, and the evidence is that it resolves to a webpage selling products that are either the Complainant’s products or compete with products sold by the Complainant. The uncontested evidence is that the Respondent has not made, and is not currently making, a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers pursuant to paragraph 4(c)(iii) of the Policy. Nor, alternatively, does paragraph 4(c)(ii) of the Policy apply. The Panel also finds that the nature of the Disputed Domain Name and the associated website content fails to meet the tests that apply to bona fide offerings or goods or services by resellers or distributors set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. This Panel accepts that the Complainant has made out a prima facie case that the Respondent lack rights or legitimate interests in the Disputed Domain Name and, in the absence of a Response by the Respondent, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The third element of the Policy that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements. The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith. On the issue of registration, taking into account the composition of the Disputed Domain Name and the content of the website it resolves to, the Panel is satisfied that the Respondent knew of the Complainant’s trademark HEETS when it registered the Disputed Domain Name (see Philip Morris Products S.A. v. Privacy Protection, Hosting Ukraine LLC / Кузьменко Егор Александрович / Kuzmenko Egor,WIPO Case No. D2021-0915; Philip Morris Products S.A. v. Stepan Malik (S.M.), Heets Store,WIPO Case No. D2020-2967. On the issue of use, the Complainant’s evidence is that the Disputed Domain Name diverts to a webstore that unlawfully offers the Complainant’s HEETS and IQOS System products and, possibly competitor products, for sale into the United States where they do not have the requisite FDA regulatory approvals to be offered for sale. This Panel finds the conduct is an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website (see WIPO Overview 3.0, section 3.1.4). In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence, and finds that the Respondent has taken the Complainant’s trademark HEETS, with the letter “s” substituted and replaced by the letter “z”, and incorporated it in the Disputed Domain Name along with the word “guy”, without the Complainant’s consent or authorization, for the purpose of capitalizing on the reputation of the trademark to infringe upon the Complainant’s rights. 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 Nicholas Weston
Sole Panelist
Date: August 3, 2021
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