Complainant is Philip Morris Products S.A., Switzerland (hereinafter “Complainant”), represented by D.M. Kisch Inc., South Africa.
Respondent is Private Registration, United Arab Emirates / Privacy Protect, LLC, United States of America / Zaid Mandre, India (hereinafter “Respondent”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2021. On June 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 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 Complainant on June 17, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 25, 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 Respondent of the Complaint, and the proceedings commenced on June 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 4, 2021. The Center appointed M. Scott Donahey as the sole panelist in this matter on August 10, 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 Complainant is part of the group of companies affiliated to Philip Morris International Inc., a leading provider of tobacco and related products. Complainant offers its products in 180 countries. Its products include the MARLBORO cigarette brand, which has been one of the world’s number one international selling cigarette brand since 1972 (Complaint, Annex 4). Complainant has transitioned its business from combustible cigarettes to Reduced Risk products. One of these products is called “IQOS.” IQOS is a heating device into which specially designed tobacco products are sold under the brand name HEETS. This system was first launched in 2014 and is now available in 64 markets around the world. Indeed, it has captured 20% of the market for such products in Japan (Complaint, Annex 5). Complainant has a large portfolio of trademarks for its products. That portfolio includes the trademark HEETS, registered in the United Arab Emirates (“UAE”) as early as December 25, 2017, and the trademark IQOS, registered in the UAE as early as July 20, 2016 (Complaint, Annexes 6 and 7). Complainant has never authorized Respondent to use these or any of its trademarks in any fashion. Respondent registered the disputed domain name on December 28, 2020, several years after Respondent had registered its trademarks in the UAE (Complaint, Annex 1). The disputed domain name links to an online shop which allegedly sells and offers for sale Complainant’s IQOS system, as well as competing products of other commercial origin. The website can be said to be directed to the UAE, in that all prices for the products offered are listed in the UAE dirham currency and listing an address as “International City, Dubai.” The website prominently displays Complainant’s HEET trademarks and logos at the top of the Website. In addition, the website features product images of Complainant’s product, without having been authorized by Complainant to do so, as well as similar types of products offered by competitors (Complaint, Annex 8). 5. Parties’ Contentions A. Complainant Complainant asserts that the disputed domain name is confusingly similar to its HEETS trademark. Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant contends that Respondent has registered and is using the disputed domain name in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the complainant must prove each of the following: (i) that the domain name registered by the respondent 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 domain name; and, (iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The disputed domain name consists of Complainant’s registered trademark HEET together with the English word “group”. The Complainant’s HEET trademark is clearly recognizable in the disputed domain name. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s registered trademark. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the almost impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Furthermore, the disputed domain name consists of the HEET trademark plus the additional term “group”, which suggest that it was registered by the trademark owner. UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See section 2.5.1 of the WIPO Overview 3.0. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith Respondent registered the disputed domain name years after Complainant had registered its HEET trademark in the UAE. The Website appears to be that of Complainant, as it includes the HEET trademark as part of the disputed domain name and implies that it is associated with the HEETS group. It purports to offer for sale the products of Complainant and of Complainant’s competitors. Respondent never sought nor did Complainant ever grant Respondent the right to use its trademark nor to sell Complainant’s products. Accordingly, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith as described under paragraph 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 disputed domain name M. Scott Donahey
Sole Panelist
Date: August 13, 2021
Full & Egal Universal Law Academy