The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Roke Paka, hh, Lithuania. 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 30, 2021. On June 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 30, 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 July 2, 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 July 6, 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 July 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2021. The Center appointed Lynda M. Braun as the sole panelist in this matter on August 12, 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 with Philip Morris International Inc. (jointly referred to as “PMI”). PMI is a leading international tobacco and smoke-free products company, with products sold in approximately 180 countries. The Complainant has developed a line of products called the IQOS System. 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 flavorful nicotine-containing aerosol. Today the IQOS System is available in 64 markets worldwide and has achieved considerable international success. The IQOS System has been almost exclusively distributed through the Complainant’s IQOS stores and websites and selected authorized distributors and retailers. The Complainant owns a large portfolio of trademarks in many jurisdictions worldwide for its smoke-free products. The Complainant is the owner of the HEETS trademark in numerous jurisdictions, including Lithuania, which is part of the European Union. Examples of the registrations include: HEETS (word mark), International Trademark Registration No. 1326410, registered on July 19, 2016 in International Classes 9, 11, and 34 (designating numerous jurisdictions, including the European Union); and HEETS (word/device mark), International Trademark Registration No. 1328679, registered on July 20, 2016 in International Classes 9, 11 and 34 (designating numerous jurisdictions, including the European Union) (hereinafter collectively referred to as the “HEETS Mark”). The Disputed Domain Name was registered on June 14, 2021 and resolved to an online shop at “www.goodheets.net”, that sold and promoted smoke-free Heets products that are part of the Complainant’s IQOS System. The website was provided in Lithuanian, stating: “tai nauja kaitinamojo tabako parduotuvė Lietuvoje, kuri Jums gali pasiūlyti platų skonių asortimentą už konkurencingas kainas” (which translates to “GOOD HEETS is a new smoking tobacco store in Lithuania, which can offer you a wide range of flavors at competitive prices”). Thus, the Respondent attempted to create the false impression that it was an official online distributor of the Complainant’s IQOS System products in Lithuania. Specifically, the website prominently displayed the Complainant’s HEETS Mark at the top of the website, used the Complainant’s product images without the Complainant’s authorization or permission, and included a copyright notice at the bottom of the website. The Complainant provided screenshots of the website with its submission.1 5. Parties’ Contentions A. Complainant The following are the Complainant’s contentions: - the Disputed Domain Name is confusingly similar to the Complainant’s trademark; - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; - the Disputed Domain Name was registered and is being used in bad faith; and - the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)): (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 This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the HEETS Mark as set forth below. It is uncontroverted that the Complainant has established rights in the HEETS Mark based on its years of use plus its registered trademarks for the HEETS Mark in the European Union and numerous other jurisdictions worldwide. The general consensus is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the HEETS Mark. The Disputed Domain Name consists of the HEETS Mark in its entirety preceded by the dictionary or descriptive term “good” and then followed by the generic Top-Level Domain (“gTLD”) “.net”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of another term. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. For example, numerous UDRP decisions have reiterated that the addition of a dictionary or descriptive word to a disputed domain name does not prevent a finding of confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923. Finally, the addition of a gTLD such as “.net” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11. Thus, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s HEETS Mark. Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Name. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s HEETS Mark. The Complainant does not have any business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Based on the use made of the Disputed Domain Name to resolve to a website that sells the Complainant’s products bearing the HEETS Mark, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any name similar to it, nor any evidence that the Respondent was making demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. See Policy, paragraph 4 (c). The use of the Disputed Domain Name by the Respondent to resolve to an online shop selling the Complainant’s products creates the false impression that the online shop is associated with the Complainant or that the Respondent is an authorized distributor of the Complainant’s smoke-free products. In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. In addition, the Panel notes that the nature of the Disputed Domain Name carries a risk of implied affiliation with the Complainant. See WIPO Overview 3.0, section 2.5.1. Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy as set forth below. First, based on the circumstances here, the Panel concludes that the Respondent registered and has used the Disputed Domain Name in bad faith in an attempt to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s HEETS Mark as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name. See Policy, paragraph 4(b)(iv). The Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use has been done for the specific purpose of trading on the name and reputation of the Complainant and its HEETS Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain”). By reproducing the Complainant’s HEETS Mark in the Disputed Domain Name and on the Respondent’s website, it creates the false impression that the Complainant is the source of the website or that the Respondent is one of the Complainant’s official distributors, which it is not, and thus, is emblematic of bad faith. Second, the registration of a domain name that reproduces a trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration, may be suggestive of opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Finally, the Complainant has promoted and sold its goods and services using the HEETS Mark for many years, long before the Respondent’s registration of the Disputed Domain Name. It is therefore implausible that the Respondent was not aware of the HEETS Mark when it registered the Disputed Domain Name. Thus, the Panel finds that the Respondent had actual knowledge of the HEETS Mark and targeted the Complainant when it registered the Disputed Domain Name, demonstrating the Respondent’s bad faith. Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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 Lynda M. Braun 1 As of the writing of the decision, the Disputed Domain Name resolves to a page in English that states: “We’ll be back soon. Goodheets.net is currently unavailable. If you're a visitor to this store, please try again later. If you’re the owner of this store, please sign in to resolve the issue.”
Sole Panelist
Date: August 23, 2021
Full & Egal Universal Law Academy