The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Hiulnara Rieznik, Dzhulia.Rez, Netherlands. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2021. On July 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7, 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 7, 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 7, 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 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2021. The Respondent’s informal email communication was received by the Center on July 7, 2021. The Commencement of Panel Appointment Process was sent to the Parties on August 4, 2021. The Center appointed James Bridgeman 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 The Complainant is a manufacturer of tobacco and smoke-free products for which it uses the HEETS trademark and service marks and is the owner of the following International Trademark registrations: - International trademark registration HEETS (word) registration number 1326410, registered on July 19, 2016, for services in classes 9, 11 and 34; and It is also relevant that the Complainant owns and uses the IQOS trademark for which it has provided details of its International trademark registration IQOS (word), registration number 1218246 registered on July 10, 2014, for services in classes 9, 11 and 34, designating a number of jurisdictions. The disputed domain name There is no information available about the Respondent except for that provided in the Complaint as amended, the Registrar’s WhoIs, and the information provided by the Registrar in response to the request by the Center for confirmation of the registration details of the disputed domain name. 5. Parties’ Contentions A. Complainant The Complainant submits that it is a manufacturer of a tobacco heating device into which specially designed tobacco products are inserted and heated to generate a nicotine-containing aerosol. The tobacco products are marketed under the HEETS trademark and the device is marketed as the “IQOS System”. Relying on its abovementioned international trademark registrations, and its extensive use of the HEETS mark, the Complainant claims registered trademark rights, and rights at common law, in the HEETS mark for the purposes of the Policy. The Complainant argues that the disputed domain name The Complaint argues that the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP (citing Compagnie Générale des Etablissements Michelin v. PrivacyDotLink Customer 1197652 / Alex Hvorost, WIPO Case No. D2016-1923). The Complainant adds that it is well established that the applicable gTLD extension in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11 and the cases referenced therein). The Complaint then alleges that the Respondent has no rights or legitimate interests in the disputed domain name, arguing that the Complainant 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). The Complainant adds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name but 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 because: Firstly, the Respondent is not an authorized distributor or reseller of the IQOS System. Secondly, the website to which the disputed domain name resolves does not meet the requirements set out by numerous panel decisions for a bona fide offering of goods as set out in the decisions of previous panels and in particular the decision in the leading case on this point, Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The Complainant submits that the UDRP panel in Oki Data concluded that the use of a manufacturer’s trademark as a domain name by a reseller could be deemed a “bona fide offering of goods or services” within the meaning of the Policy only if the following conditions are satisfied: 1. the Respondent must actually be offering the goods or services at issue; trademark owner of the ability to reflect its own mark in a domain name. The Complainant argues that it is a common principle in all cases regarding the Oki Data scenario that the use of a domain name cannot be “fair” if it suggests an affiliation with the trademark owner (see AB Electrolux v. Handi Sofian, Service Electrolux Lampung,WIPO Case No. D2016-2416; and the decisions provided therein). The Complaint contends that in casu, the disputed domain name in itself suggests at least an affiliation with the Complainant and its HEETS trademark, because it wholly reproduces the Complainant’s registered HEETS trademark together with the geographical abbreviations for the Netherlands, Germany, and Belgium, to form the non-distinctive addition “nedebel”. Referring to a screen capture of the website to which the disputed domain name resolves, the Complainant argues that the owner / administrator of the website, prominently and without authorization presents the Complainant’s registered IQOS trademark at the top left of the website (i.e. “IQOS NEDEBEL”), where relevant consumers will usually expect to find the name of the online shop and/or the name of the website provider. The screen capture furthermore shows that the website displays the Complainant’s official product images without authorization. The Complaint contends that there is no information regarding the identity of the provider of the website, which is only identified as “IQOS NEDEBEL” on the website, being a name which similarly includes the Complainant’s registered IQOS trademark (without authorization) and further serves to perpetuate the false impression of an official commercial relationship between the Website and the Complainant. The Complainant then refers to a statement on the web page, which it submits is not a disclaimer presented in a clear and sufficiently prominent manner. The Complainant argues that according to the principles established by previous UDRP panels, disclaimers must effectively disclose the relationship existing between the operator of a website and the trademark owner, whereas: - the Respondent’s statement is to the effect that HEETS and other marks, IQOS, MARLBORO and HEATSTICKS, are registered trademarks of the Complainant which is inaccurate and does not correctly identify that the MARLBORO trademark is owned by Philip Morris Brands Sàrl outside of the United States, and by Philip Morris USA Inc. in the United States; - the disclaimer makes no mention of the relationship (or lack thereof) between the provider of the website and the HEETS trademark; Furthermore, as the disclaimer is positioned at the bottom of the landing page of the website, which the disputed domain name resolves to, it is likely that users will order products in the online store without scrolling all the way to end of the page and/or without recognizing the disclaimer. Even if a user stumbles over the disclaimer at the bottom of the landing page of the website it is unlikely that the user will read it before making the commercial decision to purchase the products. As the Complainant’s IQOS System is primarily distributed through officially endorsed stores, consumers are likely to be misled regarding the relationship between the website and the Complainant, The Complainant argues that such use of the disputed domain name cannot be considered a bona fide offering of goods and does not establish a legitimate interest on behalf of the Respondent. Therefore, the second element of the test in paragraph 4 of the Policy is met. The Complainant then alleges that the disputed domain name was registered and is being used in bad faith arguing that the registrant of the disputed domain name must have been aware of the Complainant’s pre‑existing rights in the HEETS mark when the confusingly similar domain name was registered on June 25, 2021. The Complainant adds that the subsequent use of the disputed domain name to resolve to an online shop purporting to sell the Complainant’s HEETS branded tobacco products, shows that the registrant was aware of the Complainant’s rights and reputation on that date. It is argued that the Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s registered HEETS trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. By reproducing the Complainant’s registered trademark in the disputed domain name and its IQOS mark in the title banner “IQOS NEDEREL”, the Respondent’s website clearly suggests that the Complainant or an affiliated dealer of the Complainant is the source of the website, which it is not. This suggestion is further supported by the Respondent’s use of the Complainant’s official product images. Therefore, the third element of the test in paragraph 4 of the Policy is met. B. Respondent The Respondent did not file a Response. However, on July 7, 2021, the Respondent submitted an informal email communication containing a general query about the proceeding, without any substantive information regarding the Complainant’s contentions. The Center received no further communications from the Respondent after the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 13, 2021. 6. Discussion and Findings Paragraph 4(a) of the Policy requires the Complainant to establish that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and The Complainant has adduced uncontested evidence that it has rights in the HEETS trademark and service mark established through its ownership of the international trademark and service mark registrations described above and by extensive use of the mark in its sales of tobacco products. The disputed domain name consists of the Complainant’s HEETS trademark and service mark in its entirety in combination with the element “nedebel” and the gTLD “.com”. The Complainant’s HEETS mark is wholly incorporated and clearly recognizable in the disputed domain name. The element “nedebel” has no obvious meaning as a word, certainly in the English language, which is the language of the registration agreement and the website to which it resolves, however, the Complainant’s submission that the letters represent abbreviations for the geographical terms Netherlands, Germany, and Belgium, is plausible. Whether the element “nedebel” is a meaningless string of letters or the abbreviations suggested by the Complainant, in either case, it does not prevent a finding of confusing similarity (see WIPO Overview 3.0, section 1.8). For the purposes of evaluating confusing similarity the gTLD “.com” may be ignored in the circumstances of this Complaint because as a gTLD it would be recognized as a technical necessity for a domain name and serves no other purpose or meaning in this context (see WIPO Overview 3.0, section 1.11). This Panel finds therefore that the disputed domain name is confusingly similar to the HEETS trademark in which the Complainant has rights and the Complainant has succeeded in the first element of the test in Policy 4(a)(i). B. Rights or Legitimate Interests The Complainant has made out an uncontested prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name arguing that: - the Complainant 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); - the website to which the disputed domain name resolves, as evidenced in the Complaint, uses the Complainant’s IQOS trademark and official product images without authorization and includes no information regarding the identity of the provider of the website except to present the name “IQOS NEDEBEL”; IQOS is one of the Complainant’s registered trademarks and the term “IQOS NEDEBEL”, further serves to perpetuate the false impression that there is an official commercial relationship between the website and the Complainant. - the statement on the website to which the disputed domain name resolves does not serve as an effective disclaimer as it unclear, inaccurate and fails to effectively disclose that there is no formal relationship existing between the operator of a website and the Complainant as trademark owner, and as it is positioned at the bottom of the landing page, it is unlikely to be read by Internet users before they purchase product; - such use of the disputed domain name cannot be considered a bona fide offering of goods, nor does it establish a legitimate interest in the disputed domain name for the Respondent; and - on the contrary, the Respondent’s behavior 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. This Panel accepts the Complainant’s submissions that in order to prove fair use of a trademark by a reseller of a trademark owner’s goods a respondent must meet certain tests first set out in the Oki Data case and subsequently accepted by the majority of UDRP panelists addressing the issue. These tests include that the respondent must actually be an offering the goods or services at issue; that the respondent must use the website to which the disputed domain name resolves to sell only the trademarked goods; that the site must accurately disclose the registrant's relationship with the trademark owner; and that the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. In casu, the Respondent and the website to which the disputed domain name resolves does not satisfy that test. For reasons given below, this Panel accepts that the Respondent does not meet this test. It is well established that if the Complainant makes out a prima facie case, the burden of production shifts to the Respondent to prove his rights or legitimate interests in the disputed domain name. The Respondent has failed to file any Response to the Complaint or provide any defence to the Complainant’s allegations and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has therefore succeeded in the second element of the test in Policy 4(a)(ii). C. Registered and Used in Bad Faith The HEETS trademark is a coined word extensively used by the Complainant as its trademark for heated tobacco products. The Complainant had established rights in, and extensively used the HEETS mark when the confusingly similar disputed domain name was registered on June 25, 2021. This Panel finds in the balance of probabilities that the registrant of the disputed domain name was aware of the HEETS mark, the Complainant’s use of and rights in the HEETS mark and the goodwill and reputation of the Complainant in the HEETS mark when the disputed domain name was chosen and registered. This Panel further finds that the disputed domain name was registered and is being used in bad faith in order to take predatory advantage of the reputation of the Complainant by using the HEETS mark as the dominant and only distinctive element of the disputed domain name in order to attract Interent users intending to find a website or other location owned or associated with the Complainant. The Respondent’s use of the disputed domain name as the address of a website with an online shop purporting to sell the Complainant’s HEETS and IQOS branded products, in circumstances where it is unclear that there is no formal relationship between the Respondent and its website on one hand, and the Complainant and the HEETS mark on the other hand, supports the finding that the disputed domain name was chosen and registered in bad faith. Additionally such use of the disputed domain name as the address of an online shop shows the intention of the Respondent to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s registered HEETS trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. In particular, this Panel is satisfied that the disclaimer on the Respondent’s website, does not evidence any good faith on the part of the Respondent, nor does it sufficiently disclose that there is no relationship between the Respondent, its website, the disputed domain name and the Complainant. In fact rather than being a clear disclaimer because it is in the form of a copyright notice, it can be taken as an assertion of the rights of the person who maintains the website. It appears at the footer of the webpage as is customary for rights’ notices. It states on two lines: “ © All product and company names are trademarks or registered trademarks of their respective holders. Use of the does not imply any affiliation with or endorseme (sic) “IQOS”, “HEETS”, “Marlboro”, and “Heatsticks” are registered trademarks of PMI (Philip Morris International Inc.) in the United States and other Countries.” As this Panel has found that the disputed domain name was registered and is being used in bad faith, the Complainant has therefore succeeded in the third and final element of the test in Policy paragraph 4(a)(iii) and is entitled to the remedy requested. 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 James Bridgeman
- International trademark registration HEETS (word/device) registration number 1328679, registered on July 20, 2016, for goods and services in classes 9, 11 and 34.
2. the Respondent must use the site to sell only the trademarked goods;
3. the site itself must accurately disclose the Respondent’s relationship with the trademark owner; and
4. the Respondent must not try to “corner the market” in all relevant domain names, thus depriving the
- the disclaimer purposefully omits the most crucial information having regard to the fact that it is the Complainant’s HEETS trademark that appears in the disputed domain name (and is, in fact, the first and most prominent element in the disputed domain name) and at the top of the website (being a location where users / relevant consumers usually expect to find the name of the online shop and/or the name of the provider of the website); and
- therefore, the information provided in the disclaimer is false and inaccurate and is not sufficient to clarify the relationship between the website and the trademark owner.
(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
Sole Panelist
Date: August 18, 2021
Full & Egal Universal Law Academy