The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Michail Ivanov, United States of America (“United States”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2021. On November 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 9, 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 November 9, 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 November 10, 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 November 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2021.
The Center appointed Pablo Palazzi as the sole panelist in this matter on December 15, 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 BackgroundThe Complainant, Philip Morris Products S.A., is a company affiliated to Philip Morris International Inc, an international tobacco and smoke-free products company selling products in around 180 countries of the world.
The Complainant has developed the IQOS system, a precisely controlled heating device into which specially designed tobacco products under the trademarks HEETS or HEATSTICKS are inserted and heated to generate flavourful nicotine-containing aerosol. Such products are being marketed in key cities in around 67 markets across the world through official IQOS stores and websites and selected authorized distributors and retailers.
The Complainant owns several trademark registrations in many countries including a trademark in the United States of America (see registration HEATSTICKS No. 4758618, registered on June 23, 2015, in class 34).
The disputed domain name
The Complainant contends that (i) the disputed domain name is confusingly similar to the Complainant’s trademarks; (ii) the Respondent has no rights or legitimate interests in the disputed domain name; and (iii) the Respondent registered and is using the disputed domain name in bad faith.
The Complainant claims that the disputed domain name is confusingly similar to its trademarks. For the Complainant, the disputed domain name consists of the HEATSTICKS trademark and the term “news”, as well as the generic Top-Level Domain (“gTLD”) “.com”. In addition, the term “Heatsticks” is not commonly used to describe tobacco products but is exclusive to the Complainant and its products. Finally, for the Complainant, the disputed domain name will clearly be associated with the Complainant’s HEATSTICKS trademarks so that, when visiting the Respondent’s website, any user will reasonably expect to find a website commercially linked to the Complainant.
The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Indeed the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks and the Respondent is not an authorized distributor or reseller of the IQOS System or HEETS tobacco sticks. In addition, the criteria for a bona fide offering of goods or services as established in Oki Data Americas, Inc. v. ASD, Inc,WIPO Case No. D2001-0903, is not met.
By reproducing the Complainant’s registered trademark in the disputed domain name and the title of the Website, the Respondent is clearly suggesting to any Internet user visiting a website provided under the Disputed Domain Name 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 website, as well as the third party online shop to which user / relevant consumer are redirected to from the Website (namely, the website located at “www.smokeus.org”), using the Complainant’s official product images, accompanied by a copyright notice claiming the copyright for the Website and its contents.
The Complainant notes that the illegitimacy of the Respondent’s use of the Disputed Domain Name is further amplified by the fact that the Complainant does not currently offer for sale its HEETS products in the United States, and the Website associated with the disputed domain name creates the false impression that the Complainant has officially introduced its HEETS products into the United States market referring and/or including hyperlinks which redirects the user / relevant consumer to a third party website selling the Complainant’s specially designed HEETS tobacco products – which it has not: to do so absent FDA approval is illegal.
It is clear that the Respondent knew of the Complainant’s trademarks when he registered the disputed domain name. Furthermore, the term “Heatsticks” is a purely imaginative term and unique to the Complainant. For the Complainant, it is also evident from the Respondent’s use of the disputed domain name that the Respondent registered and is using 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 trademarks.
The Complainant request the transfer of the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsAccording to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
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 was registered and is being used in bad faith.
The Complainant submitted evidence, which incontestably and conclusively establishes rights in the HEATSTICKS trademarks.
The disputed domain name wholly incorporates the Complainant’s trademarks HEATSTICKS, which, as long established by previous UDRP panels, may be sufficient to determine that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks.
Furthermore, ignoring the gTLD “.com”, the addition of the term “news” does not prevent the disputed domain name to be confusingly similar to the Complainant’s trademark.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the trademarks. The Complainant has prior rights in the trademarks which precede the Respondent's registration of the disputed domain name by several years. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trademark rights in respect of the domain name or that the domain name is used in connection with a bona fide offering of goods or services. As stated above, the disputed domain name resolves to a website providing general information about the Complainant’s products and including banners and links that redirect to a website where some of the Complainant’s products are offered for sale in the United States without legal authorization. Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals) can never confer rights or legitimate interests on a respondent. See section 2.13 of the WIPO Overview 3.0. Regardless of the offering for sale of these products, the disputed domain name itself is such to carry a risk of implied affiliation; one that is not clarified when Internet users access the website to which the disputed domain name resolves, seeing as the dipsuted domain name fails to include any clarifying statement as to its relationship, or lack thereof, to the Complainant. Accordingly, the Respondent’s use of the disputed domain name does not qualify as fair use nor represents a bona fide offering of goods or services.
Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithThe Complainant must prove both that the domain name was registered in bad faith and that it is being used in bad faith.
The Complainant's allegations with regard to the Respondent’s registration and use of the domain name in bad faith has been considered by the Panel. These allegations have not been contested by the Respondent because of its default.
The Panel understands that the Respondent was aware of the Complainant’s products at the time of registration of the disputed domain name since the content of the disputed domain name is related to the Complainant products and it redirects with hyperlinks to a website where the Complainant’s products are on sale without authorization of the Complainant.
The circumstances in the case before the Panel indicate that the Respondent was aware of the Complainant’s HEATSTICKS trademark when registering the domain name and that it has intentionally been and is being used in an attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on a website.
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the domain name in bad faith.
7. DecisionFor 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
Pablo A. Palazzi
Sole Panelist
Date: December 29, 2021