The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Wthheld for Privacy ehf, Iceland / Xinke Liu, Australia.
2. The Domain Nameand 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 Domain Name. On November 9, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 Ian Lowe 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 is part of the group of companies affiliated to Philip Morris International, Inc. (“PMI”). PMI is an international tobacco company with products sold in around 180 countries. In 2014, PMI launched its IQOS System that comprises a device that heats specially designed tobacco sticks, under the brand name HEETS, sufficiently to generate a flavourful nicotine-containing aerosol without burning the tobacco. The IQOS System is now available in key cities in around 66 markets around the world and approximately 19.1 million consumers worldwide now use the IQOS System.
The IQOS System has been distributed almost exclusively through PMI’s official IQOS stores, websites, and selected authorized distributors and retailers.
The Complainant is the proprietor of a number of registered trademarks in respect of IQOS and HEETS including Japan trademark number 5727311 IQOS registered on December 19, 2014, and International trademark number 1326410 HEETS registered on July 19, 2016 designating a number of territories including Japan and Australia.
The Domain Name was registered on August 11, 2021. At the time of filing of the Complaint, it resolved to a website provided in both English and Japanese (the “Website”) comprising an online shop purporting to offer for sale the Complainant’s IQOS System, including HEETS products, at prices apparently listed in Australian dollars. The Website home page is headed “IQOSPOST” and prominently uses the IQOS and HEETS trademarks and copies of a number of the Complainant’s official product images. A copyright notice at the bottom of the Website claims copyright in the material on the Website. The Website does not show any details regarding the provider of the Website or acknowledge the Complainant as the brand owner of the IQOS System. According to the Web Archive at “www.web.archive.org/web/20211205222033/heetsales.com”, on December 5, 2021, the Domain Name redirected to a website at “www.heetsmail.com” that now appears to be identical to the Website.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the Domain Name is confusingly similar to its HEETS trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsFor this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Complainant has uncontested rights in the HEETS trademark (the “Mark”), both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its use of the Mark over a number of years. Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the Domain Name comprises the entirety of the Mark, together with the letters “ales”. In the view of the Panel, the addition of the letters “ales” in these circumstances means that the Domain Name is likely to be taken as an elision between the Mark and the word “sales” and does not prevent a finding of confusing similarity between the Domain Name and the Mark. Moreover, prior panels have noted that the addition of terms or letters to a trademark does not prevent a finding of confusing similarity. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsThe Respondent has used the Domain Name for a website featuring the Mark purporting to offer IQOS products without the authority of the Complainant. Furthermore, the Website features unauthorized copies of images of the Complainant’s products. The Respondent is not an authorized sales agent of the Complainant.
However, there is no evidence that the Respondent is offering any products other than genuine products of the Complainant.
Although there has been no Response by the Respondent, the Panel has in mind that previous UDRP panels have recognized that resellers using a domain name containing the complainant’s trademark to undertake sales of the complainant’s goods may be making a bona fide offering of goods and thus have a legitimate interest in such domain name. The Oki Data1 test as set out in section 2.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) outlines the following cumulative requirements for such a finding:
(i) the respondent must actually be offering the goods at issue;
(ii) the respondent must use the site only to sell the trademarked goods;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
So far as the fourth requirement is concerned, the Complainant has adduced evidence that the Respondent has also been responsible for other domain names relating to the Complainant’s products that have been the subject of successful complaints under the Policy. These include
Turning to the third requirement, the Website gives no information whatsoever as to the identity of the operator of the Website or seller of the products on offer. There is no “About Us” page or any terms and conditions as to sales of the products. The Website fails to make clear in an accurate and prominent way, or at all, the Respondent’s relationship (or absence of relationship) with the Complainant.
In the Panel’s view, the use of the Complainant’s Marks and images falsely represents to Internet users that the Respondent is authorized by the Complainant to sell the products.
Accordingly, the Panel does not consider that the Respondent has met the Oki Data test, and finds that there is a prima facie case that the Respondent does not have any rights or legitimate interests in respect of the Domain Name. The Respondent has chosen not to respond to the Complaint or to take any steps to counter the prima facie case established by the evidence available to the Panel. In the circumstances, the Panel finds that the Complainant has established that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad FaithSince the Respondent has used the Domain Name for a website prominently featuring the Mark and other trademarks of the Complainant, and has operated an online shop purporting to offer the Complainant’s products for sale, the Panel is in no doubt that the Respondent had the Complainant and its rights in the Mark in mind when it registered the Domain Name. In light of the Respondent’s use of the Mark and copies of the Complainant’s images of its products, the Panel considers that the Respondent has registered and used the Domain Name with a view to confusing Internet users into believing that the Website was associated with or authorised by the Complainant.
In the Panel’s view, the use of the Domain Name for such activity, clearly with a view to commercial gain, amounts to paradigm bad faith registration and use for the purposes of the Policy, paragraph 4(b)(iv).
Accordingly, the Panel finds that the Domain Name has been registered and is being used 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 Domain Name
Ian Lowe
Sole Panelist
Date: December 21, 2021
1 Oki Data Americas, Inc v. ASD, Inc.,WIPO Case No. D2001-0903