The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Jacatay hatar, Bangladesh.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2021. On November 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 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 26, 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 29, 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 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2021.
The Center appointed Adam Samuel as the sole panelist in this matter on December 23, 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 a part of group of companies affiliated with Philip Morris International Inc, a tobacco and smoke-free products company. The Complainant’s group has developed a tobacco heating system into which specially designed tobacco sticks under a number of names, including “Heets”, are inserted to produce a nicotine-containing aerosol. The Complainant owns a number of trademarks for the name HEETS in a variety of countries including United Arab Emirates trademark number 256864, registered on December 25, 2017 and United Arab Emirates trademark number 256867, registered on December 25, 2017 for HEETS but with the two “e” represented solely by the three horizontal bars of those letters.
The disputed domain name was registered on August 23, 2021. The disputed domain name resolves to a website selling a variety of products, including the HEETS products manufactured by the Complainant’s group and those of the group’s competitors.
5. Parties’ Contentions A. ComplainantThe disputed domain name includes the Complaint’s trademark, the word “vape” and the initials of the United Arab Emirates and the generic top-level domain (“gTLD”) “.com”. The additional of merely generic, descriptive or geographical wording to a trademark in a disputed domain name is normally insufficient in itself to avoid a finding of confusing similarity. The gTLD is a standard registration requirement and as such is disregarded under the confusing similarity test. The unlawful association with the Complainant is exacerbated by the Respondent’s use of the Complainant’s official product images without the Complainant’s authorization.
The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or register a domain name incorporating its HEETS trademark. The website to which the disputed domain name resolves is selling competing tobacco products and accessories of other commercial origin as well as the products of the Complainant’s group.
The Respondent prominently presents the Complainant’s HEETS trademark at the top left of its website without indicating the identity of the website’s owner. It also uses the Complainant’s official product images while falsely claiming copyright in the material. This reinforces the incorrect impression that the website is endorsed by the Complainant.
The Respondent’s use of the disputed domain name shows that the Respondent knew of the Complainant’s HEETS trademark when registering the disputed domain name. The Respondent started offering the Complaint’s HEETS products immediately after registering the disputed domain name. The term HEETS is purely an imaginative term and unique to the Complainant. It is not commonly used to refer to tobacco products or electronic devices.
The Respondent is clearly suggesting falsely to any Internet user visiting the website provided under the disputed domain name that the Complainant or an affiliated dealer of the Complainant is the source of website. The Respondent is also using the Complainant’s trademark for the purpose of offering for sales third party products of other commercial origin.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsTo succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
The disputed domain name consists of the Complainant’s distinctive trademark HEETS surrounded by the word “vape”, and the acronym for the country, United Arab Emirates. This is followed by the generic Top-Level domain (“gTLD”) “.com”. The gTLD is irrelevant here as it is a standard registration requirement. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Section 1.8 of the WIPO Overview 3.0 says:
“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical … or otherwise) would not prevent a finding of confusing similarity under the first element.”
For all these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate InterestsThe Respondent is not called “Heets” or anything similar. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. The Respondent does not appear to have used the disputed domain name for any legitimate purpose.
Based on the available record, where the Complainant has made out a preliminary case that the Respondent lacks rights or legitimate interests, and in the absence of any response on this point, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See section 2.1 of the WIPO Overview 3.0.
C. Registered and Used in Bad FaithThe Respondent constructed the website to which the disputed domain name resolves shortly after registering the disputed domain name.
HEETS is a made-up word with no ordinary meaning. The website to which the disputed domain name resolves describes itself prominently at the top of its homepage as an online shop “vape heets”, with the term “uae” in smaller print just below. There is no other indication on the website concerned of its owner.
The website to which the disputed domain name resolves offers for sale among other things the Complainant’s HEETS products using the marketing images of the Complainant’s group for these products.
When it registered the disputed domain name, the Respondent knew of the Complainant’s HEETS trademark or at least the range of products of its group. The presentation of the home page suggests an intention to confuse Internet users into thinking wrongly that the owner of the HEETS trademark endorsed the Respondent’s website.
The Respondent appears to have registered the disputed domain name primarily to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site. This is evidence of registration and use in bad faith: paragraph 4(b)(iv) of the Policy.
For all these reasons, the Panel concludes that the Respondent registered and is using the disputed 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,
Adam Samuel
Sole Panelist
Date: January 4, 2022