Philip Morris Products S.A. v. Domains By Proxy, LLC / Mohammad Nasir, Smart Vape
Case No. D2021-4301 1. The PartiesThe Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Domains By Proxy, LLC, United States of America (“United States”) / Mohammad Nasir, Smart Vape, United Arab Emirates (“UAE”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2021. On December 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 21, 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 December 21, 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 December 22, 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 January 17, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2022.
The Center appointed Nick J. Gardner as the sole panelist in this matter on February 17, 2022. 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. (the group is referred to as “PMI” in this decision). PMI is a leading international tobacco company, with products sold in approximately 180 countries. Its products include well-known brands such as MARLBORO.
In the course of transforming its business from combustible cigarettes to (so-called within the tobacco industry) Reduced Risk Products (or “RRPs”), PMI has developed a new product, namely a precisely controlled heating device into which a specially designed tobacco product is inserted and heated to generate a nicotine-containing aerosol. The device itself is marketed under the brand name IQOS, while the tobacco inserts are branded HEETS. The IQOS product was first introduced in Japan in 2014, and is now available in some 44 markets across the world.
The Complainant is the proprietor of various trademark registrations for the term HEETS including UAE Registrations HEETS (word) No. 256864 registered on December 25, 2017. These trademarks are referred to collectively in this decision as the HEETS trademark. The Complainant also relies upon trademark registrations for various other terms but in view of the Panel’s findings below in relation to the HEETS trademark the Panel has not found it necessary to consider these.
The Disputed Domain Name was registered on June 25, 2021. The Disputed Domain Name is linked to a website (referred to in this decision as the “Respondent’s Website”) which offers or purports to offer the Complainant’s IQOS system. The Respondent’s Website is provided in English but prices are displayed in UAE currency. The Respondent’s Website contains copyright images belonging to the Complainant and (subject to a disclaimer — see below) generally gives the impression that it is a website operated by or with the authority of the Complainant. For example, it contains text which says “Are you looking for the best online IQOS Heets dealer in Dubai?”.
The Respondent’s Website includes a disclaimer at the bottom of the landing page, which is only visible after scrolling down, stating “Heetsvaping.com has no affiliation with Philip Morris International (PMI). This is not official website of PMI and IQOS”.
5. Parties’ Contentions A. ComplainantThe Complainant submits that the Disputed Domain Name is confusingly similar to the HEETS trademark, in which it has rights. It differs from the Complainant’s trademark only by the addition of the descriptive term “vaping”.
The Complainant further submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make use of the Complainant’s trademark. The Complainant says that the Respondent has designed its website so as to mislead visitors into thinking that it was a website of PMI. The Complainant notes in this regard that the disclaimer on the website is only visible after scrolling down and is not particularly prominent and that its use of the Complainant’s branding and official marketing materials are likely to create the overall impression that the website is that of or connected to PMI. The Complainant acknowledges that a reseller or distributor can be making a bona fide offering of goods or services and thus have a legitimate interest in a domain name but only if certain requirements are met. It refers to the well‑known decision in the case Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. It says the criteria as set out in that case are not satisfied in the present situation.
Finally, the Complainant submits that the Disputed Domain Name was registered and has been used in bad faith. The Complainant submits that the Respondent chose the Disputed Domain Name in order to deliberately cause confusion among Internet users as to the source of the goods sold through its website in order to take unfair advantage of the Complainant’s reputation.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Preliminary Matter: No ResponseThe Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909).
6.2. Substantive MattersTo succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with 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;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has rights in the HEETS trademark. The Panel finds the Disputed Domain Name is confusingly similar to this trademark.
The Disputed Domain Name simply adds the term “vaping” to the trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000‑0662). It is well established that, where a mark remains recognizable in a domain name, the domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694). It is also established that the addition of a term (such as here “vaping”) to a domain name does not prevent a finding of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253; PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006‑0189; and section 1.8 of WIPO Overview 3.0).
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate InterestsThe Panel finds the HEETS trademark is, on the evidence before the Panel, a distinctive term relating to the Complainant which appears to be a coined word with no ordinary meaning and where there is no evidence of anyone else using that or any similar term.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
“(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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.”
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the HEETS trademark. The Complainant has prior rights in the HEETS trademark, which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name, and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003‑0455).
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name.
Further the Panel agrees with the Complainant that the criteria set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, are not satisfied in the present case. In the present case, the Respondent is offering the Complainant’s products by falsely giving the impression that it is an authorised reseller of the Complainant for the UAE territory, offering for sale third party accessories to Complainant’s trademarked goods, and only provides a limited disclaimer that is further discussed below under Section C. This prevents the finding of a legitimate interest on behalf of the Respondent.
Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad FaithUnder paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel concludes that the filed evidence establishes clearly that paragraph 4(b)(iv) of the Policy applies as the Disputed Domain Name is likely to attract traffic because of confusion with the Complainant’s trademark, and the Respondent hopes to derive commercial gain as a result. There appears to be no plausible reason for the Respondent’s selection of the Disputed Domain Name other than as a deliberate attempt to profit from the confusion generated with the Complainant’s HEETS trademark. The Panel finds that the Respondent has failed to produce any evidence to rebut that inference or to show that the registration and use of the Disputed Domain Name was not in bad faith.
The Panel has also considered the fact that (as described above) the Respondent’s Website carries a disclaimer. The Panel does not consider this assists the Respondent. It is not particularly prominent and a visitor has to scroll down a considerable distance to find it. This issue is discussed in WIPO Overview 3.0 at section 3.7: “How does a disclaimer on the webpage to which a disputed domain name resolves impact a panel’s assessment of bad faith?
In cases where the respondent appears to otherwise have a right or legitimate interest in a disputed domain name, a clear and sufficiently prominent disclaimer would lend support to circumstances suggesting its good faith. For example, where a respondent is legitimately providing goods or services related to the complainant’s mark only (see Oki Data and its progeny discussed at 2.8), the presence of a clear and sufficiently prominent disclaimer can support a finding that the respondent has undertaken reasonable steps to avoid unfairly passing itself off as related to the complainant, or to otherwise confuse users.
On the other hand, where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. In such cases, panels may consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused.”
For the reasons discussed above, the Panel does not consider the Respondent has rights or legitimate interests in the Disputed Domain Name and accordingly the Panel does not consider the disclaimer, even if it was more prominent, assists the Respondent. As a result, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
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
Nick J. Gardner
Sole Panelist
Date: March 3, 2022