The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is dablu hossain, Bangladesh.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2021. On December 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 22, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 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 January 3, 2022.
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 4, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 5, 2022. The Respondent sent informal emails to the Center on January 10 and 12, 2022.
The Center appointed Dawn Osborne as the sole panelist in this matter on February 14, 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 Philip Morris group of companies famous for tobacco products across the world.
The Complainant is the owner, inter alia, of the trade mark HEETS registered in the United Arab Emirates (“UAE”) for smoking products on December 25, 2017.
The Domain Names registered in 2021 have both been used in connection with similar web sites (selling e-cigarette products including products not manufactured or connected to the Complainant) which use the Complainant’s HEETS mark in their mastheads without permission. The Complainant’s official images of its products are also reproduced on the web sites without permission.
5. Parties’ Contentions A. ComplainantThe Complainant’s contentions can be summarised as follows:
The Complainant is the owner of the mark HEETS registered, inter alia, as detailed above.
The Domain Names registered in 2021 are confusingly similar to the Complainant’s HEETS trade mark incorporating it in its entirety adding only the dictionary word “vape” and the geographical indications “Dubai” or “Jumeirah” and the generic Top-Level Domain (“gTLD”) .com which do not prevent confusing similarity.
The Respondent does not have any rights or legitimate interests in the Domain Names, is not commonly known by them, and is not authorised by the Complainant.
The Domain Names have both been used for similar web sites selling e-cigarette products including products not of the Complainant’s manufacture or connected to the Complainant using the Complainant’s HEETS mark in their mastheads. Official images belonging to the Complainant of the Complainant’s products are also used on the web sites without permission. The web sites are being presented as connected with the Complainant when they are not. The web sites do not properly disclose that the operator of the sites is not affiliated with the Complainant as the owner of the HEETS mark and that some of the products on the web site have no connection with the Complainant as the owner of the HEETS mark. One of the products not connected with the Complainant also infringes rights of the Complainant in another of its registered marks IQOS. The use made of the Domain Names by the Respondent is not a bona fide offering of goods or services.
The use made by the Respondent of the Domain Names is registration and use in bad faith misleading Internet users for commercial gain and shows the Respondent is aware of the Complainant’s trade marks, its business, and products.
The use by the Respondent of a privacy service to hide its identity is also suggestive of bad faith.
B. RespondentThe Respondent indicated in email correspondences to the Center that he was willing to transfer the Domain Names to the Complainant, however when a settlement was not reached these Proceedings were reinstated. The Respondent has not provided a formal Response.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Domain Names consist of the Complainant’s HEETS mark (which is registered, inter alia, as a trade mark in the United Arab Emirates since 2017), the word “vape”, the geographical terms “Dubai” or “Jumeirah”, and the gTLD .com.
Previous panels have found confusing similarity when a respondent merely adds a term (whether descriptive, geographical, pejorative, meaningless, or otherwise) and a gTLD to a Complainant’s mark. The additions of the word “vape”, the geographical terms “Dubai” or “Jumeirah”, and the gTLD “.com” do not prevent confusing similarity between each of the Domain Names and the Complainant’s mark.
Accordingly, the Panel holds that the Domain Names are confusingly similar to the Complainant’s HEETS registered mark.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate InterestsThe Complainant has not authorised the Respondent for the use of its HEETS mark. There is no evidence presented by the Respondent to suggest he is commonly known by the Domain Names. The use of the Domain Names is commercial and so is not legitimate noncommercial or fair use.
The web sites attached to the Domain Names use the Complainant’s HEETS mark in their mastheads to offer e-cigarette goods including goods not connected with the Complainant. The site also reproduced official images belonging to the Complainant without permission. The sites do not make it clear that there is no commercial connection between the Respondent and its web site and some of the products on it, and the Complainant. The Panel finds this use is confusing and suggestive of an endorsement or affiliation to the complainant, contrary to the fact. As such, it cannot amount to the bona fide offering of goods and services.
The Respondent has not answered this Complaint or presented any information to challenge the prima facie case made out by the Complainant that the use of the Domain Names is not legitimate.
As such, the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
C. Registered and Used in Bad FaithIn the opinion of the Panel, the use of the confusingly similar Domain Names in relation to the Respondent’s web sites is misleading and disruptive in that visitors to the web sites might reasonably believe they are connected to or approved by the Complainant as they offer e-cigarette products including products not manufactured by the Complainant under the Complainant’s HEETS mark used in their mastheads. The web site also uses the Complainant’s official images without permission. The web sites give the overall impression to Internet users that the web sites attached to the Domain Names and all the products on the site have a connection with the Complainant as true owner of these rights when they do not. The reference to actual products of the Complainant and the use of the Complainant’s images and marks on the web sites also shows that the Respondent has actual knowledge of the Complainant’s business, products and rights.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his web sites by creating a likelihood of confusion with the Complainant’s HEETS trade mark as to the source, sponsorship, affiliation or endorsement of the web sites and products offered on the web sites which are not connected with the Complainant. This is also likely to disrupt the business of the Complainant.
The Panel notes the allegation that one of the products on the Respondent’s web sites also infringes the Complainant’s IQOS registered mark, but detailed evidence on this has not been presented and consideration of this point is not necessary for decision of this Complaint.
As such, the Panelist believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy.
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 Names,
Dawn Osborne
Sole Panelist
Date: February 28, 2022