WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Igori M Berger

Case No. D2021-0744

1. The Parties

The Complainant is Philip Morris Products S.A., Switzerland, represented by Boehmert & Boehmert, Germany.

The Respondent is Igori M Berger, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <yourheats.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 12, 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 March 12, 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 amendment to the Complaint/amended Complaint on March 12, 2021.

The Center verified that the Complaint together with the amendment to the 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 March 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2021.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on April 13, 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 Background

The Complainant is part of the Philip Morris International Inc. (hereinafter referred to as “PMI”), an international tobacco conglomerate that sells tobacco products in around 180 countries of the world.

One of its products is 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 flavorful nicotine-containing aerosol. Such products are being marketed in key cities in around 64 markets across the world through official IQOS stores and websites and selected authorized distributors and retailers.

The Complainant owns among others the following trademarks (Annexes 6 and 7 to the Complaint):

- International registration No. 1217386 for the word mark HEATSTICKS, registered on July 21, 2014, in class 34;

- International registration No. 1218246 for the word mark IQOS, registered on July 10, 2014, in classes 9, 11 and 34;

- International registration No. 1312086 for the word mark HEET, registered on May 17, 2016, in classes 9, 11 and 34;

- International registration No. 1326410 for the word mark HEETS, registered on July 19, 2016, in classes 9, 11 and 34;

- International registration No. 1328679 for the device mark HEETS, registered on July 20, 2016, in classes 9, 11 and 34; and

- United States of America registration No. 4758618 for the word mark HEATSTICKS, registered on June 23, 2015, in class 34.

The disputed domain name was registered on November 5, 2019 and is presently used in connection with an online shop offering the Complainant’s HEETS tobacco sticks for the IQOS system as well as FIIT tobacco sticks for sale and displaying the Complainant’s official product images.

5. Parties’ Contentions

A. Complainant

The Complainant claims to have developed the IQOS system, first launched in Nagoya, Japan in 2014.

Asserting to have invested over USD 6 billion in extensive international sales and marketing efforts to promote its IQOS system, the Complainant states that its new product has obtained considerable international success and reputation, approximately having 17.6 million relevant consumers worldwide.

According to the Complainant, the use of the disputed domain name in connection with an online shop that clearly suggests to be an official dealer of HEETS products, when it is not, by reproducing the Complainant’s marketing materials and not clearly indicating any specific details regarding the identity of the provider of the website, nor clarifying the relationship to the Complainant creates a false impression of endorsement by the Complainant. Furthermore, the Respondent, being located in the Russian Federation, where the online sales of heated tobacco sticks has been prohibited as of January 28, 2021 characterizes an illegal activity being performed at the disputed domain name.

Under the Complainant’s view, the disputed domain name <yourheats.com> is confusingly similar to the Complainant’s HEET, HEETS and HEATSTICKS trademarks given that it is well accepted that the test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name to assess whether the mark is recognizable within the disputed domain name [see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)]. In addition to that, the Complainant further contends that the disputed domain name <yourheats.com> will clearly be associated with the Complainant’s HEET, HEETS and HEATSTICKS trademarks and by implication with the Complainant’s IQOS System, being the Respondent’s specific reason for using the disputed domain name in connection with a website offering for sale the Complainant’s HEETS tobacco sticks and naming its online shop “YourHEATSticks”, thereby suggesting a commercial relationship with the Complainant.

Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that:

(i) it has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its HEET, HEETS and HEATSTICKS trademarks or a domain name which will be associated with these trademarks;

(ii) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, rather showing a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademarks owned by the Complainant;

(iii) the Respondent is not an authorized reseller of the Complainant’s IQOS system or HEETS tobacco sticks;

(iv) 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 are not met;

(v) the disputed domain name and the content of the website to which it resolves suggest at least an affiliation with the Complainant which in fact does not exist; and

(vi) the website to which the disputed domain name resolves includes no information regarding the identity of the provider of the website which further serves to perpetuate the false impression of a commercial relationship between the disputed domain name and the Complainant.

As to the registration and use of the disputed domain name in bad faith, the Complainant states that:

(i) the Respondent knew of the Complainant’s trademarks when registering the disputed domain name;

(ii) the terms HEET, HEETS and HEATSTICKS are purely imaginative terms and unique to the Complainant, not commonly used to refer to tobacco products and therefore it is beyond the realm of reasonable coincidence that the Respondent chose the disputed domain name without intention of invoking a misleading association with the Complainant;

(iii) the purpose of the Respondent’s registration of the disputed domain name was to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s registered trademarks as to the source, sponsorship, affiliation, or endorsement of its website;

(iv) by adapting the Complainant’s registered trademarks in the disputed domain name and in the title of the website, the Respondent’s website suggests the Complainant or an affiliated dealer of the Complainant as the source of the website which is not the case; being this suggestion also supported by the Respondent’s use of the Complainant’s official product images;

(v) the illegitimacy of the Respondent’s use of the disputed domain name is further shown by the fact that the offering of HEETS branded products at the disputed domain name is an illegal activity in the territory of the Russian Federation; and

(vi) the choice to retain a privacy protection service so as to hide the Respondent’s true identity is a further indication of bad faith as recognized in the WIPO Overview 3.0, section 3.6.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:

(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 has been registered and is being used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name.

In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The Complainant has established rights over the HEET, HEETS and HEATSTICKS trademarks.

The disputed domain name <yourheats.com> consists of a similar and almost identical phonetical equivalent to the Complainant’s HEETS trademark and is thus confusingly similar therewith, and the addition of the term “your” does not avoid a finding of confusing similarity under the Policy. See WIPO Overview 3.0, section 1.8. Furthermore, the use of the disputed domain name in connection with an online shop offering the Complainant’s products and reproducing the Complainant’s marketing materials affirms a finding of confusing similarity between the disputed domain name <yourheats.com> and the Complainant’s HEETS and HEATSTICKS trademarks. The Panel notes it appears prima facie that the Respondent is seeking to target the Complainant’s trademarks through the disputed domain name. See WIPO Overview 3.0, section 1.15.

For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a nonexclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:

(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element.

In that sense, and according to the evidence submitted, the Complainant has made a prime facie case against the Respondent which has not been commonly known by the disputed domain name and neither is an authorized reseller of the Complainant’s IQOS system and HEETS tobacco sticks nor has been licensed or otherwise permitted to use any of the Complainant’s trademarks or to register a domain name relating to the Complainant’s trademarks.

Also according to the evidence submitted by the Complainant, the use made of the disputed domain name in connection with an online shop reproducing the Complainant’s marketing material and targeting the Russian market (where the online sale of the Complainant’s products is presently forbidden), clearly suggests at least an affiliation with the Complainant which in fact does not exist. Such use does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name in these circumstances.

The Panel also notes that the information available on the website does not indicate who is the provider of the online shop, not disclosing any (lack of) relationship with the Complainant which indicates that the Respondent is making it more difficult for Internet users to discern whether or not the disputed domain name is related with the Complainant.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In this case, both the registration and use of the disputed domain name in bad faith can be found pursuant to Policy, paragraph 4(b)(iv) in view of the reproduction of the Complainant’s products and official marketing materials at the online shop that is available at the webpage relating to the disputed domain name, which creates a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement thereof.

Moreover, the indication of what appears to be false contact details provided in WhoIs information relating to the disputed domain name, communication not being delivered to it by courier is a further indication of the Respondent’s bad faith.

For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name.

7. Decision

For 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, <yourheats.com>, be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: April 23, 2021