WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Igori Berger

Case No. D2021-3564

1. The Parties

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

The Respondent is Igori Berger, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <yourheatsticks.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2021. On October 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 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 October 28, 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 on October 29, 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 October 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2021.

The Center appointed Elise Dufour as the sole panelist in this matter on November 26, 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, Philip Morris Products S.A., is a company affiliated to Philip Morris International Inc, an international tobacco and smoke-free products company selling products in around 180 countries of the world.

The Complainant has developed 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 flavourful nicotine-containing aerosol. Such products are being marketed in key cities in around 67 markets across the world through official IQOS stores and websites and selected authorized distributors and retailers.

The Complainant owns several trademark registrations in many countries including inter alia the following trademarks:

- International trademark registration HEATSTICKS No. 1217386, registered on July 21, 2014, in class 34;
- International trademark registration IQOS No. 1218246, registered on July 10, 2014, in classes 9, 11 and 34;
- International trademark registration HEETS No. 1326410, registered on July 19, 2016, in classes 9, 11 and 34;
- United States of America registration HEATSTICKS No. 4758618, registered on June 23, 2015, in class 34.

The disputed domain name <yourheatsticks.com> was registered on May 18, 2021 and is currently 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 contends that (i) the disputed domain name is confusingly similar to the Complainant’s trademarks; (ii) the Respondent has no rights or legitimate interests in the disputed domain name; and (iii) the Respondent registered and is using the disputed domain name in bad faith.

(i) The Complainant claims that the disputed domain name is confusingly similar to its trademarks. For the Complainant, the disputed domain name consists of the HEATSTICKS trademark and the indication “your” as well as the Top-Level Domain (“TLD”) “.com”. In addition, the term “Heatsticks” is not commonly used to describe tobacco products but is exclusive to the Complainant and its products. Finally, for the Complainant, the disputed domain name will clearly be associated with the Complainant’s HEATSTICKS trademarks so that, when visiting the Respondent’s website, any user will reasonably expect to find a website commercially linked to the Complainant.

(ii) The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Indeed the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks and the Respondent is not an authorized distributor or reseller of the IQOS System or HEETS tobacco sticks. In addition, 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.

(iii) It is clear that the Respondent knew of the Complainant’s trademarks when registered the disputed domain name, as it represents himself as a provider of HEATSTICKS. Furthermore, the term “Heatsticks” is a purely imaginative term and unique to the Complainant. For the Complainant, it is also evident from the Respondent’s use of the disputed domain name that the Respondent registered and is using the disputed domain name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademarks.

B. Respondent

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

6. Discussion and Findings

In the absence of a formal response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent.

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:

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 was registered and is being used in bad faith.

The Panel will further analyze the potential concurrence of the above circumstances.

A. Identical or Confusingly Similar

The Complainant submitted evidence, which incontestably and conclusively establishes rights in the IQOS, HEETS and HEATSTICKS trademarks.

The disputed domain name wholly incorporates the Complainant’s trademarks HEATSTICKS, which, as long established by previous UDRP panels, may be sufficient to determine that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks.

Furthermore, ignoring the generic Top-Level domain name (“gTLD”) “.com”, the addition of the English possessive pronoun “your” does not prevent the disputed domain name to be confusingly similar to the Complainant’s trademark.

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

The burden of proof is on the Complainant to demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, the Respondent may then, inter alia, demonstrate rights or legitimate interests in the disputed domain name by proving that one of the following circumstances of paragraph 4(c) of the Policy is applicable to the case:

(i) before any notice of the dispute, the Respondent used, or made 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, 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

On the basis of the submitted evidence and arguments, the Panel considers that the Complainant has successfully established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

Indeed, the Panel notes that the Complainant has never authorized the Respondent to register and/or use any domain name incorporating the Complainant’s trademarks. Neither is the Respondent an authorized reseller of the Complainant’s IQOS system and HEETS tobacco sticks, nor has the Respondent 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.

As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Respondent did not reply to the Complainant’s contentions and did not provide any explanation or evidence of rights or legitimate interests in the disputed domain name. The Panel considers that if the Respondent had rights or legitimate interests in respect of the disputed domain name, the Respondent would have submitted probably a response to the Complaint.

Furthermore, 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, clearly try to suggest an affiliation with the Complainant, which in fact does not exist. The Panel is of the opinion that 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 reveal the identity of the website provider, but leaves the relevant consumers under the false impression that the website is provided by the Complainant or one of its affiliates or official dealers by indicating the online shop and the website provider as “Your HEAT Sticks” at the top of the website. These elements make it more difficult for Internet users to discern whether or not the disputed domain name is related with the Complainant (an impression of implied affiliation that the composition of the disputed domain name itself also carries).

Accordingly, the Complainant has provided evidence supporting its prima facie claim that the Respondent lacks any rights or legitimate interests in the disputed domain name. The Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the disputed domain name.

Thus, the Panel concludes that the Respondent does not have any rights or legitimate interests in the disputed domain name and the Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

With regards to the registration of the disputed domain name, the Panel finds that the disputed domain name incorporates identically the Complainant’s trademark HEATSTICKS and hence strengthens the impression that the disputed domain name is in some way connected to the Complainant or the Complainant’s services. This analysis of registration in bad faith is emphasized by the fact that the Respondent registered the disputed domain name one month after the domain name <yourheats.com> was assigned to the Complainant by a UDRP panel in another UDRP procedure (see Philip Morris Products S.A. v. Igori M Berger, WIPO Case No. D2021-0744).

Therefore, the Panel is convinced that the disputed domain name was registered in bad faith by the Respondent.

As to use of the disputed domain name in bad faith, the disputed domain name is used in relation to the Complainant’s products and official marketing materials on the online shop that is available at the webpage relating to the disputed domain name. This creates a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement thereof, taking advantage of the nature of the disputed domain name.

In the Panel’s view the requirements of paragraph 4(b)(iv) of the Policy have been made out, namely that the Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Therefore, the Panel finds that the requirement of registration and use in bad faith is satisfied, according to the Policy, paragraph 4(a)(iii).

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, <yourheatsticks.com>, be transferred to the Complainant.

Elise Dufour
Sole Panelist
Date: December 10, 2021