WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Tomasz Matysiak
Case No. D2017-1146
1. The Parties
The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Tomasz Matysiak of Krakow, Poland, self-represented.
2. The Domain Names and Registrar
The disputed domain names <iheet.com>, <iqoscenter.com> and <iqoscentre.com> are 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 June 12, 2017. On June 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 13, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 June 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2017. The Response was filed with the Center on July 10, 2017, and contained an offer to transfer or cancel the disputed domain names <iqoscenter.com> and <iqoscentre.com>, but not the disputed domain name <iheet.com>. The Center informed the Parties on July 11, 2017 that if they wish to explore settlement options, the Complainant should submit a request for suspension by July 16, 2017. The Complainant submitted an email on the same day requesting that the Center proceed to appoint the administrative panel. Accordingly, the Center notified the Parties of the commencement of the panel appointment process on July 12, 2017.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on July 19, 2017. 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 a long established major tobacco company trading internationally. The Complainant promotes a product branded IQOS, which is a heating device in which a tobacco product branded HEETS or HeatSticks is heated to generate a nicotine-containing vapour.
The Complainant holds numerous trademarks for IQOS and HEETS, of which the following are representative for the purposes of the present Complaint:
IQOS, standard characters, international trademark, registered July 10, 2014, registration number 1218246, classes 9, 11, 34;
HEETS, standard characters, international trademark, registered July 19, 2016, registration number 1326410, classes 9, 11, 34;
HEETS, figurative, similar to H≡≡TS, international trademark, registered July 20, 2016, registration number 1328679, classes 9, 11, 34.
The Respondent operates an online store for the sale of paraphernalia associated with the use of devices that heat tobacco products in order to generate vapour, such as heating devices, carry cases, and also the tobacco product. The disputed domain names <iqoscenter.com> and <iqoscentre.com> redirect visitors to the website "www.iheet.com". According to the respective WhoIs entries the disputed domain name <iheet.com> was registered on May 4, 2017, and <iqoscenter.com> and <iqoscentre.com> were registered April 10, 2017, all in the name of the Respondent.
5. Parties' Contentions
The Complainant contends that it has rights in the trademarks IQOS and HEETS listed in Section 4 above and has produced evidence in the form of copies of online registration records.
The Complainant says the disputed domain names are identical or confusingly similar to its trademarks. The inclusion of the generic words "center" or "centre" in the disputed domain names <iqoscenter.com> and <iqoscentre.com> is not sufficient to avoid a finding of confusing similarity to the relevant trademark. The words "center" or "centre" are often used as an indication of a shop offering exclusively the respective brand.
The Complainant says the disputed domain name <iheet.com> is confusingly similar to the Complainant's trademark HEETS, with a preceding "i". The prefix "i" is commonly used in modern commerce, particularly with regard to technical products. Internet users are likely to confuse the term "iheet" as having some relationship with the Complainant's HEETS products.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has not licensed or otherwise permitted the Respondent to use its trademarks or to register the disputed domain names. The Complainant says the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain to divert consumers misleadingly or to tarnish the trademarks of the Complainant. The Respondent is not an authorised reseller of the Complainant's products. The Respondent's website to which the disputed domain names ultimately resolve does not fulfil the criteria for making a bona fide offering of goods since it suggests at least an affiliation with the Complainant and its trademarks.
The Complainant further contends that the disputed domain names were registered and are being used in bad faith. The trademark terms IQOS and HEETS are imaginative and have no inherent meanings. The Respondent evidently had knowledge of the Complainant and its trademarks, and started offering the Complainant's products and competing products for sale immediately after registering the disputed domain names.
The Complainant says that the Respondent registered and has used the disputed domain names with intent to attract, for commercial gain, Internet users to the website to which they resolve, by creating a likelihood of confusion with the Complainant's trademarks in the terms of paragraph 4(b)(iv) of the Policy. The Respondent has avoided any mention on its website of its true identity and that it does not represent the Complainant.
The Complainant has provided citations of and quotations from a number of previous decisions under the Policy that it considers to be supportive of its position.
The Complainant requests the transfer of the disputed domain names.
The Respondent says that, on legal advice, he has come to the conclusion that those disputed domain names that include the trademark IQOS, i.e., <iqoscenter.com> and <iqoscentre.com>, should belong to the Complainant.
The Respondent denies the Complaint in respect of the disputed domain name <iheet.com>. It is contended that the term "iheet" is not in any official trademark database and does not infringe the Complainant's rights. The trademark HEET is used for fuel-related products by a company other than the Complainant.
The Respondent says the Complainant does not have any rights to the Respondent's graphic "EE" styled logo. The Respondent's logo is in the singular and contains wavy lines not present in the Complainant's logo, which is in the plural. Many other companies use the "i" prefix motif, such as "iZone". The Respondent's shop does resell the products of the Complainant but does not claim to be an official store.
6. Discussion and Findings
A. Preliminary Matters
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith".
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Panel exercises its discretion to admit the Response, which was filed the day after the due date.
The Respondent has conceded that the disputed domain names <iqoscenter.com> and <iqoscentre.com> shall be cancelled or transferred to the Complainant. Having reviewed the evidence, the Panel will make an order for their transfer, as requested by the Complainant, which is recorded formally below.
The disputed domain name referred to hereinafter is <iheet.com>.
B. Identical or Confusingly Similar
The Complainant has produced satisfactory evidence of its rights under paragraph 4(a)(i) of the Policy in respect of the trademark HEETS (and in the trademark IQOS, referred to later).
The disputed domain name is <iheet.com>, of which the generic Top-Level Domain (gTLD) designation ".com" may in this instance be disregarded for the assessment of confusing similarity. The determination of confusing similarity depends essentially upon a comparison of the disputed domain name with the Complainant's trademark. The trademark HEETS appears to be a distinctive, invented, non-dictionary word. The Panel finds, on the evidence and on balance, that the component "heet" in the disputed domain name is sufficiently similar to the distinctive trademark HEETS as to be confusingly similar, being merely the difference between singular and plural. The prefix "i" in the disputed domain name, which as the Respondent has implied is a relatively common affectation used for branded technological products such as mobile electronics, is also found to be an insufficient difference to detract from confusing similarity between the disputed domain name and the trademark HEETS. The existence of a third-party trademark for HEET, as advanced by the Respondent, has no bearing on whether the disputed domain name and the Complainant's trademark are confusingly similar. The Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has stated in the terms of paragraph 4(a)(ii) of the Policy that it has not licensed or otherwise permitted the Respondent to use its trademarks and that therefore the Respondent does not have rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant's prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating:
"(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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".
The above circumstances are illustrative and rights or legitimate interests may be established by the Respondent in any other way satisfactory to the Panel.
A screen capture of the website to which the disputed domain name resolves, produced in the Complainant's evidence, runs to some 29 effective screens containing numerous references to iHEET and IQOS. Most screens contain pictures of priced merchandise including, for example, silicon, leather and other decorative cases for vaporising devices. Some products refer directly to the Complainant's trademarks, for example "System IQOS", "IQOS heating device", "IQOS charger" and "Heat stics HEETS" (so spelled). A "Customer service - Contact us" facility is provided, with spaces for customers to provide and submit their contact details.
Thus the Respondent is evidently using or making preparations to use the disputed domain name in connection with an offering of goods, but is found to be doing so in a manner that creates the impression of a commercial relationship with the Complainant that does not exist and is therefore not a bona fide use of the disputed domain name within the meaning of paragraph 4(c)(i) of the Policy.
There is no evidence that the Respondent has been commonly known by the disputed domain name, and the website to which it resolves, being a sales outlet, is found not to constitute a noncommercial or fair use. The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(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 website or location or of a product or service on your website or location."
As partly described above, the disputed domain name resolves to a website that features the sale of tobacco products for vaporising purposes, and related accessories. The Respondent's website in several places displays a prominent logo that may reasonably be read only as "iHEET". The logo is constructed, however, with special characters in the style "iH≡≡T", in which the first "E" of "iHEET" is replaced with "≡" and the second "E" is a version of "≡" with wavy lines. Taking into account that the disputed domain name is <iheet.com>, and that the website contains a number of references to "iHEET" in plain text including "Copyright iHEET © 2017", it may reasonably be concluded that the Respondent's logo is intended to be read correspondingly as "iHEET".
For comparison, the Complainant's trademark number 1328679, as listed above, is named HEETS in the trademark register but portrayed therein in the figurative or logo style "H≡≡TS".
On the evidence, the Panel finds that the disputed domain name has been registered and used with the intention that it will attract some Internet visitors by direct confusion with the Complainant's trademark HEETS. Furthermore, the Panel finds the similarity between the Complainant's trademark logo and the Respondent's logo to be such as to create the probability that at least a proportion of visitors to the Respondent's website would likely be confused into believing it to belong to, or to be affiliated with or endorsed by, the Complainant. The display of goods on the Respondent's website priced for sale in euros, together with the references to "My account" and "My orders", make clear that the website is commercial in nature.
Accordingly the Panel finds, on the evidence and on the balance of probabilities, that the disputed domain name <iheet.com> has been used by the Respondent to attract Internet users for commercial gain by confusion with the Complainant's trademark in the terms of paragraph 4(b)(iv) of the Policy, and was registered for the same purpose. Registration and use of the disputed domain name <iheet.com> in bad faith are found therefore under paragraph 4(a)(iii) of the Policy.
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 <iheet.com> be transferred to the Complainant.
In conformance with section IV of the Response, Consent to Remedy (Optional), the Panel orders that the disputed domain names <iqoscenter.com> and <iqoscentre.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: July 26, 2017