WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Keith Owen Ponce
Case No. D2019-0801
1. The Parties
Complainant is Philip Morris Products S.A., of Neuchâtel, Switzerland, represented by D.M. Kisch Inc., South Africa.
Respondent is Keith Owen Ponce of Dubai, United Arab Emirates, self-represented.
2. The Domain Name and Registrar
The disputed domain name is <heetsuae.com> which is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2019. On April 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from those in the Complaint. The Center sent an email communication to Complainant on April 10, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 10, 2019.1 On the same date, the Center received an email communication from Respondent and acknowledged its receipt.
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 Respondent of the Complaint, and the proceedings commenced on April 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2019. Respondent did not submit any formal Response. Accordingly, the Center notified the commencement of panel appointment process on May 2, 2019.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on May 9, 2019. This Panel finds that it was properly constituted. This 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
Complainant is a Swiss company and a subsidiary of Philip Morris International, Inc. (jointly “PMI”), a leading international tobacco company.
Complainant has rights over: the HEETS trademark for which it holds international registration No. 1326410, registered on July 19, 2016 in classes 9, 11 and 34; the HEETS figurative trademark for which it holds international registration No. 1328679, registered on July 20, 2016 in classes 9, 11 and 34; the IQOS trademark for which it holds international registration No. 1218246, registered on July 10, 2014 in classes 9, 11 and 34; and the IQOS figurative trademark for which it holds international registration No. 1338099, registered on November 22, 2016 in class 35 (the “Trademarks”).
The disputed domain name was registered on January 21, 2019. By the time the Complaint was filed, the website associated to the disputed domain name showed, among others, “IQOS 3 The IQOS 3 is our latest in HeatControl™ Technology solutions. The new IQOS 3 is your IQOS”, images of products bearing the HEETS figurative trademark followed by characters and followed by “HEETS Purple Dhs. 299.00 Dhs. 198.00 Sale”, “HEETS Bronze Dhs. 299.00 Dhs. 249.00 Sale”, image of a product bearing “PARLIAMENT” followed by characters and followed by “PARLIAMENT Blue Dhs. 349.00”, image of a product followed by “IQOS 3 Warm White Dhs. 1,500.00 Dhs. 940.00 Sale”, “JUUL COLLECTIONS”, images of products bearing “JUUL” followed by “JUUL Device USB Charging Dock Dhs. 299.00”, “Juul Cucumber Pods Dhs. 49.00”, “Juul Vanilla Pods Dhs. 49.00”, “CONTACT US: heetsiqosdubai@[…].com”, “© 2019, www.heetsuae.com”.
5. Parties’ Contentions
Complainant’s assertions may be summarized as follows.
PMI has developed a number of products, one of these is branded IQOS, which is a controlled heating device into which specially designed tobacco products under the brand names HEETS and HeatSticks are inserted and heated to generate a flavorful nicotine-containing aerosol. The IQOS system also consists of an IQOS pocket charger specially designed to charge the IQOS holder (collectively, the “IQOS Products”). The IQOS Products were first launched by PMI in Japan in 2014, and today they are available in key cities in around 43 markets across the world. As a result of a billionaire investment and extensive international sales and marketing efforts, the IQOS Products have achieved considerable international success and reputation, and already around 6.6 million relevant consumers have converted to the IQOS Products worldwide. To date, the IQOS Products have been almost exclusively distributed through PMI’s official IQOS stores and websites and selected authorized distributors and retailers.
For its new innovative smoke-free products Complainant owns a large portfolio of well-known trademarks, including the Trademarks, registered in numerous jurisdictions, including the United Arab Emirates.
The disputed domain name is linked to an online shop at “www.heetsuae.com” (the “Website”) allegedly offering Complainant’s HEETS and/or IQOS branded products. Although the Website is in English, the abbreviation for the United Arab Emirates, i.e., “UAE”, within the disputed domain name and the fact that the Website is indicating all prices in dirham (Dhs.) currency indicates that the Website is targeting the United Arab Emirates. The Website is clearly purporting to be an official online retailer of Complainant’s products in the United Arab Emirates by using Complainant’s HEETS trademark in the disputed domain name together with the non-distinctive geographical abbreviation for the United Arab Emirates (“UAE”).
The disputed domain name reproduces the HEETS trademark in its entirety, in addition to the non-distinctive geographical abbreviation “UAE”. The addition of merely generic, descriptive or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity. Thus, the disputed domain name is confusingly similar to Complainant’s trademark.
Respondent lacks any rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register a domain name incorporating its HEETS trademark (or a domain name which will be associated with this trademark). Respondent is not known or in any way related to Complainant or any PMI affiliate, is not an authorized distributor or reseller of the HEETS and IQOS products, and is not authorized to use the HEETS and/or IQOS trademarks.
Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Any Internet user when visiting a website provided under the disputed domain name will reasonably expect to find a website commercially linked to the owner of the HEETS trademark. Such association is exacerbated by the use of Complainant’s official product images without Complainant’s authorization. Respondent’s behaviour shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademarks owned by Complainant.
The Website shows “HEETS” at the top of the Website, being a location where Internet users usually expect to find the name of the online shop and/or the name of the provider of the website. Any user being confronted with the disputed domain name and the Website will expect to find an official retailer of Complainant’s HEETS and/or IQOS branded products on the Website. The Website also uses a number of Complainant’s official product images without Complainant’s authorization, while at the same time shows a copyright notice at its bottom claiming copyright in the material presented therein and thereby strengthening the impression of an affiliation with Complainant.
The Website does not show any details regarding the provider of the Website nor does it acknowledge Complainant as the real brand owner of the HEETS and/or IQOS products, leaving the Internet user under the false impression that the online shop provided under the Website is Complainant’s or it is connected to Complainant or one of its official distributors, which it is not.
A reseller or distributor can be making a bona fide offering of goods or services and thus have a legitimate interest in the domain name at issue only if certain requirements are met.2 The Website does not meet the requirements set out by numerous UDRP decisions for a bona fide offering of goods. It is a common principle in all such cases that the use of a domain name cannot be fair if it suggests affiliation with the trademark owner. The disputed domain name in itself suggests at least an affiliation with Complainant and its HEETS trademark, as the disputed domain name wholly reproduces Complainant’s HEETS trademark together with the non-distinctive term “uae”. As the HEETS and IQOS products are primarily distributed through official stores, Internet users are clearly misled regarding the relationship between the Website and Complainant.
Further, Respondent is not only offering Complainant’s products, but also competing devices and related accessories of other commercial origin. This in itself prevents the finding of a bona fide offering of goods.
The Website includes no information regarding the identity of the provider of the Website. The Website, prominently and without authorization, shows the HEETS trademark at the top left of the Website, which serves to perpetuate the false impression of a commercial relationship between the Website and Complainant. The Website further uses Complainant’s official product images without authorization, while at the same time falsely claiming copyright in this material. This false claim of rights in Complainant’s official copyright protected material further supports the false impression that the Website is endorsed by Complainant. Such use of the disputed domain name cannot be considered a bona fide offering of goods and does not establish a legitimate interest on behalf of Respondent.
It is evident that Respondent knew of Complainant’s HEETS trademark when registering the disputed domain name since Respondent started offering Complainant’s HEETS and/or IQOS branded products immediately after registering the disputed domain name. The term “heets” is purely imaginative and unique to Complainant. The term “heets” is not commonly used to refer to tobacco products. It is therefore beyond the realm of reasonable coincidence that Respondent chose the disputed domain name without the intention of invoking a misleading association with Complainant.
Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to the Website by creating a likelihood of confusion with Complainant’s registered HEETS trademark as to the source, sponsorship, affiliation, or endorsement of the Website or of a product or service on the Website, which constitutes registration and use in bad faith. By reproducing Complainant’s registered trademark in the disputed domain name and the title of the Website, the Website clearly suggests Complainant or an affiliated dealer as the source of the Website, which it is not. This suggestion is supported by Respondent’s use of Complainant’s official product images accompanied by a copyright notice claiming the copyright for the Website.
Respondent is also using the HEETS trademark for purposes of offering for sale competing products of other commercial origin. Such abusive use of Complainant’s HEETS trademark for purposes of promoting competing products constitutes clear evidence of Respondent’s bad faith.
The fact that Respondent is using a privacy protection service to hide its true identity may in itself constitute a factor indicating bad faith.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions. As set forth above, on April 10, 2019, the Center received an informal email communication from Respondent, which in essence reads as follows: “Hope all is well, we would like to ask about the email you sent us. And what will happen if the person mentioned in your email is no longer connected with us?”.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The informal email communication from Respondent, referred to above, cannot be deemed as an official response since it does not comply with the requirements set forth in the Rules, paragraph 5(c), and does not address any of Complainant’s contentions. The lack of a formal response from Respondent does not automatically result in a favorable decision for Complainant.3 The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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.
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights over the HEETS trademark.
Since the addition of a generic Top-Level Domain suffix after a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a trademark.
The disputed domain name identically reflects the HEETS trademark, albeit followed by the suffix “uae” (which corresponds to the initials of United Arab Emirates). It is clear to this Panel that “heets” is recognizable in the disputed domain name, and that the addition of such a term in the disputed domain name does not avoid its confusing similarity with said trademark. See sections 1.7 and 1.8 of WIPO Overview 3.0.
Thus this Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant asserts that it has not authorized Respondent to use the Trademarks or to register a domain name incorporating its HEETS trademark, that Respondent is not known or in any way related to Complainant or any PMI affiliate, that Respondent is not an authorized distributor or reseller of the HEETS and IQOS products, and that the Website shows Complainant’s official product images without authorization, along with images of competing products, while falsely claiming copyright in that material which suggests that Complainant or an affiliated dealer is the source of, or endorse, the Website.
Complainant provided screenshots of the Website (see section 4 above), which on their face corroborate Complainant’s assertions. From those screenshots, it appears that the Website does not show any disclaimer as regards Complainant thus leading consumers to believe that the Website reached from the disputed domain name may be owned by, or at least somehow associated with, Complainant. All that demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.
This Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name (see Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467; and section 2.1 of the WIPO Overview 3.0). In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name by Respondent.
Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith, which Respondent chose not to rebut.
The evidence in the file shows that Respondent deliberately targeted Complainant’s HEETS trademark at the time it obtained the disputed domain name. Taking into consideration that Complainant’s registration and use of the HEETS trademark preceded the creation of the disputed domain name, and the content of the Website, this Panel is of the view that Respondent should have been aware of the existence of the HEETS trademark at the time it obtained the registration of the disputed domain name.
The Website was used to sell allegedly Complainant’s HEETS and IQOS products, showing images of such products bearing the Trademarks, along with other competing products, which is enough for this Panel to establish Respondent’s bad faith for purposes of the Policy.4 There appears to be no disclaimer disassociating the Website from Complainant, which also is indicative of bad faith (see Thomas Wuttke v. Sharing, WIPO Case No. D2011-1809). It seems to this Panel that in using the disputed domain name, Respondent has sought to create a likelihood of confusion with Complainant and the Trademarks as to the sponsorship, source, affiliation, or endorsement of the Website and products offered therein, when in fact there is no such connection.
Thus the overall evidence shows that Respondent has registered and used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Website.
In this Panel’s view, the lack of substantive response is also indicative that Respondent lacks arguments and evidence to support its holding of the disputed domain name.
In light of the above, this Panel finds that Complainant has satisfied 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, this Panel orders that the disputed domain name <heetsuae.com> be transferred to Complainant.
Date: May 23, 2019
1 The original Complaint was filed against Private Registration since there appeared no registrant’s name in the corresponding WhoIs report. The amended Complaint was filed against Respondent, as per the information disclosed by the Registrar.
3 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence.” See also section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
4 See Loris Azzaro B.V. v. Domain Admin/PrivacyProtect.org and William Cortes de Sousa, REJ Comercio de Perfumes Ltda., WIPO Case No. D2013-2243: “the use of the disputed domain name for a website that is used to advertise or market products of Complainant’s competitors constitutes an improper use of Complainant’s trademark and is evidence of Respondent’s bad faith.”