WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Private Registration / Keith Owen Ponce

Case No. D2019-1104

1. The Parties

Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.

Respondent is Private Registration, United Arab Emirates / Keith Owen Ponce, United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name <heetnotburn.com> 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 May 13, 2019. On May 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 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 the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 15, 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 May 15, 2019.

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 May 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 10, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 11, 2019.

The Center appointed Georges Nahitchevansky as the sole panelist in this matter on June 19, 2019. 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

Complainant, Philip Morris Products, S.A., is part of the group of companies affiliated with Philip Morris International Inc., a leading international tobacco company. Complainant and its parent, Philip Morris International, Inc., have developed and sell a controlled heating device into which specially designed tobacco products are inserted and heated for smoking purposes. The heating device system is called IQOS and the specially designed tobacco products use the names and marks HEETS or HEAT STICKS. The IQOS system was launched in 2014 is currently available in 44 markets across the world.

Complainant owns a number of trademark registrations around the world for the mark HEETS, in connection with its products, which date back to July 2016. Of particular relevance to this proceeding, Complainant owns a number of trademark registrations related to its HEETS mark in the United Arab Emirates, where Respondent is located. These include, registrations for HEAT NOT BURN TECHNOLOGY, which issued to registration on February 8, 2017 (Registration Nos. 216123, 216124, and 216125); HEET, which issued to registration on March 5, 2018 (Registration Nos. 253929, 253930, and 253931); HEETS, which issued to registration on December 25, 2017 (Registration No. 256864); and HEETS stylized, which issued to registration on December 25, 2017 (Registration No. 256867).

Respondent is an individual who is based in Dubai, United Arab Emirates. Respondent registered the disputed domain name on December 12, 2018. Respondent has used the disputed domain name in connection with a website that offers for sale Complainant’s IQOS system product and HEETS tobacco products in the United Arab Emirates.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it is the owner of all rights in the HEETS, HEET, and HEAT NOT BURN TECHNOLOGY marks in numerous jurisdictions around the world, including the United Arab Emirates. Complainant further asserts that it is the owner of all rights in the mark IQOS in numerous jurisdictions, including the United Arab emirates, Bahrain and Oman.

Complainant contends that the disputed domain name is confusingly similar to Complainant’s HEET and HEAT NOT BURN TECHNOLOGY marks, as the disputed domain name fully incorporates the HEET mark and contains a phonetic equivalent of the dominant portion of Complainant’s HEAT NOT BURN TECHNOLOGY mark, namely “HEET NOT BURN.”

Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) is not licensed by and has no authorization from Complainant to use any of Complainant’s trademarks in the disputed domain name, and (ii) is not an authorized distributor or reseller of Complainant’s IQOS system and related products. Complainant contends that Respondent is not making a bona fide offering of goods as the website at the disputed domain name (i) offers for sale not only Complainant’s products but products of third parties who compete with Complainant, (ii) contains and incorporates indicia that suggests an affiliation with Complainant, (iii) features official product images and marketing materials of Complainant without authorization, (iv) provides no information regarding the identity of the operator of the website, and (v) contains an insignificant disclaimer that is positioned at the bottom of the website at the disputed domain name. Complainant also maintains that because Complainant primarily distributes its IQOS systems products through official stores, relevant consumers upon seeing the website at the disputed domain name will be misled and believe there is a relationship between Respondent and Complainant and that Complainant has officially introduced the IQOS system in the United Arab Emirates.

Lastly, Complainant contends that Respondent has registered and is using the disputed domain name in bad faith given that Respondent registered the disputed domain name that consists of the imaginative and unique term HEET for tobacco products and immediately started using the disputed domain name for a website to offer for sale Complainant’s IQOS system for profit. Complainant further asserts that Respondent has acted in bad faith by using Complainant’s HEET marks and phonetic equivalent of the HEAT NOT BURN portion of Complainant’s HEAT NOT BURN TECHNOLOGY mark in the title of the website at the disputed domain name. Finally, Complainant argues that Respondent has acted in bad faith by using the disputed domain name with a website where Respondent has hidden its identity, and which offers for sale competing products of third parties.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) 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.

Here, although Respondent has failed to respond to the Complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A Panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006‑0340.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns and uses the HEET, HEETS, and HEAT NOT BURN TECHNOLOGY marks in connection with tobacco related products. Complainant has also provided evidence that these marks have been registered in the United Arab Emirates, where Respondent is located, well before Respondent registered the disputed domain name.

With Complainant’s rights in the HEET, HEETS, and HEAT NOT BURN TECHNOLOGY marks established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain such as “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.

In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s HEET and HEETS marks as it incorporates the HEET mark, and a version of the HEETS mark that deletes the letter “s,” in its entirety at the head of the disputed domain name. In addition, the disputed domain name is confusingly similar to Complainant’s HEAT NOT BURN TECHNOLOGY mark as it includes the phonetic equivalent of the HEAT NOT BURN component of that mark, namely, “heet not burn.” The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s HEET, HEETS, and HEAT NOT BURN TECHNOLOGY marks and in showing that the disputed domain name is identical or confusingly similar to that trademark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

The evidence submitted in this proceeding shows that Respondent has used the disputed domain name for a website that appears to offer genuine IQOS system products and HEETS tobacco products for sale in the United Arab Emirates. There is no evidence or indication that Respondent has sold any products other than genuine IQOS system or HEETS products or that there have been any consumer complaints regarding the products sold by Respondent through the website at the disputed domain name. Thus, on its face it would appear that Respondent, while an unauthorized reseller of genuine IQOS system and HEETS products, could have a legitimate interest in the disputed domain name under the “Oki Data test” adopted by numerous UDRP Panels. See Oki Data Americas, Inc. v. ASD, Inc,, WIPO Case No. D2001-0903; seealsoWIPO Overview 3.0 at section 2.8.

However, while reselling legitimately obtained genuine products could be seen as being a legitimate interest or use, Respondent here has taken the extra step of registering a disputed domain name that on its face suggests a connection to Complainant, or which likely will be seen as an official domain name related to Complainant and its HEETS products and related technology, and then using such with a website that suggests a connection to Complainant and/or which makes it appear that the website is an official or authorized website for the sale of IQOS system and HEETS products in the United Arab Emirates. The home page of the website at the disputed domain name prominently features the legend “the fastest online store of the HEETS & IQOS Devices in the UAE - www.heetnotburn.com,” and virtually every page in the website, prominently features at the top of each web page either the IQOS or HEETS mark. Moreover, the website at the disputed domain name includes numerous copies of Complainant’s official photographs for its IQOS system and HEETS products as well as text that appears to be copied from Complainant’s official materials. Notably, the website at the disputed domain name includes a copyright notice that simply reads “©2019 www.heetnotburn.com.”

Notably, none of the pages in the website for the disputed domain name identify Respondent, thereby further heightening the possibility that consumers who see the disputed domain name and website will believe that it is somehow connected to Complainant or is an official or authorized website for the sale of Complainant’s IQOS and HEETS products in the United Arab Emirates. The one disclaimer that appears on the website at the disputed domain name is buried at the very bottom of a the landing page of the website and below multiple copies of Complainant’s product photographs and shopping opportunities for consumers visiting Respondent’s website. Needless to say, consumers likely never see the disclaimer and if they do they are not dispelled of the idea that this might be an endorsed or authorized website for IQOS and HEETS products in the United Arab Emirates. The disclaimer simply provides that “our website is not connected to Philip Morris International (PMI). We are not the official website of PMI and IQOS.”

Such actions by Respondent, in their totality, appear to have been designed to suggest that Respondent’s website at the disputed domain name is affiliated with, connected to or authorized by Complainant, when such is not the case. Indeed, a consumer visiting Respondent’s website at the disputed domain name would likely believe that the disputed domain name and website are somehow connected to or authorized by Complainant, given (i) the prominent use of “heet not burn” in the disputed domain name, (ii) the use of numerous official pictures and text owned by Complainant throughout the website at the disputed domain name, (iii) the lack of any references to Respondent and its identity on the website, and (iv) the lack of anything material or prominent on the website dispelling any authorization or endorsement of Respondent by Complainant. Thus while Respondent may have a legitimate basis for reselling legitimately sourced IQOS system and HEETS tobacco products in the United Arab Emirates, it is not legitimate for Respondent to essentially impersonate or suggest some form of connection, sponsorship, or endorsement by Complainant for purposes of selling products – even if they are genuine products. Respondent is not connected to Complainant and taking measures to misleadingly imply an affiliation with Complainant is not a legitimate or fair use even under the “Oki Data Test.” WIPO Overview 3.0 at sections 2.5.1 and 2.8.2

Additionally, it is not legitimate for Respondent to use a disputed domain name based on Complainant’s HEET, HEETS, and HEAT NOT BURN TECHNOLOGY marks to promote competing products of third parties. WIPO Overview 3.0 at section 2.

Given that Complainant has established with sufficient evidence that it owns rights in the HEET, HEETS and HEAT NOT BURN TECHNOLOGY marks, and given Respondent’s above noted actions and failure to respond, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.

C. Registered and Used in Bad Faith

Given that Respondent has registered the disputed domain name that fully incorporates Complainant’s HEET mark and the phonetic equivalent of the dominant component of Complainant’s HEAT NOT BURN TECHNOLOGY mark, and then used the disputed domain name to sell Complainant’s IQOS system and HEETS products in the United Arab Emirates, it is easy to infer that Respondent was likely well aware of Complainant’s marks when Respondent registered the disputed domain name. Given that Complainant promotes and sells its IQOS system and HEETS products in numerous markets around the world, the disputed domain name is likely to be viewed by consumers as linked to Complainant and/or to a website that is authorized to sell Complainant’s IQOS system and HEETS products. This is particularly so given that Respondent, as noted above, has designed a website that appears to be connected to Complainant or to be an authorized or endorsed website of Complainant for the United Arab Emirates. It is again worth noting that Respondent’s purported disclaimer is buried at the bottom of the landing page for Respondent’s website, is inadequate, and is likely not seen by consumers. Such an inconspicuous disclaimer undermines any claim by Respondent that it took reasonable steps to avoid passing itself off as related to Complainant. Simply put, Respondent’s actions make it more likely than not that Respondent opportunistically registered and used the disputed domain name, which is based on Complainant’s HEET, HEETS, and HEAT NOT BURN TECHNOLOGY marks, to intentionally and misleadingly attract Internet users to Respondent’s website for Respondent’s own profit. See WIPO Overview 3.0, Section 3.1.4 (and cases cited therein).

Accordingly, the Panel finds that Complainant succeeds under this element of the Policy.

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 <heetnotburn.com> be transferred to Complainant.

Georges Nahitchevansky
Sole Panelist
Date: June 25, 2019