WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Bhutto, Mohammad Ali
Case No. D2019-1359
1. The Parties
The Complainant is Philip Morris Products S.A., Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Bhutto, Mohammad Ali, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <heatuae.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2019. On June 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 14, 2019, 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 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2019.
The Center appointed Ian Lowe as the sole panelist in this matter on July 16, 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
The Complainant is part of the group of companies affiliated with Philip Morris International, Inc (“PMI”). PMI is an international tobacco company with products sold in around 180 countries. In 2014, PMI launched its IQOS System. Specially designed tobacco products under the brand names HEETS and HEATSTICKS are inserted into the IQOS device that heats the tobacco sufficiently to generate a flavorful nicotine-containing vapour without burning the tobacco. The IQOS System is now available in key cities in around 44 markets around the world and approximately 7.3 million consumers worldwide have converted from smoking cigarettes to the IQOS System.
The IQOS System has been distributed almost exclusively through PMI’s official IQOS stores and websites and selected authorized distributors and retailers. It is not currently sold in the United Arab Emirates (“UAE”).
The Complainant is the proprietor of a number of registered trademarks in respect of IQOS, HEET, HEETS, HEATSTICKS and HEAT NOT BURN TECHNOLOGY. These include the following UAE trademarks:
- number 256862, 256863, and 256864, HEETS, registered on December 25, 2017;
- number 256865, 256866, and 256867, HEETS device, registered on December 25, 2017;
- number 211145, HEATSTICKS, registered on March 16, 2016;
- number 211137, IQOS, registered on June 12, 2016;
and European Union trademark number 13172581, HEAT NOT BURN TECHNOLOGY, registered on July 25, 2016.
The Complainant is also the proprietor of International trademark registrations in respect of IQOS, HEETS, HEETS device, and HEATSTICKS registered in 2014 and 2016.
The Domain Name was registered on February 1, 2019. The Respondent is an individual in Pakistan. He has been the respondent to previous successful complaints by the Complainant under the UDRP in respect of <iqosdubai.com> and <heatdubai.com>. See Philip Morris Products S.A. v. Registration Private, Domains By Proxy, LLC / Munawar Ali and Perfect Privacy, LLC / Mohammad Ali Bhutto, WIPO Case No. D2019-0227. The Domain Name resolves to a website in the English language (the “Website”) comprising an online shop purporting to offer the Complainant’s IQOS System for sale as well as competing products. The indicated prices are in United Arab Emirates (“UAE”) Dirham. The Website prominently uses the IQOS and HEETS marks and includes the phrase “HEAT NOT BURN” at the head and foot of its home page. The Website also uses copies of a number of the Complainant’s official product images.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its HEET, HEETS and HEATSTICKS trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has uncontested rights in the HEETS and HEATSTICKS trademarks, both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its use of the trademarks over a number of years. Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the Domain Name comprises “heat” which is half of the HEATSTICKS trademark and a phonetically identical version of the singular of the HEETS trademark. The Panel also notes that the Website is offering what purport to be the Complainant’s HEETS products for sale.
Section 1.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, notes that the content of the website associated with the domain name is usually disregarded by panels when assessing confusing similarity under this first element. However, it also acknowledges that in some instances where, as in this case, the respondent intends prima facie to target the complainant’s trademark through its use of the Domain Name, then panels have taken the content of the website into account. The Domain Name also comprises the geographical indicator “UAE”, but in the view of the Panel the addition of this term does not detract from the confusing similarity of the Domain Name to the Mark.
In all the circumstances, the Panel does find that the Domain Name is confusingly similar to trademarks in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The Respondent has used the Domain Name not in connection with a bona fide offering of goods or services, but for a website featuring the IQOS and HEETS word marks (the “Marks”), purporting to offer IQOS products for sale without the authority of the Complainant, as well as competing products. Furthermore, the Website features unauthorized copies of images of the Complainant’s products and uses the phrase “HEAT NOT BURN”, a clear allusion to the Complainant’s HEAT NOT BURN TECHNOLOGY trademark.
The Respondent is not an authorized sales agent of the Complainant and the Complainant’s products are not for sale in UAE, yet in the Panel’s view the use of the Complainant’s Marks and images falsely represents to Internet users that the Respondent is authorized by the Complainant to sell the products in UAE. The Panel considers that such unauthorized activity on the part of the Respondent does not give rise to rights or legitimate interests in respect of the Domain Name. The Respondent has chosen not to respond to the Complaint or to take any steps to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Since the Respondent has used the Domain Name for a website prominently featuring the Marks and has operated an online shop purporting to offer the Complainant’s products for sale, the Panel is in no doubt that the Respondent had the Complainant and its rights in the Marks in mind when it registered the Domain Name. In light of the Respondent’s use of the Marks and copies of the Complainant’s images of its products, the Panel considers that the Respondent has registered and used the Domain Name with a view to confusing Internet users into believing that the Website was associated with or authorised by the Complainant. The Panel further notes that the Website also offers competing products for sale.
In the Panel’s view, the registration and use of the Domain Name for such activity, clearly with a view to commercial gain, amounts to paradigm bad faith registration and use for the purposes of the Policy, paragraph 4(b)(iv).
Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <heatuae.com> be transferred to the Complainant.
Date: July 22, 2019