WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Registration Private, Domains By Proxy, LLC / Instill Ventures
Case No. D2019-1420
1. The Parties
The Complainant is Philip Morris Products S.A., Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Instill Ventures, British Virgin Islands.
2. The Domain Name and Registrar
The disputed domain name <myheatstore.com> (“Disputed Domain Name”) 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 June 20, 2019. On June 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 21, 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 the Complainant on July 1, 2019, 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 July 4, 2019.
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 July 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2019.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on August 12, 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 a part of the group of companies affiliated with Philip Morris International Inc. (“PMI”). PMI is a leading international tobacco company, with products sold in more than 180 countries.
PMI has developed IQOS. IQOS is a controlled heating device into which specially designed tobacco products under the brand names HEETS and HEATSTICKS are inserted and heated to generate flavorful nicotine-containing aerosol. The IQOS products were first launched in Nagoya, Japan, in 2014. To date, the IQOS products are available in 44 markets across the world. The IQOS products are almost exclusively distributed through PMI’s official stores and websites as well as authorized distributors and retailers.
The Complainant is the owner of the following registrations, among others:
- United States trademark Registration HEATSTICKS (word) Registration No. 4758618, registered on June 23, 2015; and
- International Registration HEETS (& Design), Registration No. 1328679, registered on July 20, 2016.
The Disputed Domain Name <myheatstore.com> was registered on May 31, 2018, and displayed a website with the Complainant’s products and products competing with the Complainant’s products.
At present, the Disputed Domain Name redirects to <myhellostore.com> (registered on July 19, 2019) which is linked to an online shop offering the Complainants IQOS System as well as products competing with the Complainant’s products.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
Identical or confusingly similar
The Complainant states that the Disputed Domain Name is confusingly y similar to the HEATSTICKS, HEET and HEETS trademark registration. Since, the Disputed Domain Name consists of the indicative term HEAT and the descriptive indications “my” and “store” as well as the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant further submits that the Disputed Domain Name adopts the indicative term HEAT of the Complainant’s HEATSTICKS trademark, positioned in the middle of the descriptive terms “my” and “store”. The Complainant states that the term “heats” or “heat” is not commonly used to describe tobacco products.
Moreover, the website of the Disputed Domain Name clearly shows that the Respondent has been targeting the Complainant’s trademarks.
Finally, the Complainant submits that when visiting the website provided under the Disputed Domain Name a legal age smoker will reasonably expect to find a website commercially linked to the owner of the HEET, HEETS and HEATSTICKS trademark.
Rights or legitimate interests
The Complainant alleges that the Respondent lacks rights and legitimate interests in the Disputed Domain Name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the Disputed Domain Name incorporating its trademark.
The Complainant further states that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, the Respondent behavior shows a clear intent to obtain an unfair commercial gain.
Moreover, the website uses the Complainant’s official product images and marketing materials without the Complainant’s authorization.
In addition, the website linked to the Disputed Domain Name does not include clear information regarding the identity of the provider of the website. Moreover, on the website of the Disputed Domain Name, the disclaimer is positioned at the bottom of the website and hidden behind a long text. Thus, consumers might well order products in the online shop on the website without encountering the disclaimer.
Finally, the Complainant does not currently offer for sale of its HEETS tobacco sticks and IQOS 3.0 devices, given that they have not been authorized for sale in the United States by the FDA.
Registration and use in bad faith
The Complainant submits that the Respondent knew of the Complainant’s HEET, HEETS and HEATSTICKS trademarks when registering the Disputed Domain Name. The Respondent started offering the Complainant’s IQOS System as well as infringing IQOS accessories shortly after registering it. Furthermore, the terms HEET, HEETS and HEATSTICKS are a solely imaginative term without inherent meaning.
In addition, it is clear that the 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 the Complainant’s trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case:
(i) The Disputed Domain Names 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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Disputed Domain Name <myheatstore.com> is confusingly similar to the Complaint’s trademarks. Furthermore, the Panel perceives that the dominant element “heat” of the Complainant’s HEATSTICKS trademark is incorporated as the second element in the Disputed Domain Name after the term “my” and before the term “store”. In addition, the Panel notes the similarity between the element “heats” and the HEETS trademark.
Finally, neither the gTLD “.com” nor the terms “my” or “store” are of any significance to the present assessment of confusing similarity.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) Before any notice to you of the dispute, your use of, 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 at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark. The Complainant has (prior) rights in the trademark which precede the Respondent’s registration of the Disputed Domain Name.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods and services.
The Respondent had the opportunity to demonstrate his rights or legitimate interests, but he did not reply to the Complainant’s contention.
In addition, the Panel finds that the similarity of the Disputed Domain Name with the Complainant’s HEATSTICKS and HEETS trademarks coupled with the website at the Disputed Domain Name carries a risk of association or affiliation with the Complainant’s trademark which is not avoided by the disclaimer.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Disputed Domain Name was registered in 2018; four years after the Complaint obtained it’s United States trademark registration No. 4758618 for the trademark HEATSTICKS. The fact that the Respondent started offering the Complainant’s products at his website immediately after registering the Disputed Domain Name clearly demonstrates that the Respondent was aware of the Complainant’s IQOS and HEATSTICKS branded products of the Complainant when registering the Disputed Domain Name.
Furthermore, the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the Disputed Domain Name incorporating its trademarks. Neither the Respondent is an authorized reseller of the Complainant’s product. In addition, the Complainant’s HEETS tobacco sticks and IQOS branded products are not authorized for sale or marketing in the United States. Consequently the Respondent’s sale of these products in the United States is clearly not authorized and is disrupting the Complainant’s business.
In addition, the Complainant submitted evidence that the Respondent’s website creates the impression that the online shop is an official dealer of the Complainant’s products in the United States. Thus, Internet users might have well been under the impression that it is a website created and operated by a distributor or reseller of the Complainant with the Complainant’s consent.
Moreover, this Panel perceived that the website linked to the Disputed Domain Name includes a disclaimer. However, this cannot rectify the Respondent’s bad faith from providing the Complainants products without the Complainant´s authorization. Besides, such disclaimer is not displayed in a clear and sufficiently prominent way. On the contrary, this disclaimer only denotes that the Respondent was well aware of the risk of confusion by Internet users (see section 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The circumstances in the case before the Panel indicate that the Respondent was aware of the Complainant’s trademarks when registering the Disputed Domain Name and it has created a likelihood of confusion with the Complaint’s trademarks and website in order to attract Internet users for his own commercial gain.
The fact that the Disputed Domain Name now redirects to <myhellostore.com> does not affect the analysis of the Respondent’s bad faith.
Due to this conduct, it is obvious that the Respondent intentionally created likelihood of confusion with the Complainant’s trademarks and website in order to attract Internet users for his own commercial gain, as required by paragraph 4(b)(iv) of the Policy.
Therefore, taking all circumstances into account and for all above reasons, the Panel concludes that the Respondent has registered and used the Disputed Domain Name 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 Disputed Domain Name <myheatstore.com> be transferred to the Complainant.
Pablo A. Palazzi
Date: August 22, 2019