WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Babar Husain M

Case No. D2020-1471

1. The Parties

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

The Respondent is Babar Husain M, India.

2. The Domain Name and Registrar

The disputed domain name <heetnotburn.store> (the “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 8, 2020. On June 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 9, 2020, 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 June 12, 2020, 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 amended Complaint on June 15, 2020.

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 the Respondent of the Complaint, and the proceedings commenced on June 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2020.

The Center appointed Nick J. Gardner as the sole panelist in this matter on July 23, 2020. 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 to Philip Morris International Inc. (the group is referred to as “PMI” in this Decision). PMI is a leading international tobacco company, with products sold in approximately 180 countries. Its products include well-known brands such as “Marlboro”.

In the course of transforming its business from combustible cigarettes to (so-called within the tobacco industry) Reduced Risk Products (or “RRPs”), PMI has developed a new product, namely a precisely controlled heating device into which a specially designed tobacco product is inserted and heated to generate a nicotine-containing aerosol. The device itself is marketed under the brand name IQOS, while the tobacco inserts are branded HEETS. The IQOS product was first introduced in Japan in 2014, and is now available in some 53 markets across the world.

The Complainant is the proprietor of various trademark registrations for the term HEETS including International Registration HEETS (word) No. 1326410 registered on July 19, 2016. These trademarks are referred to collectively in this Decision as the “HEETS trademark”. It is also the proprietor of United Arab Emirates (“UAE”) Registration HEET (word) No. 253929 registered on March 5, 2018. This trademark is referred to in this Decision as the “HEET trademark”. The Complainant is also the proprietor of United Arab Emirates Registration HEAT NOT BURN TECHNOLOGY (word) No. 216123 registered on February 8, 2017. This trademark is referred to in this Decision as the “HEAT NOT BURN TECHNOLOGY trademark”.

The Disputed Domain Name was registered on November 20, 2019. The Disputed Domain Name is linked to a website (the “Respondent’s Website”) which sells or offers to the Complainant’s IQOS System. The Respondent’s Website is provided in English. It shows all prices in UAE dirham currency, as well as stating “Get your IQOS & HEETS delivered in entire UAE”.

The Respondent’s Website includes a large number of images which are unauthorized reproductions of the Complainant’s marketing images. In general terms the Respondent’s Website clearly gives the impression that it is operated by or with the authority of PMI.

The Respondent’s Website contains a disclaimer in a box at the bottom of the landing page, which is only visible after scrolling down, stating “This website is not official website of Philip Morris International (PMI) or IQOS INC. This website has no affiliation with (PMI) & IQOS”.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the Disputed Domain Name is confusingly similar to the HEET and HEETS and HEAT NOT BURN TECHNOLOGY trademarks, in which it has rights.

The Complainant further submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make use of the Complainant’s trademark. The Complainant says that the Respondent has designed its website so as to mislead visitors into thinking that it was a website of PMI. The Complainant notes in this regard that the disclaimer on the website is only visible after scrolling down and is not particularly prominent and that its use of the Complainant’s branding and official marketing materials are likely to create the overall impression that the website is that of or connected to PMI. The Complainant acknowledges that a reseller or distributor can be making a bona fide offering of goods or services and thus have a legitimate interest in a domain name but only if certain requirements are met. It refers to the well-known decision in the case Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. It says the criteria as set out in that case are not satisfied in the present situation.

Finally, the Complainant submits that the Disputed Domain Name was registered and has been used in bad faith. The Complainant submits that the Respondent chose the Disputed Domain Name in order to deliberately cause confusion among Internet users as to the source of the goods sold through its website in order to take unfair advantage of the Complainant’s reputation.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Preliminary Matters

The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).

6.2. Substantive Matters

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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

The Complainant has rights in the HEET and HEETS and HEAT NOT BURN TECHNOLOGY trademark. The Panel finds the Disputed Domain Name is confusingly similar to the HEAT NOT BURN TECHNOLOGY trademark in that it is phonetically identical to the substantive part of that trademark. The Panel does not therefore need to consider the HEET and HEETS trademarks.

It is well established that the generic Top-Level Domain (“gTLD”), in this case “.store”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

The Panel finds the HEAT NOT BURN TECHNOLOGY trademark is, on the evidence before the Panel, a distinctive term relating to the Complainant where there is no evidence of anyone else using that term.

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:

“(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is 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.”

None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the HEET or HEETS or HEAT NOT BURN TECHNOLOGY trademarks. The Complainant has prior rights in these trademarks, which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name, and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name.

Further the Panel agrees with the Complainant that the criteria set out in Oki Data Americas, Inc. v. ASD, Inc., supra are not satisfied in the present case. In the present case the Respondent is offering the Complainant’s products by falsely giving the impression that it is an authorised reseller of the Complainant. This in itself prevents the finding of a legitimate interest on behalf of the Respondent. While there is a disclaimer, this disclaimer is not sufficiently prominent, the Respondent has not undertaken reasonable steps to avoid unfairly passing itself off as related to the complainant, or to otherwise confuse users.

Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:

“(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 website or other online 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.”

The Panel concludes that the filed evidence establishes clearly that paragraph 4(b)(iv) of the Policy applies as the Disputed Domain Name is likely to attract traffic because of confusion with the Complainant’s trademark, and the Respondent hopes to derive commercial gain as a result. There appears to be no plausible reason for the Respondent’s selection of the Disputed Domain Name other than as a deliberate attempt to profit from the confusion generated with the Complainant’s HEET and HEETS and HEAT NOT BURN TECHNOLOGY trademarks. The Panel also finds that the Respondent has failed to produce any evidence to show that the registration and use of the Disputed Domain Name was not in bad faith.

The Panel has also considered the fact that (as described above) the Respondent’s Website carries a disclaimer. The Panel does not consider this assists the Respondent. It is not particularly prominent and a visitor has to scroll down a considerable distance to find it. This issue is discussed in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.7: “How does a disclaimer on the webpage to which a disputed domain name resolves impact a panel’s assessment of bad faith?

In cases where the respondent appears to otherwise have a right or legitimate interest in a disputed domain name, a clear and sufficiently prominent disclaimer would lend support to circumstances suggesting its good faith. For example, where a respondent is legitimately providing goods or services related to the complainant’s mark only (see WIPO Overview 3.0, section 2.8), the presence of a clear and sufficiently prominent disclaimer can support a finding that the respondent has undertaken reasonable steps to avoid unfairly passing itself off as related to the complainant, or to otherwise confuse users.

On the other hand, where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. In such cases, UDRP panels may consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused.

For the reasons discussed above the Panel does not consider the Respondent has a right or legitimate interest in the Disputed Domain Name and accordingly the Panel does not consider the disclaimer, even if it was more prominent, assists the Respondent. As a result, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.

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.store> be transferred to the Complainant.

Nick J. Gardner
Sole Panelist
Date: August 7, 2020