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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Salla, Heet not Burn / Nawaf Hariri, Salla

Case No. D2020-1812

1. The Parties

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

The Respondent is Salla, Heet not Burn, Saudi Arabia / Nawaf Hariri, Salla, Saudi Arabia.

2. The Domain Name and Registrar

The disputed domain name <hnb-sa.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2020. On July 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 15, 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 July 20, 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 July 21, 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 July 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2020.

The Center appointed Andrew F. Christie as the sole panelist in this matter on August 24, 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. (“PMI”). PMI is a leading international tobacco company, with products sold in approximately 180 countries.

PMI has developed a precisely-controlled heating device into which specially designed tobacco products, sold under the brand names “HEETS” or “HeatSticks”, are inserted and heated to generate a flavourful nicotine-containing aerosol. The device and its charger, which together is called the “IQOS System”, was first launched by PMI in Japan in 2014, and is now available in cities in around 53 markets across the world, with over 10 million consumers. To date, the IQOS System has been almost exclusively distributed through PMI’s official IQOS stores and websites and selected authorized distributors and retailers.

The Complainant owns a large portfolio of trademark registrations, including Saudi Arabia Registration No. 1436006449 (registered on November 12, 2015) for the word trademark HNB, Saudi Arabia Registration No. 1436017723 (registered on September 14, 2015) for the word trademark HEAT NOT BURN TECHNOLOGY, Saudi Arabia Registration No. 1437023526 (registered on January 28, 2016) for the word trademark HEETS, and Saudi Arabia Registration No. 1439013970 (said to be registered on May 14, 2018) for the word trademark IQOS.

The disputed domain name was registered on June 3, 2020. The Complainant has provided screenshots, taken on what appears to be June 7, 2020, of the website (most of which is in Arabic) resolving from the disputed domain name. That website is headed with the text “HEETS IQOS SAUDI ARABIA”, and offers for sale a selection of the Complainant’s IQOS products together with competing third party products of other commercial origin.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights because: (i) the disputed domain name identically adopts the Complainant’s HNB trademark with the addition of the non-distinctive geographical abbreviation for Saudi Arabia, namely “sa”; and (ii) it is well established that the applicable Top-Level Domain (“TLD”) in a domain name is viewed as a standard registration requirement and as such is disregarded.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its HNB trademark; (ii) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name; (iii) the Respondent’s behavior shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademarks owned by the Complainant; (iv) the Respondent is not an authorized distributor or reseller of the IQOS System; (v) the website resolving from the disputed domain name is selling competing tobacco products and/or accessories of other commercial origin; (vi) the website resolving from the disputed domain name does not meet the requirements set out by numerous panel decisions for a bona fide offering of goods, because it is not “fair” if it suggests an affiliation with the trademark owner; (vii) the owner/administrator of the website resolving from the disputed domain name prominently, and without authorization, presents the Complainant’s registered HNB and HEAT NOT BURN TECHNOLOGY trademarks at the top right of the website where consumers will usually expect to find the name of the online shop and/or the name of the website provider; (viii) the website resolving from the disputed domain name uses the Complainant’s official product images without authorization, while at the same time falsely claiming copyright in this material; (ix) the website resolving from the disputed domain name includes no information regarding the identity of the provider of the website, which further serves to perpetuate the false impression of an official commercial relationship between the website and the Complainant; and (x) as the Complainant’s IQOS System is primarily distributed through official and/or endorsed stores, Internet users are clearly misled regarding the relationship between the website resolving from the disputed domain name and the Complainant, and will falsely believe it to be an official and/or endorsed reseller.

The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) it is evident from the Respondent’s use of the disputed domain name that the Respondent knew of the Complainant’s HNB trademark when registering the disputed domain name, as the Respondent started offering the Complainant’s IQOS System immediately after registering the disputed domain name, and the terms “hnb”, “heat not burn technology”, “heets” and “iqos” are purely imaginative terms, unique to the Complainant, and not commonly used to refer to tobacco products or electronic devices; (ii) 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 registered HNB trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location; (iii) by reproducing the Complainant’s registered trademark in the disputed domain name and the title of the website resolving from it, the Respondent’s website clearly suggests the Complainant or an affiliated dealer of the Complainant as the source of the website, which is not correct; (iv) the Respondent is not only using the Complainant’s HNB, HEAT NOT BURN TECHNOLOGY, HEETS and IQOS trademarks for the purposes of offering for sale the IQOS System, but also for offering for sale third party products of other commercial origin, which is clear-cut trademark infringement; and (v) the fact that the Respondent is using a privacy protection service to hide its true identity may in itself constitute a factor indicating bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Once the TLD “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the Complainant’s registered word trademark HNB, followed by a hyphen and the letters “sa”. The Complainant’s trademark is clearly recognizable within the disputed domain name. The addition of the hyphen and letters “sa”, which may be read by many Internet users as the initialism for Saudi Arabia, does not avoid the confusing similarity of the disputed domain name with the trademark. As provided in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its HNB word trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name has been used to resolve to a website at which is offered for sale, without authorization, both the Complainant’s products and competing products of other commercial origin. The contents of the website are such that many Internet users will form the false belief that the website is operated by, or affiliated with, the Complainant. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name was registered several years after the Complainant first registered its HNB word trademark. The evidence on the record provided by the Complainant with respect to the use of its HNB word trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s HNB word trademark. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

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, <hnb-sa.com>, be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Date: September 7, 2020

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