WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Mohamad Mazeh, Solimar Trading & Contracting Co.

Case No. D2020-2965

1. The Parties

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

The Respondent is Mohamad Mazeh, Solimar Trading & Contracting Co., Kuwait.

2. The Domain Name and Registrar

The disputed domain name <heetskw.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 November 9, 2020. On November 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 10, 2020, 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 November 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2020.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on December 8, 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 a Swiss stock company headquartered in Neuchâtel, Switzerland. It is a subsidiary of Philip Morris International, Inc. (“PMI”), a publicly traded corporation based in the United States of America (“United States”). PMI is a leading international tobacco company, founded in 1900, with products such as MARLBORO cigarettes sold in approximately 180 countries.

PMI’s principal website at “www.pmi.com” highlights the group’s “transformation” to “smoke-free products that—while not risk-free—are a far better choice than cigarette smoking.” These “Reduced Risk Products” (“RRPs”) include IQOS, the brand name for an electronic device that heats rather than burns cigarettes, generating a “flavourful, nicotine-containing aerosol” that differs in risk from traditional smoking and from vaping. The heating device and pocket charger are sold as a system under the brand names HEETS and HEATSTICKS.

PMI launched the IQOS System in Japan in 2014. The IQOS products are now sold through websites such as “www.iqos.com” and authorized distributors and retailers in more than 50 countries. In December 2020 IQOS products were approved for sale in the United States. The Complainant reports that PMI has invested USD 6 billion in the IQOS products (the record does not indicate how much of this represents advertising and promotion of the HEETS brand), resulting in “considerable international success and reputation, and over 11 million relevant consumers have converted to the IQOS System worldwide.”

The Complainant holds relevant trademark registrations, including these:

The Registrar reports that the Domain Name was created on September 14, 2020 and is registered to the Respondent Mr. Mohamad Mazeh of Solimar Trading & Contracting Co. in Kuwait.

The Complaint attaches screenshots of what appeared to be an e-commerce website that was formerly associated with the Domain Name in November 2020 (the “Respondent’s website”). This site was headed “HEETSKW.com”, with “KW” in contrasting colors. “KW” is an abbreviation for Kuwait. The landing page had positions for “Search” and “Menu” features, “Offers”, “HEETS”, “Accessories”, and “Customer Service”. The Respondent’s website displayed images of PMI HEETS products and accessories, as well as third-party accessory products such as cases, holders, and chargers, labelled in English and Arabic. These products were advertised for purchase through the Respondent’s website. The landing page displayed a large square with a diagonal line across the message “Under 21”, presumably signaling that the content was not intended for users under the age of 21. At the bottom of the page was a copyright notice in the name of “HEETSKW.COM” and a disclaimer:

“Disclaimer: This Website Is Not Affiliated with IQOS.COM Or Philip Morris International (PMI) And Is Not A Distributor Or Agent For Philip Morris International (PMI). All IQOS & HEETS Logos Are Property of Philip Maoris [sic] International (PMI).”

Nowhere on the Respondent’s website was the operator of the website identified. A notice at the bottom of the landing page stated that the website was “powered by” ExpandCart, with a link to its website. ExpandCart provides a service for building e-commerce websites.

At the time of this Decision, the Domain Name resolves to a landing page with an error message saying, “Store Not Available Currently” and presenting a link to “www.expandcart.com”.

The Complainant observes that the Respondent’s website formerly associated with the Domain Name is substantially similar to the one associated with the respondent’s website in a prior UDRP proceeding, Philip Morris Products S.A. v. Mohamad Mazeh, Solimar Trading & Contracting Co., WIPO Case No. D2020-2160, involving the domain name <iqoskw.com>.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is identical or confusingly similar to its HEETS trademark because it “reproduces the HEETS trademark in its entirety, in addition to the geographical abbreviation for … Kuwait, i.e. ‘kw’.”

The Complainant states that it “has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its HEETS trademark (or a domain name which will be associated with this trademark)”. The Complainant argues that the Respondent is not an authorized distributor or reseller of the IQOS System, and the Respondent’s website does not accurately or prominently disclose this fact or reveal the identity of the website operator. The Respondent’s website falsely suggests an affiliation with the Complainant by reproducing the Complainant’s copyrighted product images and marketing material (without permission) and also sells competing accessories produced by third parties. These facts militate against a finding of fair use by a reseller or distributor under the well-established Oki Data test, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. In fact, “the Complainant does not currently offer for sale its IQOS System in the territory of Kuwait, and the on-line shop provided under the Disputed Domain Name creates the false impression that the Complainant has officially introduced the IQOS System into the Kuwaiti market”, so the Respondent’s use of the Domain Name could not in any event be considered a “bona fide offering of goods”.

The Complainant relies on essentially the same facts to establish the Respondent’s bad faith:

“By reproducing the Complainant’s registered trademark in the Disputed Domain Name and the title of the Website, the Respondent’s Website clearly suggests the Complainant or an affiliated dealer of the Complainant as the source of the Website, which it is not. This suggestion is further supported by the Respondent’s use of the Complainant’s official product images and marketing materials, accompanied by a copyright notice claiming the copyright for the Website and its contents.

Additionally, the Respondent is not only using the Complainant’s HEETS trademark for the purposes of offering for sale the IQOS System, but also for purposes of offering for sale third party products of other commercial origin. Such abusive use of the Complainant’s HEETS trademark for purposes of promoting competing products is a clear-cut trademark infringement and constitutes clear evidence of the Respondent’s bad faith.”

The Complainant cites as well the Respondent’s efforts to obscure its identity and its apparent involvement in the earlier UDRP proceeding cited above concerning the domain name <iqoskw.com>, which was similarly used to sell the Complainant’s HEET products online, targeting a potential market in Kuwait that the Complainant evidently was not yet permitted or prepared to enter.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(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.

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant holds registered HEETS trademarks. The Domain Name incorporates that mark in its entirety and adds the initials “kw”, commonly used as a geographical abbreviation for the country Kuwait. Consequently, the Panel finds that the Domain Name is confusingly similar to the Complainant’s mark for purposes of the Policy. As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See WIPO Overview 3.0, section 1.11.2.

The Panel concludes that the Complainant has established the first element of the Complaint.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) that the respondent has been commonly known by the domain name, even if it 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.

Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights and the lack of evident rights or legitimate interests on the part of the Respondent, as the Respondent lacks a corresponding name and permission to use the Complainant’s mark. The Respondent has not come forward to claim relevant trademark rights or advanced other relevant rights or legitimate interests in the Domain Name. The Respondent formerly used the Domain Name to resell the Complainant’s products, but in a manner that did not satisfy the Oki Data test for fair use of a manufacturer’s trademark, as observed by the Complainant: the Respondent’s website did not accurately or prominently disclose the Respondent’s identity and its relationship with the Complainant or the Complainant’s ability to distribute the product in Kuwait, and the website sold products of third parties as well as those of the Complainant. See WIPO Overview 3.0, section 2.8.

At the time of this Decision, the Domain Name resolves to a landing page with an error message saying, “Store Not Available Currently” and presenting a link to “www.expandcart.com”.

The Panel concludes, therefore, that the Complainant prevails on the second element of the Complaint.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Respondent clearly was aware of the Complainant’s mark, as the Respondent’s website formerly advertised the Complainant’s products for sale online, displaying the Complainant’s copyrighted images and marketing text without permission, along with third-party accessories designed to be used with the Complainant’s products. The Respondent did not identify itself, despite a disclaimer of affiliation at the bottom of the landing page, and the implication of the website, including a copyright notice with the same name as the Domain Name, is that the Respondent was somehow authorized to distribute the Complainant’s products in Kuwait, which was false. As noted above, the Respondent had previously done this with a similar website using a domain name based on the Complainant’s IQOS mark. As in that proceeding, the Panel finds that the circumstances are consistent with the example of bad faith described in the Policy, paragraph 4(b)(iv).

The current use of the Domain Name to resolve to a landing page with an error message and presenting a link to “www.expandcart.com” does not prevent a finding of bad faith, given the Respondent’s previous conduct.

The Panel concludes that the Complainant prevails on the third element of the Complaint.

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 Domain Name, <heetskw.com>, be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: December 11, 2020