WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Registration Private, Domains By Proxy, LLC / Will Heighington

Case No. D2021-0024

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States” or “U.S.”) / Will Heighington, Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <heet-shop.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 January 6, 2021. On January 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 7, 2021, 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 January 12, 2021, 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 January 14, 2021.

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 January 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2021.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on February 24, 2021. 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 has submitted evidence that it is the owner of a large number of trademark registrations in numerous countries, including the following:

HEETS (word/device) U.S. registration No. 5238861 registered on June 30, 2015.
IQOS (word) U.S. registration No. 4763090 registered on June 30, 2015.
IQOS (device) U.S. registration No. No. 4763088 registered on June 30, 2015.
HEET (word) International Registration No. 1312086 registered on May 17, 2016, designating United States and a large number of other countries.
HEETS (word), International Registration No. 1326410 registered on July 19, 2016, designating United States and a large number of other countries.
HEETS (word/device), International Registration No. 1328679 registered on July 20, 2016, designating United States and a large number of other countries.
IQOS (device), International Registration No. 1338099 registered on November 22, 2016, designating the United States and a large number of other countries.
HEETS (word) U.S. registration No. 5,860,364 registered on September 17, 2019.

The disputed domain name <heet-shop.com> was registered on January 25, 2018. The Complainant provided evidence that the disputed domain name resolves to a website allegedly selling and offering the Complainant’s goods.

5. Parties’ Contentions

A. Complainant

The Complainant, Philip Morris Products S.A., is a company which is part of the group of companies affiliated to Philip Morris International Inc. (jointly referred to as “PMI”). PMI is a leading international tobacco company with products sold in approximately 180 countries. PMI’s brand portfolio contains brands like MARLBORO.

PMI is known for innovating across its brand portfolio. In the course of transforming its business from combustible cigarettes to Reduced Risk Products (or “RRPs”, which PMI defines as products that present, are likely to present, or have the potential to present less risk of harm to smokers who switch to those products versus continued smoking), PMI has developed a number of RRP-products. One of these RRPs developed and sold by PMI is called IQOS. IQOS is a precisely controlled heating device into which specially designed tobacco products under the brand names HEETS or “HeatSticks” are inserted and heated to generate a flavorful nicotine-containing aerosol. The IQOS system also consists of an IQOS Pocket Charger, specially designed to charge the IQOS Holder (collectively referred to as the IQOS System). The IQOS System was first launched by PMI in Nagoya, Japan in 2014 and has obtained 18.3 per cent share of the market in Japan. Today the IQOS System is available in key cities in around 61 markets across the world. As a result of a USD 6 billion investment and extensive international sales and marketing efforts (in accordance with local laws), the IQOS System has achieved considerable international success and reputation, and approximately 16.4 million relevant consumers are using the IQOS System worldwide. To date, the IQOS System has been almost exclusively distributed through PMI’s official IQOS stores, websites, selected authorized distributors, and retailers.

For its new innovative smoke-free products the Complainant owns a large portfolio of well-known trademarks, including HEETS and IQOS.

The Respondent, according to the WhoIs information on January 4, 2021, appears to be a private registration service provider commercially acting as a front company for domain registrants by appearing as the domain registrant itself. The identity of the real owner and operator of the disputed domain is concealed and cannot be revealed to third parties, such as the Complainant. The Respondent is therefore not known or in any way related to the Complainant or any PMI affiliate and is not authorized to use the HEET and/or HEETS trademarks.

The disputed domain name is linked to an online shop allegedly selling and offering the Complainant’s IQOS System. The Respondent’s website is provided in English. The fact that the website is indicating all prices in USD, as well as stating that “We only ship to addresses in the United States of America” clearly indicates that the website is directed to the United States. The Complainant cannot say for sure whether the products offered through the disputed domain name are genuine IQOS Systems. However, it is important to note that the marketing of tobacco heating products is prohibited in the United States unless the Food and Drug Administration (the “FDA”) has authorized the product through the Pre-Market Tobacco Application pathway under the Food, Drug and Cosmetic Act. The Complainant has to-date received authorization from the FDA to sell its IQOS 2.4 device and MARLBORO HeatSticks in the United States. The Complainant’s HEETS sticks and IQOS Multi devices are not currently authorized for sale or marketing in the United States. Consequently, the Respondent’s sale of HEETS sticks and IQOS Multi devices in the United States is illegal.

Notwithstanding the Respondent’s website is clearly purporting to be an official online retailer of the Complainant’s IQOS System in the United States by using the Complainant’s HEET and/or HEETS trademarks in the disputed domain name together with the non-distinctive and descriptive word “shop”. The website is prominently using the Complainant’s registered HEET and/or HEETS trademarks at the top of the website being a location where users usually expect to find the name of the online shop and/or the name of the provider of the website. Any user being confronted with the disputed domain name and the website provided thereunder will usually expect to find the name of the online shop and/or the name of the provider of the website.

The website is further using a number of the Complainant’s official product images without the Complainant’s authorization, which strengthens the false impression of an affiliation with the Complainant. The website does not show any details regarding the provider of the website nor does it acknowledge the Complainant as the real brand owner of the IQOS System, leaving the Internet user under the false impression that the online shop provided under the website, is that of the Complainant or that it is connected to that of the Complainant or one of its official distributors, which it is not.

The disputed domain name identically adopts the Complainant’s HEET and/or HEETS trademarks. The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Any Internet user when visiting a website provided under the disputed domain name will reasonably expect to find a website commercially linked to the owner of the HEET and/or HEETS trademarks. This unlawful association is exacerbated by the use of the Complainant’s official product images without the Complainant’s authorization.

The Complainant has made a prima facie case that the Respondent lacks any right or legitimate interest in the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its HEET and/or HEETS trademarks. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. On the contrary, 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. Firstly, the Respondent is not an authorized distributor or reseller of the IQOS System. Secondly, the website provided under the disputed domain name does not meet the requirements set out by numerous panel decisions for a bona fide offering of goods.

The Respondent’s website includes no information regarding the identity of the provider of the website, which is only identified as “HeetShop WorldWide” on the website, being a name which similarly includes a mark highly similar / phonetically almost identical to the Complainant’s registered HEET and/or HEETS trademarks and further serves to perpetuate the false impression of an official commercial relationship between the website and the Complainant. As the Complainant’s IQOS System is primarily distributed through official stores, in this case Internet users are clearly misled regarding the relationship between the website and the Complainant, and will falsely believe the website under the disputed domain name to be an official distributor.

The illegitimacy of the Respondent’s use of the disputed domain name is further shown by the fact that the Complainant does not currently offer for sale its HEETS products and IQOS Multi devices and HEETS branded sticks given they have not yet been authorized for sale in the United States by the FDA and the online shop provided under the disputed domain name creates the false impression that the Complainant has officially introduced its IQOS Multi devices into the United States market – which it has not. Such use of the disputed domain name cannot be considered a bona fide offering of goods and does not establish a legitimate interest on behalf of the Respondent.

It is evident from the Respondent’s use of the disputed domain name that the Respondent knew of the Complainant’s HEET and/or HEETS trademarks when registering the disputed domain name. The Respondent started offering the Complainant’s IQOS System immediately after registering the disputed domain name. Furthermore, the terms HEET and/or HEETS are purely imaginative terms and unique to the Complainant. The terms HEET and/or HEETS are not commonly used to refer to tobacco products or electronic devices. It is therefore beyond the realm of reasonable coincidence that the Respondent chose the disputed domain name, without the intention of invoking a misleading association with the Complainant.

It is also evident from the Respondent’s use of the disputed domain name 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 registered HEET and/or HEETS trademarks as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

By reproducing the Complainant’s registered trademarks 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. The illegitimacy of the Respondent’s use of the disputed domain name is further amplified by the fact that the Complainant does not currently offer for sale its HEETS products and IQOS Multi devices in the United States, and the website provided under the disputed domain name creates the false impression that the Complainant has officially introduced its IQOS Multi devices and HEETS products into the United States market, which it has not To do so absent FDA approval is illegal. Finally, 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

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of the registered trademark HEET. The disputed domain name incorporates the HEET trademark in its entirety with the addition of a hyphen and the descriptive term “shop”. In the present case, the Complainant’s trademark is readily recognizable in the disputed domain name. Furthermore, the addition of a hyphen and the descriptive term “shop” to the HEET trademark in the disputed domain name does not prevent a finding of confusing similarity.

Having the above in mind, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks HEET and that the Complainant has proven the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) that the Respondent uses or has made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute; or

(ii) that the Respondent is commonly known by the disputed domain name, even if the Respondent has not acquired any trademark rights; or

(iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Complainant’s trademark registrations for HEET and HEETS predate the Respondent’s registration of the disputed domain name. The Complainant has not licensed, approved or in any way consented to the Respondent’s registration and use of the trademarks in the disputed domain name.

From the submitted evidence in the case, it is clear that the Respondent’s commercial website, to which the disputed domain name resolves, contains direct references to the Complainant’s products and trademarks. The evidence indicates that the Respondent has attempted to create an impression of an official commercial relationship between the Respondent and the Complainant by reproducing not only the Complainant’s trademarks HEET, HEETS, and IQOS, but also the Complainant’s official product images.

Given the above, the Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

Although given the opportunity, the Respondent has not rebutted the Complainant’s prima facie case. The Respondent has not submitted any evidence in this case to demonstrate that the Respondent is the owner of any trademark rights similar to the disputed domain name or that the Respondent is or has been commonly known by the disputed domain name.

By not submitting a response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:

(i) circumstances indicating the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or

(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding disputed domain name, provided there is a pattern of such conduct; or

(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the disputed domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.

The Complainant has submitted evidence demonstrating that the Respondent is using not only the Complainant’s HEET, HEETS, and IQOS trademarks, but also the Complainant’s official product images in order to create a false impression that the disputed domain name and the website, to which the disputed domain name resolves, are endorsed by or provided by the Complainant. The Panel notes that the Complainant has argued that it does not yet offer HEETS products and IQOS Multi devices for sale in the United States while the Respondent’s website creates the false impression that the Complainant has officially introduced its IQOS Multi devices and HEETS products into the United States market.

By using the disputed domain name in combination with the Complainant’s trademarks and official marketing material, there is an increased risk of confusion as Internet users may more easily be confused or misled into believing that the disputed domain name and website belong to or are in some way associated with or provided by the Complainant.

Considering that the Respondent is reproducing the Complainant’s trademarks and advertising material without permission and that the disputed domain name is used to market the very same type of products for which the Complainant’s trademarks are registered, the Panel finds, in the absence of contrary evidence, that the Respondent knew or should have known of the Complainant’s trademark at the time the Respondent registered and used the disputed domain name.

Thus, the evidence in the case before the Panel indicates that the disputed domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks HEET and HEETS as to the source, sponsorship, affiliation, or endorsement of the websites or of a product or service on the website.

There is no evidence in the case that refutes the Complainant’s submissions.

The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain name <heet-shop.com> 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 <heet-shop.com> be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist
Date: March 8, 2021