WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. \u0645\u0633\u0627\u0639\u062f\u0627\u0644\u062d\u0645\u062f/ مساعد الحم / Praise assistant

Case No. D2021-1366

1. The Parties

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

The Respondent is \u0645\u0633\u0627\u0639\u062f\u0627\u0644\u062d\u0645\u062f/ مساعد الحم / Praise assistant, Kuwait.

2. The Domain Name and Registrar

The disputed domain name <xheets.com> (“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 May 4, 2021. On May 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 5, 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 May 7, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on May 11, 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 May 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2021.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on June 9, 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 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 64 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 owns a large portfolio of trademarks with the term HEET. Among them, but by no means limited to, are the following:

- HEETS (word), Kuwait Registration No. 150165, registered on July 20, 2016; and

- IQOS (word), Kuwait Registration No. 163731, registered on January 15, 2018.

The Disputed Domain Name was registered on April 12, 2021. At the time of filing the Complaint, the Disputed Domain Name resolved to an online website allegedly selling and offering the Complainant’s IQOS System in Kuwait, as well as competing third party products and accessories of other commercial origin (the “Website”).

5. Parties’ Contentions

A. Complainant

The Complainant´s contentions can be summarized as follows.

Identical or confusingly similar

The Complainant contends that the Disputed Domain Name identically adopts the Complainant’s HEETS trademark, with the addition of the letter “x”.

Finally, the Complainant alleges that any Internet users visiting a website provided under the Disputed Domain Name will reasonably expect to find a website commercially linked to the owner of the HEETS trademark.

Rights or legitimate interests

The Complainant submits 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 HEETS trademark (or a domain name which will be associated with this trademark).

The Complainant further alleges that 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. The Respondent is not an authorized distributor or reseller of the IQOS System.

Moreover, the Disputed Domain Name in itself suggests at least an affiliation with the Complainant and its HEETS trademark, as the domain name wholly reproduces the Complainant’s registered HEETS trademark together with the non-distinctive addition, of the letter “x”.

The Complainant contends that the fact that the Respondent is not only offering the Complainant’s products but also competing heated tobacco products and/or accessories of other known and unknown commercial origin is in itself is sufficient to exclude a legitimate interest in the form of a bona fide offering of goods and services.

Furthermore, the Complainant submits that 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 IQOS System in the territory of Kuwait, and the online shop provided under the Disputed Domain Name creates the false impression that the Complainant has officially introduced the IQOS System into the Kuwaiti market.

The website at the Disputed Domaine Name does not show any details regarding the provider of the website, leaving the Internet users under the impression that the online shop provided under the Disputed Domain Name is the Complainant or one of its official distributors. The following disclaimer appears:
“IQHEE (IQOS HEETS) Have No Affiliation With Philip Morris International (PMI). This Is Not Official Website Of PMI And IQOS.”

Registration and use in bad faith

The Complainant contends that the Respondent knew of the Complainant’s HEETS trademark when registering the Disputed Domain Name since the Respondent started offering the Complainant’s IQOS System (or at least the HEETS tobacco sticks from the IQOS System) immediately after registering the Disputed Domain Name. Furthermore, the term HEETS is purely an imaginative term and unique to the Complainant. The term HEETS is not commonly used to refer to tobacco products or electronic devices.

The Complainant further states that 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.

Moreover, 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 accessories and products of other commercial origin and third-party infringing accessories.

B. Respondent

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;

(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 is confusingly similar to the Complaint’s trademarks. The Disputed Domain Name contains the Complainant’s HEETS trademark in its entirety.

The Disputed Domain Name only differs from the Complainant’s trademark with the addition of the letter “x” at the beginning of the HEETS trademark. The addition of such term does not prevent a finding of confusing similarity between the Complainant’s trademark and the Disputed Domain Name.

In addition, the addition of the generic Top-Level Domain (“gTLD”) “.com” does not change this finding, since the gTLD is generally disregarded in such an assessment of confusingly similarity.

Therefore, this 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.

In addition, the Panel finds that the similarity of the Disputed Domain Name comprising the Complainant’s HEETS trademark and an additional letter (“x”) coupled with the Respondent’s use of the Website at the Disputed Domain Name purporting to be an official online retailer of the Complainant in Kuwait and giving a false impression of association with the Complainant, carries a risk of association or affiliation with the Complainant’s trademark, which is not avoided by the disclaimer. See sections 2.5.1 and 2.5.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent had the opportunity to demonstrate his rights or legitimate interests, but he did not reply to the Complainant’s contentions.

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 2021; five years after the Complaint obtained it’s Kuwait trademark registration for its trademark HEETS. 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 HEETS branded products 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. The Respondent is not an authorized reseller of the Complainant’s product. In addition, the Complainant does not currently offer for sale its IQOS System in the territory of Kuwait.

Consequently, the Respondent’s sale of these products in Kuwait 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. Thus, Internet users might have 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 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, as set out in 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.

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 <xheets.com> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: June 23, 2021