WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. ramazan demir
Case No. D2021-2053
1. The Parties
The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is ramazan demir, Turkey.
2. The Domain Name and Registrar
The disputed domain name <heetss.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2021. On June 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 30, 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 July 1, 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 July 13, 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 July 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2021.
The Center appointed Andrew F. Christie as the sole panelist in this matter on August 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 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, called IQOS, 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 (collectively referred to as the “IQOS System”). The IQOS System was first launched by PMI in Japan in 2014, and is now available in around 64 markets across the world, with over 17.6 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:
- International Registration No. 1326410 (registered on July 19, 2016) designating numerous jurisdictions, including Turkey, for the word trademark HEETS;
- International Registration No. 1328679 (registered on July 20, 2016) designating numerous jurisdictions, including Turkey, for the device trademark (“HEETS device mark”);
- International Registration No. 1218246 (registered July 10, 2014) designating numerous jurisdictions, including Turkey, for the word trademark IQOS; and
- International Registration No. 1338099 (registered on November 22, 2016) designating numerous jurisdictions, including Turkey, for the device trademark (“IQOS device mark”).
The disputed domain name was registered on June 1, 2021. The Complainant has provided screenshots, taken on June 10, 2021, of the website resolving from the disputed domain name, at which appears the words “Heets Türkiye”, the HEETS and IQOS word and device trademarks, a selection of purported HEETS products offered for sale apparently using the Complainant’s official product images, and purported products of the Complainant’s competitors.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it has rights because: (i) the disputed domain name reproduces the HEETS trademark in its entirety, together with the non-distinctive addition of the letter “s”; (ii) any Internet user visiting the website resolving from the disputed domain name will reasonably expect to find a website commercially linked to the owner of the HEETS trademark; (iii) this unlawful association is exacerbated by the use of the Complainant’s official product images without the Complainant’s authorization; and (iv) it is well established that the applicable generic Top-Level Domain (“gTLD”) 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 HEETS trademark; (ii) the Respondent 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; (iii) the Respondent is not an authorized distributor or reseller of the IQOS System, and uses the Complainant’s official product images without authorization; (iv) the website resolving from the disputed domain name is selling competing tobacco products and/or accessories of other commercial origin; (v) the Respondent does not meet the requirements set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, as a reseller or distributor of the Complainant’s products; (vi) the disputed domain name in itself suggests at least an affiliation with the Complainant and its HEETS trademark; (vii) the owner/administrator of the website resolving from the disputed domain name prominently, and without authorization, presents the Complainant’s registered HEETS trademark appearing at the top of the website, where consumers will usually expect to find the name of the online shop and/or the name of the website provider; and (viii) the Complainant does not currently offer for sale its IQOS System in the territory of Turkey, 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 Turkish market.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) as the Respondent started offering the Complainant’s IQOS System immediately after registering the disputed domain name, and the term “Heets” is an imaginative term unique to the Complainant and not commonly used to refer to tobacco products or electronic devices, it is 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; (ii) the Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to the website resolving from it by creating a likelihood of confusion with the Complainant’s registered HEETS trademark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on it; (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 true, and this is further supported by the Respondent’s use of the Complainant’s official product images; (iv) the Respondent is not only using the Complainant’s HEETS trademark 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 an abusive use of the Complainant’s HEETS trademark and clear evidence of the Respondent’s bad faith; 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.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Once the gTLD “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the Complainant’s registered word trademark HEETS, followed by a second letter “s”. The Complainant’s trademark is clearly recognizable within the disputed domain name.
The addition of the letter “s” does not avoid the confusing similarity of the disputed domain name with the trademark.
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 the Complainant, is not an authorized distributor of the Complainant’s products, and has not been authorized by the Complainant to use its HEETS 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 displayed, without authorization, images of the Complainant’s products, as well as products of the Complainant’s competitors. 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 HEETS word trademark. It is inconceivable that the Respondent registered the disputed domain name ignorant of the existence of the Complainant’s HEETS word trademark, given that there has been substantial use of the trademark, that the disputed domain name consists of the trademark with the mere addition of a second letter “s”, and that the Respondent used the disputed domain name to resolve to a website at which the trademark and the HEETS device mark appear.
Given the Respondent’s lack of rights or legitimate interests in the disputed domain name, and the confusing similarity of the disputed domain name to the Complainant’s word trademark, any use of the disputed domain name by the Respondent almost certainly implies an affiliation with the Complainant that does not exist, and so would be a use in bad faith.
Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name in an attempt 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.
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, <heetss.com>, be transferred to the Complainant.
Andrew F. Christie
Date: September 7, 2021