WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Mainul Arefin, ww.fiverr.com

Case No. D2021-3227

1. The Parties

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

The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Mainul arefin, ww.fiverr.com, Bangladesh.

2. The Domain Name and Registrar

The disputed domain name <dubaivapeheets.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2021. On September 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 29, 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 September 30, 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 October 1, 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 October 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2021. The Center received an email communication from the Respondent on October 9, 2021 and invited the Parties to explore settlement options on October 11, 2021. On October 21, 2021 the Center received an email communication from the Complainant stating that the Parties have been unable to reach a settlement, and requesting to continue with the proceeding. The Center notified the commencement of Panel appointment process on October 27, 2021. The Center received another email communication from the Respondent on October 27, 2021.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on November 15, 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, Philip Morris Products S.A., a Swiss company established under the laws of Switzerland, is part of the group of companies affiliated to Philip Morris International Inc. (jointly referred to as “PMI”). PMI is one of the leading international tobacco companies, with products sold in approximately 180 countries.

PMI has developed a number of products, including the products branded “Iqos”. “Iqos” is a precisely controlled heating device into which specially designed tobacco products under the brand names HEETS and HEATSTICKS or TEREA are inserted and heated to generate a flavorful, nicotine-containing aerosol.

The Complainant has proven to be the owner of the HEETS mark.

The Complainant is inter alia the owner of:

United Arab Emirates Registration HEETS (word) No. 256864 registered on December 25, 2017;

United Arab Emirates Registration HEETS (word/device) No. 256867 registered on December 25, 2017;

United Arab Emirates Registration IQOS (word) No. 211139 registered on March 16, 2016; and

United Arab Emirates Registration (word/device) No. 305079 registered on June 27, 2019.

The disputed domain name was registered on June 7, 2021.

The Complainant’s trademark registrations predate the registration of the disputed domain name.

The disputed domain name is linked to an online shop at “https://dubaivapeheets.com”. On this website there is an online shop allegedly offering the Complainant’s IQOS and HEETS branded products, as well as competing third party products of different commercial origin. On this website, a number of the Complainant’s copyright-protected official product images and marketing materials are also displayed.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the HEETS trademark, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith.

A domain name is confusingly similar to a trademark, when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name and therefore will likely be associated with the respective trademark.

B. Respondent

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

Indeed, the Respondent has sent only two short communications to the Center.

In the first communication (sent on October 9, 2021) the Respondent claimed to know nothing about what was going on, that it did not want to use the disputed domain name and that it would cancel it.

In the second communication (sent to the Center on October 27, 2021), the Respondent simply asked where it had to sign the form.

The Respondent may have been referring to the Standard Settlement Form mentioned by the Center in its communication of October 11, 2021.

6. Discussion and Findings

In order for the Complainant to obtain the transfer of the disputed domain name, paragraphs 4(a)(i)-(iii) of the Policy require that the Complainant must demonstrate to the Panel that:

(i) the disputed domain name 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

The Complainant has established rights in the HEETS trademark.

The disputed domain name consists of the HEETS trademark combined with the geographical term “dubai” and the term “vape”.

This Panel agrees with the Complainant’s assertion that the addition of the terms “dubai” and “vape” in the disputed domain name is irrelevant in assessing the confusing similarity between the Complainant’s trademark and the disputed domain name.

In this sense section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”

Therefore, the Panel finds the disputed domain name to be confusingly similar to the HEETS trademark in which the Complainant has rights.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. The Respondent is offering for sale what appears to be the Complainant’s products without disclosing the (absence of any authorization and/or any) relationship between the Complainant and the Respondent, as well as products of the Complainant’s competitors. In addition, the Respondent does not appear to be commonly known by the name “Heets” or by a similar name. Moreover, the Respondent has not replied to the Complainant’s contentions alleging any rights or legitimate interests in the disputed domain name. On the contrary, in its short emails the Respondent affirmed that it did not want to use the disputed domain name and that it would cancel it.

In addition, the Panel finds that the nature of the disputed domain name, consisting of the HEETS trademark with the added terms “dubai” and “vape”, carries a risk of implied affiliation with the Complainant’s HEETS trademark.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered in bad faith and has been used in bad faith.

Particularly relevant are the Complainant’s unchallenged assertions (which the Panel accepts and partially reproduces below) that:

The Respondent could not be unaware of the existence of the Complainant’s trademarks when registering the disputed domain name;

The term “heets” is purely imaginative, and is not commonly used to refer to tobacco products. It is therefore unlikely that the Respondent chose the disputed domain name without the intention of invoking a misleading association with the Complainant. In fact, it is evident from the Respondent’s use of the disputed domain name that the Respondent knew of the Complainant’s HEETS trademark when registering the disputed domain name. It also appears that the Respondent started offering the Complainant’s HEETS and/or IQOS branded products immediately after registering the disputed domain name.

The Respondent’s knowledge of the HEETS mark is particularly obvious, given that the HEETS trademark is displayed on the website at the disputed domain name.

In addition, by displaying the Complainant’s registered trademarks (HEETS and IQOS) on the Respondent’s website, the Respondent misled consumers into believing that the Complainant or an affiliated dealer were the source of the website. This suggestion is further supported by the Respondent’s use of the Complainant’s official product images on its website.

This Panel finds that the above use of the disputed domain name constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use under paragraph 4(b)(iv) of the Policy.

The Respondent has also used a privacy shield registration service for the disputed domain name. While the use of a privacy or proxy registration service is not in and of itself an indication of bad faith, it is the Panel’s opinion that in the present case the use of a privacy shield, combined with the elements previously discussed, amounts to a further inference of bad faith registration and use.

Finally, the Respondent has not responded to (nor denied) the assertions made by the Complainant in this proceeding.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

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 <dubaivapeheets.com> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: November 29, 2021