WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Frank Papay
Case No. D2021-3407
1. The Parties
The Complainant is Philip Morris Products S.A., Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Frank Papay, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <heatstoreonline.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 October 14, 2021. On October 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 18, 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 October 25, 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 amendment to the Complaint on October 26, 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 November 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2021.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on December 2, 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 a group of companies affiliated to Philip Morris International Inc. The Complainant manufactures smoking and smoke-free products that are sold world-wide. The Complainant markets a product named IQOS. This is a device for heating specially designed flavoured tobacco products, trademarked HEETS, HEET, HEATSTICKS or TEREA.
The Complainant has registered numerous trademarks for HEETS, HEET, HEATSTICKS, and IQOS, of which the following are representative:
HEETS, International Trademark, registered July 19, 2016, registration number 1326410, in classes 9, 11, and 34;
HEET, International Trademark, registered May 17, 2016, registration number 1312086, in classes 9, 11, and 34;
HEATSTICKS, International Trademark, registered July 21, 2014, registration number 1217386, in class 34;
IQOS, International Trademark, registered July 10, 2014, registration number 1218246, in classes 9, 11, and 34.
No background information has been provided by the Respondent except for the contact information provided for the purpose of registration of the disputed domain name on December 19, 2019. The disputed domain name resolves to the website (the “Respondent’s website”) of an online store that displays pages containing illustrations of the Complainant’s products and trademarks, and of competing products bearing a different brand name.
5. Parties’ Contentions
The Complainant contends that it has rights in the trademarks HEETS, HEET and HEATSTICKS and that the disputed domain name is identical or confusingly similar to those trademarks. The Complainant says the disputed domain name contains a confusingly similar approximation to the Complainant’s trademarks. The term “heat” in the disputed domain name is phonetically identical to the Complainant’s trademark HEET. The Complainant submits that the content of a respondent’s website can provide confirmation of confusing similarity when there is prima facie evidence showing that a respondent is targeting a trademark through the disputed domain name.
The Complainant says the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states it has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks or to register the disputed domain name. The disputed domain name is in use for the purpose of unfair commercial gain and does not meet the requirements for a bona fide offering of goods. The Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. The Respondent does not meet the requirements under the Policy to qualify for use of the disputed domain name as a reseller of the Complainant’s products. The Respondent’s website implies that the Complainant sells the relevant products in the United States of America (“United States”), which the Complainant does not, because it would be illegal to do so.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The website of the disputed domain name reveals that the Respondent was aware of the Complainant’s trademarks. The Complainant’s trademarks are imaginative and the disputed domain name was evidently chosen by the Respondent with the Complainant in mind and not by coincidence. The Respondent’s use of the disputed domain name has been with intent to attract Internet users to the Respondent’s website by confusion with the Complainant’s trademark for commercial gain.
The Complainant says that the Respondent’s concealment of its true identity may constitute a factor in support of a finding of bad faith.
The Complainant has cited previous cases under the Policy, including cases pertaining to itself, that it considers to be applicable in the consideration of the present Complaint. The Complainant has produced evidence to show a similarity of the Respondent’s website to that of “www.heatstore4u.com”, the domain name of which was transferred to the Complainant in a previous decision under the Policy.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Panel is satisfied by the evidence that the Complainant has rights in the trademarks HEET, HEETS and HEATSTICKS as required under the Policy.
The disputed domain name <heatstoreonline.com> may be read as the words “heat”, “store”, and “online”. Insofar as online stores are common, the key word in the disputed domain name is "heat"; furthermore the string “heats” is discernible and may be findable by search engines. The Respondent’s spelling of “heat” is different from the Complainant’s spelling of HEET or HEETS, but on an objective comparison the disputed domain name is found to be confusingly similar to the Complainant’s relevant trademarks because, among other reasons:
(i) “heat” is pronounced similarly to HEET or HEETS (section 1.7, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”);
(ii) “heat” represents a typographical misspelling of HEET, constituting typosquatting;
(iii) the content of the Respondent’s website includes multiple references to HEETS in both its stylised or logo form with the letter “E” appearing as three bars, and in conventional typeface, indicating an intention that the disputed domain name shall be confused with the Complainant’s trademarks (WIPO Overview 3.0, section 1.15);
(iv) “heat” is a distinctive part of the Complainant’s trademark HEATSTICKS.
The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademarks and finds for the Complainant under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant states that it has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks in any way. The Complainant has stated a prima facie case to the effect that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Under paragraph 4(c) of the Policy the Respondent may contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and may establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your 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) 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 mark at issue”.
The Respondent has not responded and has not asserted rights or legitimate interests in the disputed domain name with reference to paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise.
The Panel finds no cause to believe that the Respondent could reasonably have rights or legitimate interests in the disputed domain name and accordingly finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant is required to prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel. In the present case paragraph 4(b)(iv) of the Policy is pertinent.
The Complainant has produced screen captures in evidence of the website to which the disputed domain name has resolved. The website heading restates “heatstoreonline.com” and displays a “Welcome!” placard above a “GET SHOPPING” button, making clear that the website is intended for commerce. There are facilities for the customer to open an account and to place orders, and various well-known payment card logos are displayed. In addition to displaying the Complainant’s HEETS trademark, other trademarks belonging to the Complainant are displayed including IQOS, MARLBORO and PHILLIP MORRIS. The website at least partly targets customers in the United States, with an offer of “Fast Free Shipping 3-5 business days delivery time in the USA” and a heading “MARLBORO HEATSTICKS (US VERSION)”; the Complainant has stated that the relevant products cannot legally be sold in the United States. Along with the many illustrations of products and devices bearing the Complainant’s trademarks are products of at least one different brand.
In the terms of paragraph 4(b)(iv) of the Policy, the Panel finds on the evidence and on the balance or probabilities that the disputed domain name is in use for commercial gain and with intent to attract Internet users by confusion with the Complainant’s trademarks as to the endorsement of the products portrayed on the website to which it resolves, constituting use in bad faith. The Panel finds on the balance of probabilities that the disputed domain name was registered for the purpose for which it has been used.
Accordingly in the terms of paragraph 4(a)(iii) of the Policy, the Panel finds the disputed domain name to have been registered and used by the Respondent in bad faith.
Since the presently disputed domain name was registered 14 days after the transfer to the Complainant of the domain name <heatstore4u.com> (Philip Morris Products S.A. v. Registration Private, Domains By Proxy, LLC / ????? ?????, WIPO Case No. D2019-2458), and both corresponding websites have considerable similarities, the Panel finds that this situation further supports a finding of registration and use of the disputed domain name 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 <heatstoreonline.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: December 14, 2021