WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Marcos Francisco Gonzalez Pecora
Case No. D2019-0463
1. The Parties
The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by DM Kisch Inc., South Africa.
The Respondent is Marcos Francisco Gonzalez Pecora of Buenos Aires, Argentina.
2. The Domain Name and Registrar
The disputed domain name <heets.online> is registered with Hostinger, UAB (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2019. On February 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 1, 2019, 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 March 4, 2019 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 March 4, 2019.
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 March 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2019.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on April 3, 2019. 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.
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 instead of continuing to smoke), PMI has developed a number of products. One of these RRPs developed and sold by PMI is branded Iqos. Iqos is a precisely controlled heating device into which specially designed tobacco products under the brand names “Heets” and “HeatSticks” 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:
International Registration HEETS (word) No. 1326410 registered on July 19, 2016;
International Registration HEETS (device) No. 1328679 registered on July 20, 2016.
The disputed domain name was registered by the Respondent on October 31, 2018.
The Complainant’s trademark registrations predate the registration of the disputed domain name.
The disputed domain name was previously (at least on/up until February 25, 2019) linked to an online shop allegedly offering the Complainant’s Heets and/or Iqos branded products. Currently the website at the disputed domain name is not active.
5. Parties’ Contentions
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.
The Respondent did not reply to the Complainant’s contentions.
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 is clearly identical to the Complainant’s HEETS trademark, save for the <.online> generic Top-Level Domain (“gTLD”) indicator.
Owing to the fact that the gTLD suffix is generally disregarded under the test for confusing similarity for the purposes of the Policy, the Panel finds that the disputed domain name is identical 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 offers for sale what appears to be the Complainant’s products without disclosing the relationship between the Complainant and the Respondent. 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.
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.
Indeed, the Complainant gives several bases for its contention that the disputed domain name was registered and has been used in bad faith.
Particularly relevant are the Complainant’s unchallenged assertions (which the Panel accepts and partially reports 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 logo was displayed on the website at the disputed domain name for a certain period of time;
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 his 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 fact that the disputed domain name does not currently resolve to an active website does not preclude a finding of bad faith.
The Respondent has 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.
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 <heets.online> be transferred to the Complainant.
Date: April 9, 2019