WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Richard Chen, heatshop

Case No. D2018-2537

1. The Parties

Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.

Respondent is Richard Chen, heatshop of San Gabriel, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <heetshopusa.com> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2018. On November 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 6, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name. The Center sent an email communication to Complainant on November 7, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 8, 2018.

The Center verified that the Complaint together with the amendment to the 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 Respondent of the Complaint, and the proceedings commenced on November 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 3, 2018.

The Center appointed Marina Perraki as the sole panelist in this matter on December 12, 2018. 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

According to the Complaint, Complainant is part of the Philip Morris International Inc. group of companies (“PMI group”), active in the tobacco industry, with products sold in approximately 180 countries. PMI group operates 46 production facilities in 32 countries. PMI group has been transforming its business from combustible cigarettes to other smoking products, one of which, developed and sold by PMI, is a tobacco heating system branded as IQOS. The IQOS system consists of three components, the IQOS holder, the heated tobacco units sold under the names “Heets” and “HeatSticks”, which are inserted into the IQOS holder, and an IQOS Pocket Charger, used to charge the IQOS Holder (together “the IQOS Products”). The IQOS Products were first launched by PMI group in 2014. Today the IQOS Products are available in approximately 43 markets across the world. Per Complainant, PMI group has invested USD 4.5 billion to market the IQOS Products and as a result each of the IQOS Products has gained considerable international reputation, with almost 6 million users. Per Complaint, the IQOS Products have been almost exclusively distributed through PMI group’s official IQOS stores and websites and selected authorized distributors and retailers.

Complainant is the owner of numerous HEETS trademark registrations. These include:

- International registration No. 1326410 (word mark), registered on July 19, 2016 designating, inter alia, European Union and United States of America, for goods in international classes 9, 11 and 34; and

- - International registration No. 1328679 (word and device mark), registered on July 20, 2016, designating, inter alia, European Union and United States of America, for goods in international classes 9, 11 and 34.

The Domain Name was registered on September 13, 2018 and resolves to a website (the “Website”) which is an online shop, allegedly offering for sale products bearing Complainant’s trademarks such as HEETS, HEATSTICKS, IQOS and MARLBORO. The Website displays a number of Complainant’s official product images and includes the copyright notice “© 2018 heetshop”. Respondent is unknown to Complainant and is not an authorized reseller of the IQOS Products.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has demonstrated rights through registration and use on the HEETS mark.

The Panel finds that the Domain Name <heetshopusa.com> is confusingly similar with the HEETS trademark of Complainant.

The Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The word “shop” which is added in the Domain Name does not avoid a finding of confusing similarity as it is a descriptive, non-distinctive term, denoting the operation of the Website as an online shop (Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, WIPO Case No. D2015-0135; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).

The fact that the first letter “s” of the “shop” part of the Domain Name is also the last letter “s” of the “heets” part of the Domain Name does not avoid a finding of confusing similarity either, as both words “heets” and “shop” remain distinctly recognizable within the Domain Name.

The word “usa” which is added in the Domain Name is disregarded as it is a geographic, non-distinctive term (BHP Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017-0284, Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, WIPO Case No. D2015-0135; WIPO Overview 3.0, section 1.8).

The generic Top-Level Domain (“gTLD”) “.com” is also disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson InternationalLicensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

The Panel finds that the Domain Name <heetshopusa.com> is confusingly similar to the IQOS trademark of Complainant.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.

Respondent did not demonstrate any prior to the notice of the dispute use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.

On the contrary, as Complainant demonstrates, the Domain Name resolves to a website containing text and content that suggests falsely that the website is that of Complainant or of an affiliated entity or of an official dealer of Complainant.

Per Complaint, Respondent is not an affiliated entity or an authorized reseller of Complainant and no agreement, express or otherwise, exists allowing the use of Complainant’s trademarks on the Website and the use of the Domain Name by Respondent.

Further, per Complaint, the Complainant’s IQOS and HEETS branded products are not currently sold in the United States of America, as they are the subject of a Pre-Market Tobacco Application, being assessed by the United States Food and Drug Administration.

A reseller or distributor can be making a bona fide offering of goods or services and thus have a legitimate interest in a domain name only if the following cumulative requirements are met (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, WIPO Overview 3.0, section 2.8.1): (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.

These requirements are not cumulatively fulfilled in the present case. The Domain Name suggests that it is an official site of Complainant or affiliated to or endorsed by Complainant. The Website extensively reproduces without authorization by Complainant Complainant’s trademarks and official Complainant’s product images, while it includes a copyright notice, without any statement as to the true ownership of the Website or any disclaimer of association with Complainant.

Furthermore, use which intentionally trades on the fame of another and suggests affiliation with the trademark owner cannot constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847, Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946, AB Electrolux v. Handi Sofian, Service Electrolux Lampung, WIPO Case No. D2016-2416, WIPO Overview 3.0, section 2.8).

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As per Complaint, Complainant’s HEETS trademark is well-known for tobacco related products. Furthermore HEETS is a fictitious word. Because the HEETS mark had been widely used and registered at the time of the Domain Name registration by Complainant, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

Furthermore, the Domain Name incorporates in whole Complainant’s mark plus the additional descriptive term “shop” and the non-distinctive geographic term “usa”. Therefore, use of the words “shop” and “usa” creates a likelihood of confusion with Complainant’s mark and business.

As regards bad faith use of the Domain Name, Complainant has demonstrated that the Domain Name was used for the creation of a website, that gives the false impression of being operated by Complainant or an entity affiliated to Complainant or an official dealer of Complainant. This suggestion is further supported by Respondent’s use of Complainant’s official product images, accompanied by the copyright notice “© 2018 heetshop”. The Domain Name therefore operates by intentionally creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the website it resolves to. This can be used in support of bad faith registration and use (Booking.com BV v. Chen Guo Long, WIPO Case No. D2017-0311; Ebel International Limited v. Alan Brashear, WIPO Case No. D2017-0001; Walgreen Co. v. Muhammad Azeem / Wang Zheng, Nicenic International Group Co., Limited, WIPO Case No. D2016-1607; Oculus VR, LLC v. Sean Lin, WIPO Case No. DCO2016-0034 and WIPO Overview 3.0, sections 3.3 and 3.4).

The bad faith use of Respondent is further indicated by the fact that the Website creates the false impression that Complainant offers for sale its HEETS and IQOS products in the United States of America, while Complainant does not currently do so, since, as per Complaint, the granting of the respective license by the United States authorities is pending. This false impression adversely affects the business of Complainant and constitutes a further evidence of bad faith (WIPO Overview 3.0, section 3.12).

The Panel considers the following factors: (i) the reputation of Complainant’s mark, (ii) the failure of Respondent to submit a response and (iii) the implausibility of any good faith use to which the Domain Name may conceivably be put, given that, as Complainant has demonstrated, the Domain Name resolves to a website which gives the false impression that it is operated by Complainant or an official retailer of Complainant and that Complainant has already launched its products in the United States of America.

Under these circumstances and on this record, the Panel finds no good-faith basis for Respondent’s conduct vis-à-vis the Domain Name.

Complainant has established Policy paragraph 4(a)(iii).

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 Domain Name <heetshopusa.com> be transferred to Complainant.

Marina Perraki
Sole Panelist
Date: December 26, 2018