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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Vadim Kirichenko, CPMgo Inc.

Case No. D2019-2459

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Vadim Kirichenko, CPMgo Inc., Canada.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2019. On October 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 9, 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 October 15, 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 amendment to the Complaint on October 16, 2019.

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 the Respondent of the Complaint, and the proceedings commenced on October 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2019.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on November 21, 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 is part of the group of companies affiliated with Philip Morris International Inc. (“PMI”). PMI is a leading international tobacco company, with products sold in more than 180 countries.

PMI has developed IQOS. IQOS is a controlled heating device into which specially designed tobacco products under the brand names HEETS and HEATSTICKS are inserted and heated to generate flavorful nicotine-containing aerosol. The IQOS products were first launched in Nagoya, Japan, in 2014. To date, the IQOS products are available in 44 markets across the world. The IQOS products are almost exclusively distributed through PMI’s official stores and websites as well as authorized distributors and retailers.

The Complainant is the owner of the following registrations, among others:

- United States of America (“United States”) trademark Registration HEATSTICKS (word) Registration No. 4758618, registered on June 23, 2015; and

- International Registration HEETS (and Design), Registration No. 1328679, registered on July 20, 2016; and

- International Registration HEET, Registration No. 1312086, registered on May 17, 2016.

The Disputed Domain Name <onlineheatstore.com> was registered on June 4, 2019.

The Disputed Domain Name resolves to an online shop where products of the Complainant IQOS System are available, targeting and addressing the United States public.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

Identical or confusingly similar

The Complainant states that the Disputed Domain Name is confusingly similar to the HEET, HEETS and HEATSTICKS trademark registrations, since the Disputed Domain Name consists of the indicative term HEAT and the descriptive indications “online” and “store” as well as the generic Top-Level Domain (“gTLD”) “.com”.

The Complainant further submits that the Disputed Domain Name adopts the indicative term HEAT of the Complainant’s HEATSTICKS trademark, positioned in the middle of the descriptive terms “online” and “store”. The Complainant states that the term “heats” or “heat” is not commonly used to describe tobacco products.

In addition, the term HEAT in the Disputed Domain Name is phonetically similar to the Complainant’s HEET and HEETS trademarks. Thus, the Disputed Domain Name may also serve to divert traffic away from the Complainant, as the result of a misspelling of the Complainant’s HHET and HEETS trademarks.

Finally, the Complainant submits that when visiting the website provided under the Disputed Domain Name a legal age smoker will reasonably expect to find a website commercially linked to the owner of the HEET, HEETS and HEATSTICKS trademarks.

Rights or legitimate interests

The Complainant alleges that the Respondent lacks rights and legitimate interests in the Disputed Domain Name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the Disputed Domain Name incorporating its trademark.

The Complainant further states that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, the Respondent’s behavior shows a clear intent to obtain an unfair commercial gain.

Moreover, the Respondent is using the Complainant’s official product images and marketing materials on the website at the Disputed Domain Name without the Complainant’s authorization. Furthermore, the Respondent is not an authorized distributor or reseller of the IQOS System.

In addition, the website linked to the Disputed Domain Name does not include nor reveal the identity of the website provider, leaving the consumers under the false impression that the website is provided by the Complainant or by official dealers. Moreover, on the website of the Disputed Domain Name, the disclaimer is positioned at the bottom of the website and hidden behind a long text. Thus, consumers might well order products in the online shop on the website without encountering the disclaimer.

Finally, the Complainant does not currently offer for sale of its HEETS sticks and IQOS 3.0 devices, given that they have not been authorized for sale in the United States by the Food and Drug Administration (“FDA”).

Registration and use in bad faith

The Complainant submits that the Respondent knew of the Complainant’s HEET, HEETS and HEATSTICKS trademarks when registering the Disputed Domain Name. The Respondent started offering the Complainant’s HEETS products immediately after registering the Disputed Domain Name and indicates the website provider as “HEETS Shop”. Furthermore, the terms HEET, HEETS and HEATSTICKS are a solely imaginative term without inherent meaning.

In addition, it is clear that the Respondent registered and used the Disputed Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademark.

Finally, the Complainant submits that the illegitimacy of the Respondent’s use of the Disputed Domain Name is further amplified by the fact that the Complainant does not currently offer for sale its HEETS sticks in the United States.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case:

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

(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

Based on the evidence submitted, the Panel finds that the Disputed Domain Name <onlineheatstore.com > is confusingly similar to the Complaint’s trademarks. Furthermore, the Panel is of the view that the dominant element “heat” of the Complainant’s HEATSTICKS trademark is incorporated as the second element in the Disputed Domain Name after the term “online” and before the term “store”. In addition, the Panel notes the similarity between the element “heat” and the HEET trademark.

Finally, neither the gTLD “.com” nor the terms “online” or “store” are of any significance to the present assessment of confusing similarity.

Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:

(i) Before any notice to you of the dispute, your use of, 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 at issue.

There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark. The Complainant has (prior) rights in the trademark which precede the Respondent’s registration of the Disputed Domain Name.

The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods or services.

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contention.

In addition, the Panel finds that the similarity of the Disputed Domain Name with the Complainant’s HEATSTICKS and HEET trademarks coupled with the website at the Disputed Domain Name carries a risk of association or affiliation with the Complainant’s trademark which is not avoided by the disclaimer.

As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

The Disputed Domain Name was registered in 2019 several years after the Complainant registered its trademarks. The fact that the Respondent started offering the Complainant’s products at its website immediately after registering the Disputed Domain Name clearly demonstrates that the Respondent was aware of the Complainant’s HEETS sticks and IQOS System when registering the Disputed Domain Name.

Furthermore, the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the Disputed Domain Name incorporating its trademarks. Neither the Respondent is an authorized reseller of the Complainant’s product. In addition, the Complainant’s HEETS sticks and IQOS System are not authorized for sale or marketing in the United States. Consequently the Respondent’s sale of these products in the United States is clearly not authorized and is disrupting the Complainant’s business.

In addition, the Complainant submitted evidence that the Respondent’s website creates an impression that the online shop is an official dealer of the Complainant’s products in the United States. Thus, Internet users might have well been under the impression that it is a website created and operated by a distributor or reseller of the Complainant with the Complainant’s consent.

Moreover, the Panel notes that the website linked to the Disputed Domain Name includes a disclaimer. However, this cannot rectify the Respondent’s bad faith from providing the Complainants products without the Complainant’s authorization. Besides, such disclaimer is not displayed in a clear and sufficiently prominent way. On the contrary, the disclaimer only denotes that the Respondent was well aware of the risk of confusion by Internet users (See section 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The circumstances in the case before the Panel indicate that the Respondent was aware of the Complainant’s trademarks when registering the Disputed Domain Name and it has created a likelihood of confusion with the Complaint’s trademarks and website in order to attract Internet users for its own commercial gain.

Due to this conduct, it is obvious that the Respondent intentionally created likelihood of confusion with the Complainant’s trademarks and website in order to attract Internet users for its own commercial gain, as required by paragraph 4(b)(iv) of the Policy.

Therefore, taking all circumstances into account and for all above reasons, the Panel concludes that the Respondent has registered and used the Disputed Domain Name in bad faith.

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 <onlineheatstore.com> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: December 4, 2019

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