WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Contact Privacy Inc. Customer 0155627093 / Richard Chen, Heat it up

Case No. D2019-2909

1. The Parties

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

The Respondent is Contact Privacy Inc. Customer 0155627093, Canada / Richard Chen, Heat it up, United States of America (“United States or USA”).

2. The Domain Name and Registrar

The disputed domain name <heetshopusa.store> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2019. On November 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 27, 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 November 29, 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 December 2, 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 December 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2020.

The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on January 16, 2020. 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 Philip Morris Products S.A. part of a group of companies affiliated with Philip Morris International Inc. (PMI), an international tobacco company. PMI sells a product branded IQOS, which is a controlled heating device into which specially designed tobacco products under the brand names HEETS or HEATSTICKS are inserted and heated to generate a nicotine-containing aerosol.

In relation to these products the Complainant owns a large portfolio of registered trademarks. Among them are the International Registration HEET (word) No. 1312086 registered on May 17, 2016 designating Albania; Algeria; Armenia; Australia; Azerbaijan; Bahrain; Belarus; Bosnia and Herzegovina; Botswana; China; Colombia; Egypt; Eswatini; Georgia; Ghana; Iceland; India; Israel; Japan; Kenya; Kyrgyzstan; Liechtenstein; Mexico; Moldova; Monaco; Montenegro; Morocco; Mozambique; Namibia; New Zealand; North Macedonia; Norway; Oman; Organisation Africaine de la Propriété Intellectuelle (“OAPI”); Philippines; Republic of Korea; Russian Federation; Serbia; Singapore; Turkey; Turkmenistan; Ukraine; USA: Uzbekistan; Viet Nam;

the International Registration (word HEET/device) No. 1328679 registered on July 20, 2016, designating Albania; Armenia; Australia; Azerbaijan; Bahrain; Belarus; Bosnia and Herzegovina; Botswana; China; Colombia; Curaçao; Egypt; European Union; Georgia; Iceland; India; Israel; Japan; Kenya; Kyrgyzstan; Liechtenstein; Mexico; Moldavia; Monaco; Montenegro; Morocco; Mozambique; New Zealand; North Macedonia; Norway; Oman; OAPI; Philippines; Russian Federation; Republic of Korea; Serbia; Singapore; Turkmenistan; Turkey; Ukraine; USA; Uzbekistan; Viet Nam;

and the International Registration HEETS (word) No. 1326410 registered on July 19, 2016, designating Albania; Armenia; Australia; Azerbaijan; Bahrain; Belarus; Bosnia and Herzegovina; Botswana; China; Colombia; Curaçao; Egypt; European Union; Georgia; Iceland; India; Israel; Japan; Kenya; Kyrgyzstan; Liechtenstein; Mexico; Moldova; Monaco; Montenegro; Morocco; Mozambique; New Zealand; North Macedonia; Norway; OAPI; Russian Federation; Philippines; Republic of Korea; Serbia; Singapore; Oman; Turkmenistan; Turkey; Ukraine; USA; Uzbekistan; and Viet Nam.

Upon request the Respondent’s identity was disclosed by the Registrar as being Richard Chen. The disputed domain name is used in relation to an unauthorised website purporting to sell the Complainant’s products.

The disputed domain name was registered on September 3, 2019.

5. Parties’ Contentions

A. Complainant

The Respondent, as at November 27, 2019, was a privacy registration service provider, according to the Complainant acting commercially as a front company for domain registrants by appearing as the domain registrant itself. The identity of the real owner was revealed by the Registrar upon request to be Richard Chen. According to the Complainant, the Respondent is not known or in any way related to the Complainant or any PMI affiliate and is not authorized to use the HEET and HEETS trademarks.

The Complainant points out that the disputed domain name is linked to an online shop at “www.heetshopusa.store” allegedly selling and offering the Complainant’s IQOS System. The relevant website is in English and has prices in USD, and indicates that “All products are shipped within US” which indicates that the website is directed to the United States. The Complainant cannot say for sure whether the products offered are genuine IQOS Systems. However, the Complainant points out that its HEETS sticks and IQOS 3.0 and IQOS Multi devices are not currently authorized for sale or marketing in the United States – therefore, the Respondent’s sale of IQOS 3 and IQOS Multi devices, and HEETS sticks into the United States is illegal.

Notwithstanding this, the Complainant asserts that the relevant website purports to be an official online retailer of the Complainant’s IQOS System in the United States by using the Complainant’s HEET and HEETS trademarks together with the non-distinctive and descriptive word “shop” and geographical abbreviation for the United States, in the disputed domain name. The website concerned also prominently displays the Complainant’s registered HEET, HEETS and three horizontal bar device mark trademarks at the top, being a location where consumers usually expect to find the name of the online shop and/or the name of the provider of the website. The Complainant submits that any consumer being confronted with the disputed domain name and the website to which it resolves will usually expect to find the name of the online shop and/or the name of the provider of the website.

The Complainant also points out that a number of the Complainant’s official product images appear on the relevant website without the Complainant’s authorization, while at the same time providing a copyright notice claiming copyright in the material presented and thereby strengthening the false impression of an affiliation with the Complainant. The relevant website does not display any details regarding its provider nor does it acknowledge the Complainant as the real brand owner of the IQOS System, leaving the Internet user under the false impression that the online shop provided is that of the Complainant or that it is connected to that of the Complainant or one of its official distributors, which it is not.

The Complainant also says that the Respondent Richard Chen, was the respondent in another UDRP complaint filed by the Complainant against the bad faith registration and use of the domain name <heetshopusa.com>. The domain name <heetshopusa.com> and related website are said by the Complainant to be almost identical to the present disputed domain name and connected website. The Panel decision in Philip Morris Products S.A. v. Richard Chen, heatshop, WIPO Case No. D2018-2537, ordered the transfer of the domain name <heetshopusa.com> to the Complainant.

According to the Complainant, the trademark HEET is recognizable within the disputed domain name, which is all that is required. It is also well established that the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. The Complainant maintains that any Internet user when visiting a website provided under the disputed domain name <heetshopusa.store> will reasonably expect to find a website commercially linked to the owner of the HEET and HEETS trademarks.

The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its HEET and HEETS trademarks (or a domain name which will be associated with this trademark). The Complainant also asserts 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, with a view to misleadingly divert consumers or to tarnish the trademarks owned by the Complainant. Firstly, the Respondent is not an authorized distributor or reseller of the IQOS System. Secondly, so the Complainant asserts, the relevant website does not meet the requirements set out by numerous UDRP panel decisions for a bona fide offering of goods. The Complainant points out that it is a common principle derived from Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 that the use of a domain name cannot be “fair” if it suggests affiliation with the trademark owner (pointing to AB Electrolux v. Handi Sofian, Service Electrolux Lampung, WIPO Case No. D2016-2416 regarding <serviceelectroluxlampung.com>). In the present case, the Complainant contends that the disputed domain name itself suggests at least an affiliation with the Complainant and its HEET and HEETS trademarks, as the disputed domain name wholly reproduces the Complainant’s registered HEET and HEETS trademarks together with the non-distinctive and descriptive word “shop” and geographical abbreviation for the United States. The Complainant further reiterates that the relevant website uses the Complainant’s official product images without authorization; includes no information regarding the identity of its provider which is only misleadingly identified as “HeetShop”; and that the Complainant does not currently offer for sale its IQOS 3.0, IQOS Multi devices and HEETS sticks given they have not yet been authorized for sale in the United States by the Food and Drug Administration (“FDA).

The Complainant submits that it is evident from all the above that the Respondent knew of the Complainant’s HEET and HEETS trademarks when registering the disputed domain name. The Respondent started offering the Complainant’s IQOS System immediately after registering it and HEET and HEETS are purely imaginative terms unique to the Complainant. The terms HEET and HEETS are not commonly used to refer to tobacco products. By reproducing the Complainant’s registered trademark in the disputed domain name itself and the title of the connected website, the Respondent falsely suggests the Complainant or an affiliated dealer of the Complainant as its source. This false suggestion is further reinforced by the use of the Complainant’s official product images, accompanied by a copyright notice claiming copyright for the website and its contents. According to the Complainant, 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 products or IQOS 3.0 and IQOS Multi devices in the United States, so that the Respondent creates the false impression that the Complainant has officially introduced its IQOS 3.0 and IQOS Multi devices, and HEETS sticks into the United States market – which it has not.

Finally, the Complainant asserts that the fact that Respondent is using a privacy protection service to hide its true identity may in itself constitute a factor indicating bad faith (referring to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition “WIPO Overview 3.0”, section 3.6).

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name is not identical to the Complainant’s HEET trademark. However, that distinctive mark is readily recognizable within it. The addition of dictionary terms has no relevant effect in this regard.

Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s HEET trademark.

B. Rights or Legitimate Interests

The Respondent has not been authorized to use the HEET trademark of the Complainant in any way. It is not an official distributor of the relevant products, which are in any case in part not authorized for sale in the United States. The website to which the disputed domain name refers incorporates various elements in which the Complainant has proprietary interests, including trademarks and copyrighted images, their use being entirely unauthorized. This generates a false suggestion of legitimate or official connection with the Complainant. This type of activity does not give rise to rights or legitimate interests, and in this case there is clearly no possibility that the Respondent is merely an innocent reseller of legitimate products of the Complainant.

Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

It is apparent from the composition of the disputed domain name itself and the get-up of the linked website, that the Respondent was fully aware of the Complainant’s trademarks and its exclusive right to use those marks for the relevant products. The Respondent uses the Complainant’s registered trademarks not only in the disputed domain name, but also on the website to which it resolves, where they are reproduced. The Respondent also included images of the Complainant’s products that it had no legal right or authority to employ. The relevant website was so structured and signposted as to give a false suggestion of association with the Complainant or some official status in relation to it. The Respondent purported to offer goods for sale which were not even cleared for supply in the United States, and that in a manner directed at consumers within that jurisdiction. The Respondent also used a privacy shield and did not respond to the Complaint.

Therefore the Panel holds that the disputed domain name was registered and used 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 <heetshopusa.store> be transferred to the Complainant.

William A. Van Caenegem
Sole Panelist
Date: January 29, 2020