WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Jonas Paulauskas

Case No. D2019-3076

1. The Parties

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

The Respondent is J.P., Lithuania.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2019. On December 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 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 December 17, 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 18, 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 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2020.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on January 15, 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 has submitted evidence that it is the owner of a large number of trademark registrations in numerous countries, including the following:

HEETS (word/device), International Registration No. 1328679 registered on July 20, 2016, designating the European Union, Norway and a large number of countries.

HEETS (word), International Registration No. 1326410 registered on July 19, 2016, designating the European Union, Norway and a large number of countries.

IQOS (word), International Registration No. 1218246 registered on July 10, 2014, designating the European Union and a large number of countries.

IQOS (device), International Registration No. 1338099 registered on November 22, 2016, designating the European Union, Norway and a large number of countries.

The disputed domain name <heetsnorge.com> was registered by the Respondent on October 27, 2019.

5. Parties’ Contentions

A. Complainant

The Complainant, Philip Morris Products S.A., is a company which is part of the group of companies affiliated to Philip Morris International Inc. (jointly referred to as “PMI”). PMI is a leading international tobacco company with products sold in approximately 180 countries. PMI’s brand portfolio contains brands like MARLBORO.

PMI is known for innovating across its brand portfolio. 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 versus continued smoking), PMI has developed a number of RRP-products. One of these RRPs developed and sold by PMI is called IQOS. IQOS is a precisely controlled heating device into which specially designed tobacco products under the brand names “HEETS” or “HeatSticks” are inserted and heated to generate a flavorful nicotine-containing aerosol. The IQOS system also consists of an IQOS Pocket Charger, specially designed to charge the IQOS Holder (collectively referred to as the IQOS System). The IQOS System was first launched by PMI in Nagoya, Japan in 2014 and has obtained 18.3 per cent share of the market in Japan. Today the IQOS System is available in key cities in around 51 markets across the world. As a result of a USD 6 billion investment and extensive international sales and marketing efforts (in accordance with local laws), the IQOS System has achieved considerable international success and reputation, and approximately 8 million relevant consumers have converted to the IQOS System worldwide. To date, the IQOS System has been almost exclusively distributed through PMI’s official IQOS stores and websites and selected authorized distributors and retailers.

For its new innovative smoke-free products the Complainant owns a large portfolio of well-known trademarks, including HEETS and IQOS.

The Respondent, as at December 6, 2019, according to the Whois information appears to be a private registration and the identity of the real owner and operator of the disputed domain <heetsnorge.co> is concealed and cannot be revealed to third parties, such as 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 HEETS trademarks. The disputed domain name is linked to an online shop allegedly selling and offering the Complainant’s IQOS System. The Respondent’s website is provided in English. The fact that the website is presenting the designation “We sell IQOS and Heets products in Scandinavia – Norway, Sweden, Denmark and Finland”, clearly indicates that the website is directed to Scandinavia (Denmark, Norway and Sweden) and/or the Nordic countries (Denmark, Norway, Sweden and Finland).

Importantly however, the Complainant’s IQOS System is not currently sold in all the aforementioned Scandinavian territories or the Nordic countries. Notwithstanding the Respondent’s website is clearly purporting to be an official online retailer of the Complainant’s IQOS System in all Scandinavia and/or the Nordic countries by using the Complainant’s HEETS trademark in the disputed domain name together with the non-distinctive geographical indication “Norge” (meaning Norway in Norwegian).

The Respondent’s website is prominently using the Complainant’s registered HEETS and IQOS trademarks within the website banner being a location where Internet users usually expect to find the name of the online shop and/or the name of the provider of the website.

The website is further using a number of the Complainant’s official product images without the Complainant’s authorization, while at the same time providing a copyright notice at the bottom of the website claiming copyright in the material presented on the website and thereby strengthening the false impression of an affiliation with the Complainant.

The website does not show any details regarding the provider of the website 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 under the website, 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. Importantly, the provider of the website is using the Complainant’s HEETS trademark in its name in circumstances where the provider of the website is not known to the Complainant, nor is it authorized to use the Complainant’s HEETS trademarks.

The Complainant is the registered owner of the HEETS trademark in numerous jurisdictions, including, but not limited to the European Community and Norway. It is 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 disputed domain name <heetsnorge.com> reproduces the HEETS trademark in its entirety, in addition to the nondistinctive geographical indication “Norge” (meaning Norway in Norwegian). Any Internet user when visiting a website provided under the disputed domain name <heetsnorge.com> will reasonably expect to find a website commercially linked to the owner of the HEETS trademarks. This unlawful association is exacerbated by the use of the Complainant’s official product images without the Complainant’s authorization.

The Complainant has made a prima facie case that the Respondent lacks any right or legitimate interest in the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its HEETS trademark.

The Respondent is not making a legitimate non-commercial 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 diverting 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, the website provided under the disputed domain name does not meet the requirements set out by numerous panel decisions for a bona fide offering of goods.

A reseller or distributor can be making a bona fide offering of goods or services and thus have a legitimate interest in the domain name at issue only if certain requirements are met. The leading case on this point is Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The Panel in Oki Data concluded that the use of a manufacturer’s trademark as a domain name by a reseller could be deemed a “bona fide offering of goods or services” within the meaning of the Policy only if the following conditions are satisfied:

a) the Respondent must use the site to sell only the trademarked goods;
b) the site itself must accurately disclose the Respondent’s relationship with the trademark owner; and
c) the Respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

It is a common principle in all cases regarding the Oki Data scenario that the use of a domain name cannot be “fair” if it suggests affiliation with the trademark owner. In the present case, the disputed domain name in itself suggests at least an affiliation with the Complainant and its HEETS trademark, as the disputed domain name wholly reproduces the Complainant’s registered HEETS trademark together with the non-distinctive geographical indication “Norge” (meaning Norway in Norwegian).

In addition, the owner / administrator of the website, prominently and without authorization presents the Complainant’s registered HEETS and IQOS trademarks within the website banner, where relevant consumers will usually expect to find the name of the online shop and/or the name of the website provider.

The website further uses the Complainant’s official product images without authorization, while at the same time falsely claiming copyright in this material. This illegitimate and false claim of rights in the Complainant’s official copyright protected material further supports the false impression, that the website is endorsed by the Complainant, which it is not.

The website includes no information regarding the identity of the provider of the website, which is only identified as <heets-iqos.eu> on the website, being a name which similarly includes the Complainant’s registered HEETS trademark without authorization and further serves to perpetuate the false impression of an official commercial relationship between the website and the Complainant. As the Complainant’s IQOS System is primarily distributed through official / endorsed stores, in this case Internet users are clearly misled regarding the relationship between the website and the Complainant, and will falsely believe the website under the disputed domain name to be an official / endorsed distributor.

The illegitimacy of the Respondent’s use of the disputed domain name is further shown by the fact that the Complainant does not currently offer for sale its IQOS System in all the Scandinavian territories and/or the Nordic countries, and the online shop provided under the disputed domain name creates the false impression that the Complainant has officially introduced the IQOS System into all Scandinavian and/or the abovementioned Nordic market. Such use of the disputed domain name cannot be considered a bona fide offering of goods and does not establish a legitimate interest on behalf of the Respondent.

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. The Respondent started offering the Complainant’s IQOS System immediately after registering the disputed domain name. Furthermore, the term HEETS is purely an imaginative term and unique to the Complainant. The term HEETS is not commonly used to refer to tobacco products. It is therefore beyond the realm of reasonable coincidence that the Respondent chose the disputed domain name, without the intention of invoking a misleading association with the Complainant. It is also evident from the Respondent’s use of the disputed domain name 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 registered HEETS trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

By reproducing the Complainant’s registered trademark in the disputed domain name and the title of the website, the Respondent’s website clearly suggests the Complainant or an affiliated dealer of the Complainant as the source of the website, which it is not. This suggestion is further supported by the Respondent’s use of the Complainant’s official product images, accompanied by a copyright notice claiming the copyright for the website and its contents. Finally, the fact that the Respondent is using a privacy protection service to hide its true identity may in itself constitute a factor indicating bad faith.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of the registered trademark HEETS. The disputed domain name <heetsnorge.com> incorporates the HEETS trademark in its entirety with the addition of the geographic location “Norge” (meaning the country Norway in Norwegian). The ability for a geographic location, such as “Norge”, to distinguish the disputed domain name from the trademark of the Complainant is limited. In the present case, the Complainant’s trademark is readily recognizable in the disputed domain name.

Having the above in mind, the Panel concludes that the disputed domain name <heetsnorge.com> is confusingly similar to the Complainant’s trademark HEETS and that the Complainant has proven the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) that the Respondent uses or has made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute; or

(ii) that the Respondent is commonly known by the disputed domain name, even if the Respondent has not acquired any trademark rights; or

(iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Complainant’s trademark registrations for HEETS predate the Respondent’s registration of the disputed domain name <heetsnorge.com>. The Complainant has not licensed, approved or in any way consented to the Respondent’s registration and use of the trademark in the disputed domain name.

From the evidence in the case, it is clear that the Respondent’s commercial website, to which the disputed domain name resolves, contains direct references to the Complainant’s products and HEETS trademark. The evidence indicates that the Respondent has attempted to create an impression of an official commercial relationship between the Respondent and the Complainant by copying and reproducing not only the Complainant’s trademarks HEETS and IQOS but also the Complainant’s official product images.

Given the above, the Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

Although given the opportunity, the Respondent has not rebutted the Complainant’s prima facie case. The Respondent has not submitted any evidence in this case to demonstrate that the Respondent is the owner of any trademark rights similar to the disputed domain name or that the Respondent is or has been commonly known by the disputed domain name.

By not submitting a response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:

(i) circumstances indicating the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or

(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding disputed domain name, provided there is a pattern of such conduct; or

(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the disputed domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.

The Complainant has submitted evidence demonstrating that the Respondent is using the Complainant’s trademarks and official product images in order to create a false impression that the disputed domain name <heetsnorge.com> and the website, to which the disputed domain name resolves, are endorsed by the Complainant.

By using the disputed domain name in combination with the Complainant’s trademarks and official marketing material, there is an increased risk of confusion as Internet users may more easily be confused or misled into believing that the disputed domain name and website belong to or are in some way associated with the Complainant.

Considering that the Respondent is reproducing the Complainant’s trademarks and advertising material without permission and that the disputed domain name is used to market the very same type of products for which the HEETS trademark is registered, the Panel finds, in the absence of contrary evidence, that the Respondent knew or should have known of the Complainant’s trademark at the time the Respondent registered and used the disputed domain name.

Thus, the evidence in the case before the Panel indicates that the disputed domain name <heetsnorge.com> has intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark HEETS as to the source, sponsorship, affiliation, or endorsement of the websites or of a product or service on the website.

There is no evidence in the case that refutes the Complainant’s submissions.

The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain name <heetsnorge.com> has been registered and is being 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 <heetsnorge.com> be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist
Date: January 19, 2020