The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Domains By Proxy, LLC, United States of America (“United States”) / Aramayis Martirosyan, United Arab Emirates.
The disputed domain name <heetsdeliverydubai.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2020. On June 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 2020, 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 June 29, 2020 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 June 30, 2020.
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 July 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2020.
The Center appointed Jane Lambert as the sole panelist in this matter on August 7, 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.
The Complainant is part of a group of companies affiliated to Philip Morris International Inc. (“PMI”), a leading international tobacco company with products sold in approximately 180 countries. PMI is changing its business model from combustible cigarettes to reduced risk products (“RRP”). One of those RRP is called “IQOS”. It is a precisely controlled heating device into which specially designed tobacco products under the brand names “HEETS” or “HeatSticks” are inserted to generate a flavourful nicotine-containing aerosol.
As a result of a USD 6 billion investment and extensive international sales and marketing efforts, the IQOS System has achieved considerable success. Over 10 million consumers around the world have converted to the IQOS System. The IQOS System has been almost exclusively distributed through official IQOS stores and websites and selected authorized distributors and retailers. For those new products, the Complainant has registered a number of new trade marks in the United Arab Emirates including the word HEETS which was registered under trade mark number 256864 on December 25, 2017. Copies of those registrations are annexed to the Complaint.
The first Respondent is a privacy service while the second Respondent is the underlying registrant of the disputed domain name, as confirmed by the Registrar. The Panel’s below findings regarding the Respondent will be in reference to the second Respondent, unless stated otherwise. The Complainant makes clear that it has no connection with the Respondent and that it has neither licensed nor allowed it to do any of the acts complained of.
The disputed domain name was registered on May 12, 2020. The disputed domain name has been incorporated into the URL “https://heetsdeliverydubai.com/”. When typed into a browser, that URL leads to a website, screen images of which are annexed to the Complaint. It appears from those images that the site offers RRP under the Complainant’s trade marks mentioned above. A number of photographs appear on the site, the copyrights of which are claimed by the Complainant. According to the Complainant, neither the trade marks nor the photographs were reproduced with its consent.
The Complainant requests the transfer of the disputed domain name on the following grounds:
- the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
As to the first ground, the Complainant refers to its registration of the word HEETS as a trade mark in the United Arab Emirates. The Respondent has incorporated the Complainant’s trade mark into the disputed domain name together with the words “delivery” and “dubai” and the generic Top-Level Domain (“gTLD”) “.com”. The Complainant submits that any Internet user will reasonably expect to find a website commercially linked to the owner of the HEETS trade mark.
As to the second ground, the Complainant says that it has made a prima facie case that the Respondent lacks any rights or legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trade marks or to register a domain name incorporating its HEETS trade mark (or a domain name which will be associated with that trade mark). It adds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
As to the third ground, the Complainant contends that the registration of a domain name that incorporates the trade mark of an increasingly popular product of a large multinational company ought to be sufficient in itself to justify a finding of registration and use in bad faith. Moreover, the Respondent used the disputed domain name to attract, for commercial gain, internet users to his website by creating a likelihood of confusion with the Complainant’s registered HEETS trade mark 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. The Respondent is also passing himself off as an authorized distributor of PMI products and infringing the Complainant’s trade marks by marketing and supplying goods made by third parties under the Complainant’s marks.
The Respondent did not reply to the Complainant’s contentions.
The Agreement for the registration of the disputed domain name incorporated paragraph 4 (a) of the Policy:
“Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.”
The Panel finds that the first element is present.
The Complainant is the registered proprietor of the mark HEETS which was registered in the United Arab Emirates under trade mark number 256864 on December 25, 2017. The disputed domain name incorporates that mark and combines it with the words “delivery” and “dubai”. The incorporation of the mark renders the disputed domain name similar to the mark and the addition of the other words does not prevent a finding of confusing similarity. It follows that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
The Panel finds that the second element is present.
The second paragraph of section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) offers the following guidance:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has stated that it has no connection with the Respondent and that it has never licensed him to register the disputed domain name. It has considered the circumstances in paragraph 4(c) of the Policy that might demonstrate that the Respondent has rights or legitimate interests in the disputed domain name and explained why none of those circumstances applies.
Should there be any justification for the registration of the disputed domain name it was up to the Respondent to explain what it is, noting the Complainant’s prima facie case. The Respondent has had ample opportunity to respond to the Complaint but has not done so. As the Respondent has not discharged the evidential burden, it follows that the Complainant is deemed to have satisfied the second element.
The Panel finds the third element is present.
Paragraph 4(b) of the Policy lists a number of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth of those circumstances is as follows:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds that the incorporation of the Complainant’s mark in the disputed domain name renders the disputed domain name similar to the mark, and that the addition of the other words leads members of the public to believe incorrectly that the site is an authorized online distributor of PMI’s RRP. The disputed domain name has been used as a URL for a website where RRP are offered for sale. That clearly constitutes an attempt to attract Internet users to a website for commercial gain. The fourth of the circumstances in paragraph 4(b) of the Policy has been proved.
That is enough to dispose of these proceedings but, out of deference to the Complainant’s other submissions, the Panel agrees that the registration of a domain name that incorporates the trade mark of an increasingly popular product of a large multinational company is further evidence of bad faith in the circumstances of this case. So, too, is the misrepresentation that the Respondent’s website is an authorized distributor of the Complainant’s products and the unauthorized reproduction on the site of the Complainant’s trade marks and photographs.
Noting the above circumstances, it follows that the Respondent registered and is using the disputed domain name in bad faith.
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 <heetsdeliverydubai.com> be transferred to the Complainant.
Jane Lambert
Sole Panelist
Date: August 22, 2020