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 / ?zg?r Ceridi, Turkey.
The disputed domain name <heetssigara.com> (the “Domain Name”), is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2020. On October 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 21, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 23, 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 October 26, 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 October 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 18, 2020.
The Center appointed Tony Willoughby as the sole panelist in this matter on December 2, 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 invitation to the Complainant to file an amended Complaint stemmed from the fact that the Domain Name was registered in the name of a privacy service. In response to the Center’s registrar verification request, the Registrar disclosed the name and address of the entity in whose name the Domain Name had been registered. The amended Complaint adds as an additional respondent the name of the underlying registrant. References in this decision to the Respondent are references to ?zg?r Ceridi, the underlying registrant.
The Complainant is a member of the group of companies headed by Philip Morris International Inc., a leading international tobacco company. In addition to its core business of production and sale of combustible cigarettes the Complainant has since 2014 included the production and sale of non-combustible alternatives, which it markets under the trade marks IQOS and HEETS.
The Complainant is the registered proprietor of numerous trade mark registrations covering these trade marks. For present purposes it is only necessary to detail two of those registrations, namely:
International Registration No. 1326410 HEETS (word) registered on July 19, 2016 for a variety of tobacco-related goods in classes 9, 11 and 34. Turkey, the Respondent’s home jurisdiction, is designated as one of the countries covered by the registration.
International Registration No. 1328679 HEETS (word/device) registered on July 20, 2016 for a variety of tobacco-related goods in classes 9, 11 and 34. Turkey, the Respondent’s home jurisdiction, is designated as one of the countries covered by the registration.
The Domain Name was registered on April 19, 2018 and is connected to a Turkish language online shop offering for sale the Complainant’s IQOS HEETS products along with the competing products of another manufacturer. At top left on the home page is the Domain Name written in a stylised form incorporating a replica of the HEETS logo, the subject of International Registration No. 1328679 above. The prices for the products offered on the website are quoted in Turkish lira. The stylized form of the Domain Name features prominently at the top and bottom of many of the pages on the website.
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s HEETS trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the 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.
The Domain Name comprises the name “heets”, the word “sigara” (meaning “cigarette” in Turkish) and the generic Top-Level Domain (“gTLD”) “.com” identifier.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage:
“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
The Complainant’s HEETS trade mark is readily recognizable in its entirety in the Domain Name. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
The Complainant states that it has not authorized the use of its HEETS trade mark by the Respondent and does not in fact supply its IQOS HEETS products for sale in Turkey.
The Complainant objects to the Respondent’s use of the Domain Name on several grounds. First, it contends that the Domain Name, featuring as it does the HEETS brand name and the word “sigara”, the Turkish word for cigarette, is likely to be taken as a domain name of or authorized by the Complainant. It is not a domain name of or authorized by the Complainant. Secondly, the website appears to contain no indication as to the identity of the entity operating the website. The only name appearing on the webpages where one might expect to find the name of the operator, whether at the top of the page or the bottom, is the Domain Name written in stylized form and incorporating a replica of the HEETS device covered by International Registration No. 1328679, details of which are to be found in section 4 above. The Complainant contends that that fact in itself is likely to indicate that the website is a website of or authorized by the Complainant. At all events there is nothing on the website to indicate the contrary. Finally, the website offers for sale not only the Complainant’s products, but competing products. While that might indicate to an alert visitor that the website is not a website of or authorized by the Complainant, it might very well indicate that both ranges are products of the Complainant, when they are not.
In certain circumstances, the use by a reseller of a third party’s trade mark may be justified. In the domain name context the issue is addressed in section 2.8.1 of WIPO Overview 3.0:
“Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’ [a test derived from the decision in Oki Data Americas, Inc. v. Asdinc.com, WIPO Case No. D2001-0903], the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(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.
The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.”
The Respondent’s website fails the test on two grounds: (1) the Respondent is not using the website to sell ONLY the Complainant’s goods; and (2) there is nothing on the website to indicate accurately and prominently that the Respondent has no relationship with the Complainant.
The Respondent has not sought to challenge the Complainant’s evidence or to provide an explanation. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Domain Name, featuring as it does no more than the Complainant’s HEETS registered trade mark and the word “sigara” (“cigarette” in English) is likely, in the view of the Panel, to lead Internet users to believe that the Domain Name is a domain name of or authorized by the Complainant. The website features no explanation as to who is operating it. In the absence of any such indication, it is likely in the view of the Panel that Internet users will view the website as a website of or authorized by the Complainant and will trade with the Respondent through the website in the mistaken belief that they are dealing with the Complainant or an authorized agent of the Complainant. They will be deceived. The use of the Domain Name making prominent use of the Complainant’s HEETS trade mark to sell products competing with those of the Complainant is, in the view of the Panel, inexcusable.
Paragraph 4(b)(iv) of the Policy provides that a circumstance leading to a finding of bad faith registration and use under the Policy is where the Respondent has used the Domain Name intentionally to attract Internet users to the Respondent’s website for commercial gain “by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of [the] website …”.
The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
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, <heetssigara.com>, be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: December 9, 2020