WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Adeel Ghaniani

Case No. D2021-0142

1. The Parties

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

Respondent is Adeel Ghaniani, United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name <heetsy.com> (the “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 January 19, 2021. On January 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 19, 2021, 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 Complainant on January 21, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 21, 2021.

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 Respondent of the Complaint, and the proceedings commenced on January 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2021. The Center received an email communication from a third party on January 26, 2021, stating that he had received the Written Notice but the name, email address and phone number are incorrect in the Written Notice, nevertheless the postal address is related to his old office address. The Center received another email communication from this third party on January 30, 2021, stating that he does not own the email address listed in the Written Notice, and he does not own the disputed domain name. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 15, 2021.

The Center appointed Marina Perraki as the sole panelist in this matter on February 22, 2021. 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

According to the Complaint, Complainant is part of the Philip Morris International Inc. group of companies (“PMI group”), active in the tobacco industry, with products sold in approximately 180 countries. PMI group has been transforming its business from combustible cigarettes to other smoking products, one of which, developed and sold by PMI group, is the tobacco heating system branded as IQOS. The IQOS system consists of three components, the IQOS holder, the heated tobacco units sold under the names “Heets” and “HeatSticks”, which are inserted into the IQOS holder, and an IQOS Pocket Charger, used to charge the IQOS Holder (together “the IQOS Products”). The IQOS Products were first launched by PMI group in 2014. Today the IQOS Products are available in approximately 61 markets across the world. Per Complainant, PMI group has invested over USD 6 billion to market the IQOS Products and as a result each of the IQOS Products has gained considerable international reputation, with almost 16.4 million users. Per Complaint, the IQOS Products have been almost exclusively distributed through PMI group’s official IQOS stores and websites and selected authorized distributors and retailers.

Complainant is the owner of numerous HEETS trademark registrations. These include:

- United Arab Emirates trademark registration HEETS (word) No. 256864, registered on December 25, 2017 for goods in International class 34; and

- United Arab Emirates trademark registration HEETS (word/device) No. 256867, registered on December 25, 2017 for goods in International class 34.

The Domain Name was registered on December 20, 2020 and at the time of filing of the Complaint resolved to a website (the “Website”) which was an online shop, allegedly selling and offering Complainant’s IQOS System, as well as third party products. The Website prominently displayed Complainant’s registered logos and trademarks at the top of the Website and other locations where users usually expect to find the name of the online shop and/or the name of the provider of the Website. The Website displayed a number of Complainant’s official product images and included a hardly visible, vague and general disclaimer at the bottom of the Website stating: “All product names, logos, brands, trademarks and registered trademarks are the property of their respective owners”. Respondent is unknown to Complainant and is not an authorized reseller of the IQOS Products. The Domain Name currently leads to an inactive website.

Per Complaint, Complainant has reasons to believe that Respondent is related to the respondent in Philip Morris Products S.A. v. Contact Privacy Inc. Customer 0156426250 / A M, HEETS IQUS UAE, WIPO Case No. D2020-1089 concerning the domain name <iqusheetsuae.com>, since:

- that domain name led to a similar website;

- under the “Contact Us” page of the Website appears an email address which was used also on the website at the domain name in Philip Morris Products S.A. v. Contact Privacy Inc. Customer 0156426250 / A M, HEETS IQUS UAE, WIPO Case No. D2020-1089 (i.e., […]@iqusheetsuae.com); and

- both websites made use of the identical disclaimer (“All product names, logos, brands, trademarks and registered trademarks are the property of their respective owners”).

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions. However, as described under the Procedural History, the Center have received the email communications from a third party. It appears that Respondent has used the postal address of this third party at the time of registration of the disputed domain name.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

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

(ii) 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.

A. Identical or Confusingly Similar

Complainant has demonstrated rights through registration and use on the HEETS mark.

The Panel finds that the Domain Name is confusingly similar to the HEETS trademark of Complainant.

The Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The letter “y” which is added in the Domain Name, does not prevent a finding of confusing similarity as the HEETS mark remains clearly distinguishable (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).

The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

The Panel finds that the Domain Name is confusingly similar to the HEETS trademark of Complainant.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or 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 [Respondent] (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 [Respondent] 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 mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.

Respondent did not demonstrate any prior to the notice of the dispute use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.

On the contrary, as Complainant demonstrates, the Domain Name resolved to a website containing text and content that suggested falsely that the website was that of Complainant or of an affiliated entity or of an official dealer of Complainant.

Per Complaint, Respondent is not an affiliated entity or an authorized reseller of Complainant and no agreement, express or otherwise, exists allowing the use of Complainant’s trademarks on the Website and the use of the Domain Name by Respondent.

A reseller or distributor can be making a bona fide offering of goods or services and thus have a right or legitimate interest in a domain name only if the following cumulative requirements are met (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, WIPO Overview 3.0, section 2.8.1): (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.

These requirements are not cumulatively fulfilled in the present case. The Domain Name suggests that it is an official site of Complainant or affiliated to or endorsed by Complainant. The Website extensively reproduces without authorization by Complainant Complainant’s trademarks and official Complainant’s product images, while it includes a hardly visible, general and ambiguous disclaimer, without any statement as to the true ownership of the Website or the ownership of the trademarks by Complainant and its (lack of) relationship to Respondent. Furthermore, Respondent used the Website to sell also products of third parties. The Website included no information regarding the identity of the provider of the Website, which was only presented as “HEETS UAE”, being a name which included Complainant’s registered HEETS trademark.

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As per Complaint, Complainant’s HEETS trademark is well known for tobacco related products. Furthermore, HEETS is a fictitious word. Because the HEETS mark had been widely used and registered by Complainant at the time of the Domain Name registration, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple Internet search due to Complainant’s wide use of the HEETS mark (Caesars World, Inc. v. Forum LLC., WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).

Furthermore, Respondent could have conducted a trademark search and would have found Complainant’s prior registrations in respect of the HEETS mark (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).

The Domain Name used to resolve to a website purportedly offering for sale Complainant’s products as well as products of third parties. This further indicates that Respondent knew of Complainant and chose the Domain Name with knowledge of Complainant and its industry.

As regards bad faith use of the Domain Name, Complainant has demonstrated that the Domain Name was used for the creation of a website, that gives the false impression of being operated by Complainant or an entity affiliated to Complainant or an official dealer of Complainant. This suggestion is further supported by Respondent’s use of Complainant’s official product images, trademarks and logos. The Domain Name was therefore operated by intentionally, for commercial gain, creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the Website it resolved to. Moreover, the Website also purportedly offered for sale products of third parties. These can be used in support of bad faith registration and use (Booking.com BV v. Chen Guo Long, WIPO Case No. D2017-0311; Ebel International Limited v. Alan Brashear, WIPO Case No. D2017-0001; Walgreen Co. v. Muhammad Azeem / Wang Zheng, Nicenic International Group Co., Limited, WIPO Case No. D2016-1607; Oculus VR, LLC v. Sean Lin, WIPO Case No. DCO2016-0034).

The Panel considers the following factors: (i) the reputation of Complainant’s HEETS mark, (ii) the failure of Respondent to submit a response, (iii) the implausibility of any good faith use to which the Domain Name may conceivably be put, given that, as Complainant has demonstrated, the Domain Name resolved to a website purportedly offering for sale Complainant’s products as well as products of third parties, and (iv) the fact that the Domain Name was registered with a privacy shield in order to hide Respondent’s identity (WIPO Overview 3.0, section 3.6).

Furthermore, Complainant has reasons to believe that Respondent is related to the respondent in Philip Morris Products S.A. v. Contact Privacy Inc. Customer 0156426250 / A M, HEETS IQUS UAE, WIPO Case No. D2020-1089 concerning the domain name <iqusheetsuae.com>, as that domain name led to a similar website, which contained an identical contact email address “[…]@iqusheetsuae.com” and an identical disclaimer (“All product names, logos, brands, trademarks and registered trademarks are the property of their respective owners”). This may be further evidence of bad faith registration and use.

The Domain Name currently leads to an inactive website. The non-use of a domain name would not prevent a finding of bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000‑0003; WIPO Overview 3.0, section 3.3).

Under these circumstances and on this record, the Panel finds no good-faith basis for Respondent’s conduct vis-à-vis the Domain Name.

Complainant has established Policy, paragraph 4(a)(iii).

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 Domain Name <heetsy.com> be transferred to Complainant.

Marina Perraki
Sole Panelist
Date: March 8, 2021