Westmore · UDRP DecisionE-heatproducts.com
The Panel ordered transfer of <e-heatproducts.com>. It found the domain confusingly similar to the Complainant’s HEET and HEETS marks because “heat” is very similar and phonetically identical, while the descriptive additions “e-” and “products” did not prevent confusing similarity. The Respondent lacked rights or legitimate interests, and the domain and associated online shop were found to have been used intentionally for commercial gain by creating confusion with the Complainant’s marks and IQOS system. The Panel therefore found registration and use in bad faith under paragraph 4(b)(iv) of the Policy.
The timeline behind e-heatproducts.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind e-heatproducts.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The case illustrates how phonetic similarity can support the first UDRP element even when the domain substitutes a dictionary word and adds descriptive e-commerce terminology. It also shows that an unauthorized commercial site’s use of the trademark owner’s official materials, combined with sales of the owner’s and competing products, may be central to findings on both legitimate interests and bad faith.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Philip Morris Products S.A. v. Registration Private, Domains By Proxy, LLC / Geroge Manaros Case No. D2019-1692 1. The Parties The Complainant is Philip Morris Products S.A., Switzerland, represented by Boehmert & Boehmert, Germany. The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Geroge Manaros, United Kingdom. 2. The Domain Name and Registrar The disputed domain name <e-heatproducts.com> is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2019. On July 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 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 July 19, 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 amendment to the Complaint on July 22, 2019. The Center verified that the Complaint together with the amendment to the 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 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2019. A late Response was filed with the Center on August 19, 2019. The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on August 26, 2019. 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., a Swiss company and a subsidiary of Philip Morris International, Inc., an international tobacco company, with products sold in approximately 180 countries. In the course of transforming its business from combustible cigarettes to Reduced Risk Products (with the potential to present less risk of harm to smokers), the Complainant has developed the IQOS system, a controlled heating device into which tobacco products under the brand names HEETS and HEATSTICKS are inserted and heated to generate a flavorful nicotine-containing aerosol. The IQOS system was first launched in 2014 in Japan and today is available in around 44 markets around the world, being distributed through official stores and websites with selected authorized distributors and retailers. For its new smoke-free products, the Complainant owns several trademark registrations around the world, including the following International Registrations designating European Union: -No. 1217386, for the mark HEATSTICKS (word), granted on July 21, 2014; -No. 1328679, for the mark HEETS (word/device), granted on July 20, 2016; -No. 1326410, for the mark HEETS (word), granted on July 19, 2016; -No. 1312086, for the mark HEET (word), granted on May 17, 2016. The disputed domain name was registered on January 2, 2019, and the website resolves to an online shop allegedly offering the Complainant’s products as well as products competing with the Complainant’s. 5. Parties’ Contentions A. Complainant Initially, the Complainant says that it has reason to believe that the Respondent or the person behind the Respondent is Costantinos Venardis, who had been the Respondent in previous UDRP proceedings involving the domain name <myheatsticks.com>, which had voluntarily been transferred to the Complainant. According to the Complainant, the domain name <myheatsticks.com> is reproduced several times in the section “Terms & Conditions” provided in the website linked to the disputed domain name. The Complainant argues that the disputed domain name is confusingly similar to the marks HEET, HEETS and HEATSTICKS since it comprises the term HEAT (considered as phonetically identical/similar to the marks HEET, HEETS) in addition to the descriptive indications “e-” and “products”, as well as the TLD “.com”. The Complaint mentions that the prefix “-e” is understood as an indication of electronic products, which make a direct association with the Complainant’s marks/products and would be insufficient to avoid a finding of confusing similarity with HEET, HEETS and HEATSTICKS. The Complainant alleges that it has not licensed or permitted the Respondent to use any of its trademarks or to register the disputed domain name adapting its HEET, HEETS, HEATSTICKS marks and that it lacks any rights or legitimate interests in respect to the disputed domain name. In addition, the Complainant says that the Respondent is not an authorized distributor or reseller of the IQOS system and its use of the disputed domain name or preparation to use the disputed domain name demonstrates no intent to use it with a bona fide offering of goods or services. On the contrary, the Respondent’s behavior shows a clear intent to obtain unfair commercial gain. The Complainant demonstrates that the disputed domain name is linked to an online store offering the Complainant’s IQOS system under the marks HEATSTICKS and HEETS as well as other competitive products using the Complainant’s marks and with all the prices presented in Euros, which clearly targets and address a European Public. The website reproduces several images, official material and videos of the Complainant’s products, giving a false impression of an affiliation with the Complainant. The Complainant adds that the website linked to the disputed domain name includes no information regarding the identity of the respective provider, which strengthens the false impression of a commercial relationship with the Complainant. According to the Complainant, it is evident that the Respondent knew of the Complainant’s trademarks when registering the disputed domain name. Firstly, the terms “heet”, “heets”, “heat” are not commonly used to describe tobacco products. Secondly, by reproducing the Complainant’s trademarks in the disputed domain name, the Respondent’s website suggests the Complainant or an affiliated dealer as the source of the website, which is not true. Finally, the fact that the Respondent is using a privacy protection service to hide its true identity may indicate bad faith. The Complainant then requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings As per paragraph 4(a) of the Policy, the Complainant must prove that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The evidence presented demonstrates that the Complainant is the owner of several trademark registrations for HEET, HEETS and HEATSTICKS around the world, including international registrations also designating the European Union. The Complainant’s trademarks predate the disputed domain name. The disputed domain name comprises the term “heat”, which is indeed very similar and phonetically identical to the Complainant’s trademarks HEET/HEETS. The addition of the descriptive terms “e-” and “products” does not avoid confusing similarity between the disputed domain name and the Complainant’s trademarks. In this regard, it is the general view among UDRP panels that the addition of merely dictionary, descriptive or geographical words to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP (for example, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd , WIPO Case No. D2001-0110 ). The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e. , the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests The Respondent has not submitted a response to the Complaint. There is no evidence that the Respondent has any authorization to use the Complainant’s trademarks or to register domain names containing mark that somehow adapts the Complainant’s HEET, HEETS, HEATSTICKS. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable 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. Instead, there is enough evidence in the Complaint that the disputed domain name was registered and used with the intention of attracting Internet users, for commercial gain, creating a likelihood of confusion with the Complainant’s trademarks HEET, HEETS and HEATSTICKS as well as its IQOS system. The Panel finds that the use of the disputed domain name, which incorporates the Complainant’s trademark, does not correspond to a bona fide use of the disputed domain name under the Policy. For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e ., the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The trademarks HEET, HEETS and HEATSTICKS are registered by the Complainant in several jurisdictions as per the documents presented in the Complaint. The disputed domain name confusingly imitates the Complainant’s trademarks and the Respondent has no association with the Complainant. The Complainant’s HEET, HEETS and HEATSTICKS marks are distinctive and have no relation with tobacco products. This means that a domain name that comprises a very similar term (in this case HEAT) which is phonetically identical and includes the terms “e-” and “products”, obviously making reference to electronic items, is suggestive of the registrant’s bad faith. The present case demonstrates the Respondent’s clear intention to mislead Internet users into believing that the disputed domain name and its corresponding website belong to the Complainant. The Respondent still reproduced in the website the trademarks and a large number of official material from the Complainant, also hiding its true identity using a privacy protection service. Therefore, the Respondent’s intention was undoubtedly to make profit by deceiving Internet users. Therefore, this Panel finds that the Respondent has intentionally attempted to obtain some kind of commercial gain with the registration of the disputed domain name. This Panel finds that the Respondent’s attempt of taking undue advantage of the Complainant’s trademarks as described in paragraph 4(b)(iv) of the Policy has been demonstrated. For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e ., the disputed domain name 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 <e-heatproducts.com> be transferred to the Complainant. Mario Soerensen Garcia Sole Panelist Date: September 6, 2019
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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