Philip Morris Products S.A. v Ali Can

WIPO Case No. D2022-0943

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Ali Can

Case No. D2022-0943

1. The Parties

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

The Respondent is Ali Can, Turkey.

2. The Domain Name and Registrar

The disputed domain name <heetsekol.com> is registered with Aerotek Bilisim Sanayi ve Ticaret Ltd Sti.

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2022.

On March 17, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 23, 2022, 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 March 24, 2022, 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 March 28, 2022.

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 March 29, 2022. In accordance with the Rules, paragraph

5, the due date for Response was April 18, 2022. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on April 19, 2022.

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The Center appointed Kaya Köklü as the sole panelist in this matter on April 27, 2022. 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 part of the Philip Morris International Inc. group, which is a group of companies active in the field of tobacco and smoke-free products.

The Complainant owns various word and figurative HEETS trademark registrations around the world,
including in Turkey, where the Respondent is reportedly located. According to the Complaint, the
Complainant is, inter alia, the registered owner of the International Trademark Registration No. 1328679
(registered on July 20, 2016) and No. 1326410 (registered on July 19, 2016) for HEETS, both providing

trademark protection, inter alia, for electronic cigarettes as covered in classes 9, 11, and 34 (hereinafter

collectively referred to as “HEETS trademark”) (Annexes 6 and 7 to the Complaint).

The disputed domain name was registered on November 4, 2021.

The screenshots, as provided by the Complainant, show that the disputed domain name resolved to a website in the Turkish language, which was used for offering various kinds of smoke-free products of the Complainant as well as further competing third-party products (Annex 8 to the Complaint). On the website, the HEETS trademark of the Complainant and its official product images are used without any visible disclaimer describing the (lack of) relationship between the Parties.

At the time of the decision, the disputed domain name does no longer resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant is of the opinion that the disputed domain name is confusingly similar to its HEETS trademark.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is rather argued that the disputed domain name falsely suggests that there is some official or authorized link between the Complainant and the Respondent.

Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith.

The Complainant believes that the Respondent must have been well aware of the Complainant’s HEETS

trademark when registering the disputed domain name, particularly as the Respondent uses the

Complainant’s trademark on the website linked to the disputed domain name and its genuine product images

without authorization and any disclosure of the lack of relationship between the Complainant and the

Respondent.

B. Respondent

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

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6. Discussion and Findings

According to paragraphs 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint in accordance
with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the
Complaint where no Response has been submitted.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i)        the disputed domain name is identical or confusingly similar to the trademark in which the

Complainant has rights; and

(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.

The Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent
has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case

No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where
relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v.

WACHEM d.o.o., WIPO Case No. D2004-0110.

It is further noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected

UDRP Questions, Third Edition (“WIPO Overview 3.0”) and, where appropriate, will decide consistent with

the consensus views captured therein.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has registered trademark rights in the mark HEETS by virtue of various trademark registrations worldwide, including in Turkey, where the Respondent is reportedly located.

The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered
HEETS trademark, as it fully incorporates the Complainant’s trademark. As stated at section 1.8 of the

WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would generally not prevent a finding of confusing similarity. The mere addition of the

term “ekol” (which is Turkish and means “ecole” or “school” in the English language) does not, in view of the

Panel, serve to avoid a finding of confusing similarity between the disputed domain name and the

Complainant’s HEETS trademark.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.

While the burden of proof on this element remains with the Complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the Respondent. Therefore, the Panel

agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the
burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed
domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d.

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v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).

In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has

no rights or legitimate interests to use the Complainant’s trademark HEETS in a confusingly similar way

within the disputed domain name.

There is also no indication in the current record that the Respondent is commonly known by the disputed domain name. In the absence of a substantive response, the Respondent has particularly failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name.

In this regard, the Panel is also convinced that the Respondent cannot be assessed as a legitimate dealer for the Complainant’s products in light of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903

(“Oki Data”) and thus is not entitled to use the disputed domain name accordingly. The criteria as set forth in

Oki Data are apparently not fulfilled in the present case. The Panel particularly notes that the website, which was linked to the disputed domain name did not accurately and prominently disclose the relationship, or rather the lack thereof, between the Respondent and the Complainant, thus creating the false impression

that the Respondent might be an official and authorized reseller/distributor for the Complainant’s products in

Turkey. This assessment is particularly supported by the nature of the disputed domain name, which in view
of the Panel carries a risk of implied affiliation or association, as stated in section 2.5.1 of the WIPO

Overview 3.0. The Panel further notes that the Respondent offered third party competing products of other

commercial origin for sale on the website linked to the disputed domain name. In the Panel’s view, all this

takes the Respondent out of the Oki Data safe harbour for purposes of the second element.

As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In the Panel’s view, the Respondent has registered and is using the disputed domain name in bad faith.

The Panel is convinced that the Respondent must have had the Complainant’s trademark in mind when

registering the disputed domain name.

In view of the Panel, the Respondent has registered the disputed domain name solely for the purpose of creating an association with the Complainant and its smoke-free products. After having reviewed the

Complainant’s screenshots of the website linked to the disputed domain name (Annex 8 to the Complaint),

the Panel is convinced that the Respondent has intentionally registered the disputed domain name in order
to generate traffic to its own website. The Panel particularly notes that the Respondent has not published
any visible disclaimer on the website linked to the disputed domain name to explain that there is no existing

relationship between the Respondent and the Complainant. Rather, the use of official product images of the

Complainant and the Complainant’s HEETS trademark on the website linked to the disputed domain name

as well as the nature of the disputed domain name is, in view of the Panel, sufficient evidence that the Respondent intentionally tries to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation or endorsement of its

website.

The fact that the disputed domain name does not currently resolve to an active website does not change the

Panel’s findings in this respect.

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The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.

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 <heetsekol.com> be transferred to the Complainant.

/Kaya Köklü/

Kaya Köklü

Sole Panelist
Date: May 10, 2022