Philip Morris Products S.A. v Domain Admin, Privacy Protect, LLC

WIPO Case No. D2022-1347

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Domain Admin, Privacy Protect, LLC
(PrivacyProtect.org) / YusufAbdullah, Heetsbh

Case No. D2022-1347

1. The Parties

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

The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America /

YusufAbdullah, Heetsbh, Bahrain.

2. The Domain Name and Registrar

The disputed domain name <heetsbh.com> (“Domain Name”) is registered with PDR Ltd. d/b/a

PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2022. connection with the Domain Name. On April 15, 2022, 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 April 19, 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 April 21, 2022.

On April 20, 2022, the Center received communications from the Respondent in response to which the Center sent to the Parties an email regarding possible settlement. On April 22, 2020, the Complainant requested suspension of the proceeding. Accordingly, on the same day, the Center notified to the Parties of

the suspension of the proceeding until May 22, 2022. On May 6, 2022, the Complainant requested the
reinstitution of the proceeding, indicating that a settlement could not be reached. The Center reinstituted the
proceeding on May 6, 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

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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 the due date for Response was May 29, 2022. On May 9, 11 and 13, 2022 the Center received informal communications from the Respondent. The Respondent did not submit a formal response. Accordingly, on May 30, 2022, the Center notified the Parties that it was proceeding to panel appointment.

The Center appointed Nicholas Smith as the sole panelist in this matter on June 7, 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 and its related entities are a corporate group focused on the sale of tobacco products. The Complainant group has sales in 180 countries and sells a number of leading tobacco brands such as MARLBORO. One of the Complainant group’s products is IQOS which is a heating device into which tobacco products (including products sold by the Complainant group under the brand name HEETS) are inserted to generate a nicotine-containing aerosol. The IQOS system was first launched in Japan in 2014 and is available in 71 markets across the world with 19 million consumers. The IQOS system is almost exclusively distributed through the Complainant group’s official stores and selected authorised distributors and retailers.

The Complainant is the owner of trademark registrations for the word HEETS (the “HEETS Mark”), including an international registration registered on July 19, 2016 (No. 1326410) designating jurisdictions including China, United States of America, Japan, the European Union, and Bahrain. The Complainant also owns trademark registrations for the word IQOS (the “IQOS Mark”), including an international registration registered on July 10, 2014 (No. 1218246) designating jurisdictions including China, India, the European Union, and Bahrain.

The Domain Name <heetsbh.com> was registered on March 24, 2022 by the Respondent. The letters “bh” are a common geographical abbreviation for the country Bahrain. The Domain Name is presently inactive but prior to the commencement of the proceeding resolved to a website (“the Respondent’s Website”) that reproduced the HEETS and IQOS Marks and various product images and marketing materials in which the Complainant holds copyright. The Respondent’s Website purported to offer the Complainant’s IQOS and HEETS products in Bahrain, notwithstanding that it is not an official store or authorised distributor of the Complainant. The Respondent’s Website did not contain any details as to the identity of the Respondent, nor did it clearly disclaim any association with the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

1. that the Domain Name is identical or confusingly similar to the Complainant’s HEETS Mark;

2. that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

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The Complainant is the owner of the HEETS Mark, having registered the HEETS Mark in numerous jurisdictions, including Bahrain. The Domain Name reproduces the HEETS Mark along with the geographical abbreviation “bh” which does not prevent a finding of confusing similarity under the first element.

bona fide.

There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. authorization from the Complainant to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is using the Domain Name to create a website that purports to sell the Complainant’s products and reproduces the Complainant’s marks and copyrighted photos and promotional material, such use not being

The Domain Name was registered and is being used in bad faith. By using the Domain Name for a website
that reproduces the Complainant’s copyrighted photos and purports to represent the Complainant, the
Respondent is clearly aware of the HEETS and IQOS Marks and is using the Domain Name to deceive
consumers as to its affiliation with the Complainant. Such conduct amounts to the registration and use of the

Domain Name in bad faith.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. Some of the communications made between the Respondent and the Center was in respect of settlement. On May 13, 2022, the Respondent sent the following: “I have already changed the Domain and I am in the process of removing the website all together. Thus, it should mean that the dispute is over. As the reason of it, is to be dissolved”. However, the parties were unable to reach a settlement prior to this Decision being issued.

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trade or service mark rights, and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the HEETS Mark, having registrations for HEETS as a trademark in Bahrain as well as in various other jurisdictions.

The Domain Name incorporates the HEETS Mark with the addition of the geographical abbreviation “bh” (an abbreviation for Bahrain) and the generic Top-Level Domain “.com”. Other UDRP panels have repeatedly held that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms does not prevent a finding of confusing similarity under the first element; see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel finds that the Domain Name is confusingly similar to the Complainant’s HEETS Mark.

Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

In general, to succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

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“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved
based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the
domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you 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 (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 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 Respondent is not affiliated with the Complainant in any way. It has not been authorized by the legitimate noncommercial use.

Complainant to register or use the Domain Name or to seek the registration of any domain name
incorporating the HEETS Mark or a mark similar to the HEETS Mark. There is no evidence that the
Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the

The Respondent has used the Domain Name to operate a website to sell products that purport to be legitimate IQOS and HEETS products. If the products sold on the Respondent’s Website are not genuine products produced by the Complainant group, the Respondent’s use of the Domain Name does not grant it rights or legitimate interests since it is using the Complainant’s HEETS Mark for a site selling counterfeit products (see WIPO Overview 3.0, section 2.13.1).

Even if the Respondent is offering genuine IQOS and HEETS products from the Respondent’s Website, such use does not automatically grant it rights or legitimate interests. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of UDRP decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

The WIPO Overview 3.0, section 2.8 summarizes the consensus views of UDRP panels in assessing claims of nominative (fair) use by resellers or distributors in the following manner:

“… 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’, 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.”

In this case, the Respondent’s Website does not accurately or prominently disclose the Respondent’s relationship with the Complainant, in particular that it is not an authorized dealer or has any particular connection with the Complainant. Rather, its prominent display of the HEETS and IQOS Marks, its

reproduction of the Complainant’s official product images without the Complainant’s authorization, and the

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absence of a disclaimer or any explanation as to the identity of the operator of the Respondent’s Website see section 2.5.1 of the WIPO Overview 3.0.

results in the impression that the Respondent’s Website is an official website of the Complainant in Bahrain.
Even in the event that the Respondent is reselling genuine IQOS and HEETS products, its use of the
Domain Name for the Respondent’s Website does not grant it rights or legitimate interests in the Domain

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a response, the Panel finds that the Respondent has no

rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily
for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant
who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable

consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the 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 the respondent has engaged

in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a

competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location (Policy, paragraph 4(b)).

The Panel finds that the Respondent was aware of the Complainant and its reputation in the HEETS Mark at the time the Domain Name was registered. The Respondent’s Website contains numerous references to the Complainant, including offering the Complainant group’s products for sale and reproducing photos from the

Complainant’s website. The registration of the Domain Name in awareness of the HEETS Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith.

The Respondent registered the Domain Name for the purposes of operating a website specifically to sell either the Complainant’s products or counterfeit products that compete with the Complainant’s products. The Respondent is using a Domain Name that is confusingly similar to the HEETS Mark to sell products, be

they genuine or otherwise, in competition with the Complainant and without the Complainant’s approval and
without meeting the Oki Data test. An individual viewing the Domain Name may be confused into thinking
that the Domain Name refers to a site in some way connected to the Complainant. Consequently, the Panel
finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its
website by creating a likelihood of confusion with the Complainant and the Complainant’s HEETS Mark as to
the source, sponsorship, affiliation, or endorsement of the Respondent’s Website.

Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.

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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 <heetsbh.com> be transferred to the Complainant.

/Nicholas Smith/
Nicholas Smith
Sole Panelist
Date: June 13, 2022