Philip Morris Products S.A. v Saeed Zarrabian

WIPO Case No. DIR2022-0021

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Saeed Zarrabian

Case No. DIR2022-0021

1. The Parties

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

The Respondent is Saeed Zarrabian, Iran (Islamic Republic of).

2. The Domain Name and Registrar

The disputed domain name <heetshome.ir> is registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9,

2022. On December 9, 2022, the Center transmitted by email to IRNIC a request for registrar verification in contact details.

connection with the disputed domain name. On December 10, 2022, IRNIC transmitted by email to the

The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute

Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the

“Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the

“Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the paragraph 5(a), the due date for Response was January 5, 2023. On January 9, 2023, the Center notified

the Respondent’s default.

The Center appointed Edoardo Fano as the sole panelist in this matter on January 17, 2023. 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.

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The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

Having reviewed the communication records in the case file provided by the Center, the Panel finds that the

Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to the Respondent”. Therefore, the Panel shall issue its Decision

based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a
response from the Respondent.

The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.

4. Factual Background

The Complainant is Philip Morris Products S.A., a Swiss subsidiary company of Philip Morris International

Inc. (“PMI”), operating as one of the international leaders in the field of tobacco and owning several

trademark registrations for HEETS in relation to tobacco products to be inserted and heated in electronic

cigarette devices, like PMI’s IQOS branded ones.

Among the many trademark registrations for HEETS are the following ones:

- International Trademark Registration No. 1326410 for HEETS, registered on July 19, 2016.

- International Trademark Registration No. 1328679 for HEETS and design, registered on July 20, 2016.

The Complainant provided evidence in support of the above.

According to the WhoIs records, the disputed domain name was registered on April 12, 2022, and it resolves

to a website in Persian where allegedly the Complainant’s IQOS System and HEETS sticks are offered for

sale, together with products of the Complainant’s competitors such as HUHOU, and the Complainant’s

official product images and copyrighted marketing materials are reproduced.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain name is confusingly similar to its trademark HEETS, as it

reproduces the Complainant’s trademark in its entirety, with the addition of the descriptive word “home”.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name and it is not making either a bona fide offering of

goods or services or a legitimate noncommercial or fair use of the disputed domain name: the disputed

domain name is resolving to a website in which allegedly the Complainant’s IQOS System and HEETS sticks

are offered for sale, together with products of the Complainant’s competitors such as HUHOU, and the

Complainant’s official product images and copyrighted marketing materials are reproduced, suggesting an

affiliation with the Complainant. Further, the Complainant asserts that the disputed domain name allegedly

markets the above products towards the country of Iran (Islamic Republic of) and represents itself as an

authorized retailer, however the Complainant’s products are not currently sold in Iran (Islamic Republic of).

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The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since

the Complainant’s trademark HEETS is distinctive and well-known in field of tobacco and electronic devices.

Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed

domain name and the Complainant contends that the use of the disputed domain name with the purpose to

attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s

trademark as to an affiliation between the Respondent and the Complainant, qualifies as bad faith

registration and use.

B. Respondent

The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to

paragraphs 5(f) and 14 of the Rules, no exceptional circumstances explaining the default have been put

forward or are apparent from the record.

A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable
facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with
paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc., WIPO Case
No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL
INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080; ALTAVISTA COMPANY v.
GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848; Confédération Nationale du
Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No.

D2007-0288).[1]

[1] In light of the substantive and procedural similarities between the irDRP and the Uniform Domain Name Dispute Resolution Policy

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:

(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 or is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant is the owner of the trademark HEETS both by registration and acquired reputation and that the disputed domain name is confusingly similar to the trademark HEETS.

Regarding the addition of the term “home”, the Panel notes that it is now well established that the addition of

other terms (whether descriptive, geographical terms, letters, or otherwise) to a domain name does not

prevent a finding of confusing similarity between the disputed domain name and the trademark. The addition

of the term “home” does not therefore prevent the disputed domain name from being confusingly similar to

the Complainant’s trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions,

Third Edition (“WIPO Overview 3.0”), section 1.8.

It is also well accepted that a country code Top-Level Domain (“ccTLD”) suffix, in this case “.ir”, is typically

ignored when assessing the confusing similarity between a trademark and a domain name. See
WIPO Overview 3.0, section 1.11.

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The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name

is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following circumstances, in particular but without limitation:

“(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.”

According to paragraph 4(a) of the Policy, the Complainant has the burden of proving the three elements of

the Policy. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests

in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite production to the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

difficult, since proving a negative circumstance is generally more complicated than establishing a positive
one. As such, it is well accepted that it is sufficient for the Complainant to make a prima facie case that the
prima facie

The Complainant in its Complaint, and as set out above, has established a case that the domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods

Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the
or services, but instead on the website at the disputed domain name the Complainant’s IQOS System and

HEETS sticks are allegedly offered for sale, together with products of the Complainant’s competitors such as

HUHOU, and the Complainant’s official product images and copyrighted marketing materials are reproduced.

The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name.

Should the Complainant’s products sold on the website to which the disputed domain name is directing

Internet users be genuine products, legitimately acquired by the Respondent, the question that would arise is whether the Respondent would therefore have a legitimate interest in using the disputed domain name that

is confusingly similar to the Complainant’s trademark in circumstances that are likely to give rise to

confusion.

According to the current state of UDRP decisions in relation to the issue of resellers as summarized in the
WIPO Overview 3.0, section 2.8.1:

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“[...] 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

1. the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.”

This summary is based on the UDRP decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case

No. D2001-0903.

While it is unclear to the Panel whether the products offered on the website are genuine, from inspection of

the Respondent’s website, the Panel finds that the lack of any disclaimer and the offer of also products of the

Complainant’s competitors would not make, under the Oki Data principles (see above), a bona fide offering

of goods and services and thus a legitimate interest of the Respondent in the disputed domain name.

In addition, the Complainant stated that its IQOS System is not currently sold in Iran, reinforcing the Panel’s

suspicions as to whether the products are genuine or even actually offered for sale, neither implication
supporting a finding of rights or legitimate interests on behalf of the Respondent.

The Panel therefore concludes that the disputed domain name is not being used in connection with a bona fide offering of goods or services.

Moreover, the Panel finds that the composition of the disputed domain name along with its use carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.

The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

While paragraph 4(a)(iii) of the Policy requires a demonstration that a domain name has either been registered or is being used in bad faith, the Complainant has argued that the Respondent has both registered and used the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides that

“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) that [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) that [the 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, [the respondent has] intentionally attempted to attract, for commercial

gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of

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confusion with the 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”.

Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s

trademark HEETS in the tobacco and electronic devices field is clearly established and the Panel finds that the Respondent obviously knew of the Complainant and deliberately registered the disputed domain name, especially because on the website at the disputed domain name the same products as the Complainant,

namely IQOS electric tobacco heating devices and relevant HEETS sticks, are offered for sale.

The Panel further notes that the disputed domain name is also used in bad faith since on the relevant

website the Complainant’s IQOS System and HEETS sticks are offered for sale in an attempt to pass off as

an online retailer of the Complainant, while also including references to third parties competing products, an

activity clearly detrimental to the Complainant’s business.

The above suggests to the Panel that the Respondent intentionally registered and is using the disputed

domain name in order both to disrupt the Complainant’s business, in accordance with paragraph 4(b)(iii) of

the Policy, and to attract, for commercial gain, Internet users to its website in accordance with

paragraph 4(b)(iv) of the Policy.

Furthermore, the Panel considers that the nature of the inherently misleading disputed domain name, which

includes the Complainant’s trademark in its entirety with the mere addition of the term “home”, further

supports a finding of bad faith. See, WIPO Overview 3.0, section 3.2.1.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 <heetshome.ir> be transferred to the Complainant.

/Edoardo Fano/

Edoardo Fano

Sole Panelist
Date: January 25, 2023

(“UDRP”), the Panel has cited authorities decided under the UDRP and the WIPO Overview of WIPO Panel Views on Selected UDRP

Questions, Third Edition (“WIPO Overview 3.0”), where appropriate.