Philip Morris Products S.A. v. Domains By Proxy, LLC
Claim Number: FA2104001943267
Complainant: Philip Morris Products S.A. of Neuchâtel, International, Switzerland.
Complainant Representative: DM KISCH INC of Sandton, International, South Africa.
Respondent: Registration Private / Domains By Proxy, LLC of Scottsdale, Arizona, US.
Respondent Representative: unrepresented.
REGISTRY and REGISTRAR
Registry: Binky Moon, LLC
Registrar: GoDaddy.com, LLC
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
Debrett Gordon Lyons, as Examiner.
Complainant submitted: April 29, 2021
Commencement: April 30, 2021
Default Date: May 17, 2021
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure, Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Complainant is an international tobacco company which manufactures, inter alia, a device under the trademark, IQOS, being an electronic heating device into which specially designed tobacco sticks (branded “HEETS”) are inserted and heated to generate a nicotine containing aerosol.
Respondent registered the disputed domain name on September 30, 2020. It resolves to a website advertising and selling Complainant’s products made under the HEETS trademark. The website uses Complainant’s product images and marketing materials but reveals no information regarding the identity of the website provider, nor does it acknowledge Complainant as the trademark owner.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
1.2.6.1. that the registered domain name is identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and that is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
The evidence shows that Complainant holds a valid national registration which is in use. In particular, Complainant owns Swiss Trademark Registration No. 692494 for HEETS (word). The HEETS trademark is also registered with the so-called Trademark Clearinghouse which is sufficient to prove actual use of the trademark. (URS Rule 8.1.2.1).
The Examiner finds that the domain name is identical to the trademark since it combines the trademark with a gTLD and so finds the first element to be established.
1.2.6.2. that the Registrant has no legitimate right or interest to the domain name.
There is nothing to suggest Registrant is commonly known by the domain name or that it has trademark rights of its own. Respondent has used Complainant’s trademark without permission and used the domain name to direct internet users to a website posing as a site maintained by Complainant. Respondent is not an authorised re-seller nor does it comply with recognised guidelines concerning re-selling of genuine branded goods. Accordingly, there is no evidence of preparations to use the domain name in connection with a bona fide offering of goods or services. The Examiner finds that Registrant has no legitimate right or interest in the domain name and that Complaint has established the second element.
1.2.6.3. that the domain was registered and is being used in bad faith.
The Examiner finds that Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Registrant’s website.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration.
Debrett Gordon Lyons, Examiner
Dated: May 19, 2021
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