Philip Morris Products S.A. v. Domains By Proxy, LLC
Claim Number: FA2206002000926
Complainant: Philip Morris Products S.A. of Neuchâtel, International, Switzerland.
Complainant Representative: DM KISCH INC of Sandton, International, South Africa.
Respondent: Domains By Proxy, LLC of Tempe, Arizona, US.
Respondent Representative:
REGISTRIES and REGISTRARS
Registries: DotStore Inc.
Registrars: 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.
Petter Rindforth, as Examiner.
Complainant submitted: June 20, 2022
Commencement: June 21, 2022
Default Date: July 6, 2022
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.
Findings of Fact:
The Complainant is the owner of the trademark HEETS, registered as:
Swiss National Trademark registration No. 692494 HEETS (word), registered on September 12, 2016, covering goods in Intl Classes 9, 11 and 34.
International Trademark registration No. 1326410 HEETS (word), registered on July 19, 2016, covering goods in Intl Classes 9, 11 and 34, and valid in 44 countries/regions around the world.
The Complainant has provided evidence of use by Declaration validated by the Trademark Clearinghouse.
There is no information on the Respondent, other than provided by the Complainant, as the Respondent has not responded.
Legal Findings and Conclusion:
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.
IDENTICAL OR CONFUSINGLY SIMILAR
The Complainant met the standard sets out in 1.2.6.1. of the URS Procedure since the Complainant has proved its right to the valid Swiss national trademark registration No. 692494 HEETS (word), and International trademark registration No. 1326410 HEETS (word). Further, the Complainant has proved that the said trademark is in current use by presenting a Trademark Clearinghouse Declaration.
The relevant part of the disputed domain name is <heetsusa>, as the added top-level domain – being a required element of every domain name – is generally irrelevant when assessing whether or not a mark is identical or confusingly similar and in this case does nothing to distinguish the disputed domain name from the Complainant’s trademark. Further, the added country name “USA” after the trademark HEETS in the disputed domain name makes no significant difference, as it only indicate one of the countries where the trademark HEETS is protected.
The Examiner concludes that the disputed domain name is confusingly similar to the Complainant's trademark HEETS.
NO RIGHTS OR LEGITIMATE INTERESTS
The Respondent does not have any rights in <heetsusa.store> as the Complainant has not authorized the Respondent to register a domain name containing its registered and used trademark HEETS, nor is the Respondent commonly known by <heetsusa.store>.
As HEETS is a distinctive and well known trademark, the Examiner also draw the conclusion that the Complainant has shown that the Respondent cannot have any legitimate interests in registering and using <heetsusa.store>.
To summarize, the Examiner find that the Complainant has established that the Respondent has no rights or legitimate interests in <heetsusa.store>.
BAD FAITH REGISTRATION AND USE
The According to the URS Procedure 1.2.6.3, examples of circumstances that demonstrate bad faith registration and use by the Registrant include:
a. Registrant has registered or 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 that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
In this case, the Complainant has shown that the Respondent is using the disputed domain name to link to a website that holds out to be an official endorsed dealer by prominently using the Complainant’s HEETS trademark in the domain name and at the top of the website, where internet users usually expect to find the name of the online shop or website owner, leaving Internet users under the false impression that the website is owned by Complainant or one of its official licensees.
Although the Respondent has not responded, the use as such strongly indicates that the Respondent has registered and is using <heetsusa.store> a) primarily for the purpose of disrupting the business of a competitor, as well as b) for intentionally attempting to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
Thus, the Examiner concludes that the Complainant has established that the Respondent has registered and used <heetsusa.store> in bad faith.
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.
<heetsusa.store>
Petter Rindforth, Examiner
Dated: July 07, 2022
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