The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Aleksandr Sidorov of Lvov, Ukraine. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Internet Invest, Ltd. dba I (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2018. On May 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 3, 2018, 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 May 4, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In addition, on the same date, the Center sent an email communication in Russian and English in regard to the language of proceedings. The Complainant filed an amendment to the Complaint on May 4, 2018 and requested English to be the language of proceedings on which the Respondent did not reply.
The Center verified that the Complaint together with the amendment to the 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 May 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2018.
The Center appointed Olga Zalomiy as the sole panelist in this matter on June 5, 2018. 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 a Swiss tobacco company, which is a part of the group of companies affiliated with Philip Morris International Inc., a leading international tobacco company. The Complainant is the owner of the IQOS trademarks worldwide, such as Russian trademark IQOS, registration number 556749 registered on September 11, 2015. The Complainant has acquired a number of trademark registrations for its HEETS trademarks, such as International trademark HEETS (word/device), registration number 1328679, registered on July 20, 2016.
The Respondent registered the Domain Name on February 7, 2018. The Respondent has been using the Domain Name to direct to an online store (the “Website”) selling the Complainant’s HEETS and IQOS goods as well as accessories to those goods manufactured by third parties. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
The Complainant contends that the Domain Name is identical or confusingly similar to its IQOS and HEETS trademarks because the Domain Name incorporates them in their entirety. The Complainant alleges that the generic Top-Level Domain (“the gTLD”) in the Domain Name should be disregarded under the confusing similarity test because it is a standard registration requirement.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name because the Complainant has not licensed or otherwise permitted the Respondent to use any of the Complainant’s trademarks or to register the Domain Name incorporating the Complainant’s IQOS and HEETS trademarks. The Complainant argues that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name as a reseller or a distributor because the Complainant is not an authorized distributor and because the Respondent’s website does not meet the Oki Data case (“Oki Data Test”)1 requirements.
The Complainant contends that the Respondent registered and is using the Domain Name in bad faith. The Complainant claims that the Respondent knew about the Complainant’s IQOS and HEETS trademarks when he registered the Domain Name because the Respondent started selling goods under those trademarks on the website associated with the Domain Name immediately after the Domain Name registration. The Complainant argues that the Respondent registered and used the Domain Name with the intention to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s IQOS and HEETS trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location of a product or service on his website or location. The Complainant claims that such actions of the Respondent constitute registration and use in bad faith. The Complainant alleges that by reproducing the Complainant’s trademarks in the Domain Name and prominently displaying the Complainant’s registered logos and slogan at the top of the Respondent’s website as well as using the Complainant’s marketing material and product images, the Respondent’s website clearly suggests that the website belongs to, is affiliated with or endorsed by the Complainant. The Complainant contends that because the Respondent’s website does not provide any information on the true identity its owner, it is evident that the Respondent wishes to intentionally create the impression that the products offered on his website are provided by the Complainant or at least by an official dealer, with the clear objective of misleading Internet users as to the origin or source of the Website and the products offered and thereby attract, for commercial gain, Internet users to the Website. The Complainant alleges that along with the Complainant’s goods, the Respondent is using the website associated with the Domain Name to promote goods of third parties. The Complainant contends that the Respondent’s use of a privacy protection service for registration of the Domain Name constitutes a factor indicating bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the proceeding
Paragraph 11(a) of the Rules provides that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
Because the language of the Registration Agreement for the Domain Name is Russian, the default language of the administrative proceeding would be Russian. However, the Complainant requested that the language of the proceeding be English. The Complainant contends that the following factors support its request: 1) the Respondent’s ability to understand and use English, 2) time and costs for translating the Complaint from English to Russian, 3) the Complainant’s good faith when preparing and filing the Complaint in English, and 4) the Respondent’s decision to hide its identity thereby preventing the Complainant from identifying the Respondent’s nationality.
Previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. “Such scenarios include … (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, … (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint...”.2
The Panel finds that under the circumstances of this case English is an appropriate language of this proceeding. Specifically, the Panel finds that it is likely that the Respondent understands English. First, the Respondent registered the Domain Name comprised of the Complainant’s HEETS and IQOS trademarks, which have no meaning in Russian. Second, the Respondent displayed the Complainant’s registered slogan “This Changes Everything’’ on the home page of its website. Third, the Respondent selected the Domain Name with Latin, rather than Cyrillic, characters. Forth, the Respondent’s website contains some of the Complainant’s promotional information.
In addition, the Respondent had ample opportunity to object to the Complainant’s request for English to be the language of this administrative proceeding, but failed to do it. The Center notified the Parties in both Russian and English of the potential language issue, providing the Respondent with an opportunity to comment on or object to any such language request that may be made by the Complainant.
Therefore, to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving the present dispute, the Panel will conduct this administrative proceeding in English. 6.2. Discussion and Findings
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Under the first UDRP element, the Complainant is required to prove that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.
The Complainant holds rights in the HEETS and IQOS trademarks by virtue of its trademark registrations for those terms. Pursuant to section 1.2.1 of the WIPO Overview 3.0, “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”.
The Domain Name is identical to the Complainant’s HEETS and IQOS trademarks, because it incorporates them in their entirety. “Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”3 Neither addition of a hyphen, nor addition of the gTLD “.net” prevents finding of confusing similarity.
Thus, the Domain Name is identical or confusingly similar to the Complainant’s HEETS and IQOS trademarks and the first element of the UDRP has been satisfied. B. Rights or Legitimate Interests
To prove the second UDRP element, the Complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the Respondent.
The Complainant alleges that it has not licensed or permitted the Respondent to use the Complainant’s IQOS and HEETS trademark in domain names, or for any other purpose. Therefore, the Respondent is using the Complainant’s trademark without an authorization. While some previous UDRP panels have recognized that resellers using domain names 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 names in some situations4, the Respondent’s use of the Domain Name does not satisfy requirements of such bone fide offering of goods and services.
Outlined in the Oki Data Test, the following cumulative requirements must be satisfied for respondent to make a bona fide offering of goods and services:
“(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.”5
Here, the Respondent is using the Domain Name to direct to a website in the Russian language offering for sale the Complainant’s IQOS and HEETS products, as well as accessories to those products manufactured by third parties. The website at the Domain Name features the Complainant’s registered IQOS and hummingbird trademarks, along with the Complainant’s registered slogan “This Changes Everything’’, thereby creating an impression that the Domain Name is being affiliated with the Complainant. The Respondent’s website does not disclose lack of any relationship between the Respondent and the Complainant. Moreover, the “www.” website contains several statements, which support the impression of the Website’s affiliation with the Complainant, such as:
“В международном центре исследований и разработок «Филип Моррис Интернэшнл» (ФМИ) более 400 сотрудников – научных работников, экспертов и инженеров – работают над созданием инновационных табачных и никотиносодержащих продуктов, потенциально менее вредных, чем сигареты.
Научно-исследовательская работа в этой области в основном сосредоточена в нашем центре в городе Невшатель (Швейцария). Тут вы можете узнать о научных исследованиях, которые лежат в основе новейшей разработки — системы IQOS, в которой табак нагревается, а не горит. Система нагревания табака IQOS проходит научную оценку и клинические тесты с использованием надежных и подтвержденных на международном уровне подходов и методов. Мы постоянно публикуем в научных журналах результаты исследований, связанных с IQOS.”
Those statements are translated into English as follows:
“The international center for research and development “Philip Morris International” (PMI), has more than 400 employees- scientific workers, experts and engineers- who are working on creation of innovative tobacco and nicotine-containing products that are potentially less harmful than cigarettes.
Scientific research work in this area is mainly concentrated in our center in the city of Neuchâtel (Switzerland). Here you can learn about the scientific research that underlies the newest development - the IQOS system, in which tobacco is heated, and not burned. The IQOS tobacco heating system undergoes scientific evaluation and clinical tests using reliable and internationally proven approaches and methods. We constantly publish in scientific journals the results of studies related to IQOS.”
Taken together, all of the abovementioned factors create an impression that the Respondent’s website belongs to an authorized reseller of the Complainant’s products in Ukraine. Such use of the Domain Name cannot be considered “fair if it falsely suggests affiliation with the trademark owner.”6
The Panel finds that the Complainant has made out the prima facie case and the burden of producing evidence demonstrating it has rights or legitimate interests in the Domain Name shifted to the Respondent. Because the Respondent failed to present any rebutting evidence, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
Because the Respondent has failed to rebut the Complainant’s case, the Panel holds that the second element of the UDRP has been proven. C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.
Given that the Respondent used two of the Complainant’s trademarks in the Domain Name and displayed two additional Complainant’s trademarks on the Website, which offers for sale the Complainant’s goods, it is unlikely that the Respondent was unaware of the Complainant or its trademarks when he registered the Domain Name.
Considering the Respondent’s use of the Domain Name to direct to the Website, which creates an impression of an online store licensed or affiliated with the Complainant, it is likely that Internet users may be misled on the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Absent any explanation from the Respondent, the Panel can ascribe no motive for the Respondent’s registration and use of the Domain Name except to capitalize on the Complainant’s trademark rights. Therefore, the Panel finds that the Respondent registered and is using the Domain Name in bad faith pursuant to Paragraph 4(b)(iv) of the UDRP, which provides that bad faith registration and use can be found where a respondent, by registering and using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
The Panel finds that the Complainant has made out the requirements of paragraph 4(a)(iii) of the UDRP. 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 be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: June 18, 2018
1 Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
2 Section 4.5.1, Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
3 Id.
4 See, section 2.8.1 of the WIPO Overview 3.0.
5 Oki Data Americas, Inc. v. ASD, Inc., supra.
6 Section 2.5. of the WIPO Overview 3.0.
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