The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Protection of Private Person, Russian Federation / Vladimir Izukaev, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2019. On July 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 4, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. The Complainant filed an amended Complaint on July 5, 2019 and submitted a request for English to be the language of the proceeding on July 9, 2019. The Respondent did not submit any comments on the language of the proceeding.
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 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 July 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2019.
The Center appointed Assen Alexiev as the sole panelist in this matter on August 23, 2019. 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 part of the Philip Morris International group (“PMI”), a leading international tobacco company with products sold in about 180 countries. One of the products of PMI is called IQOS. It is a heating device into which specially designed tobacco products sold by the Complainant under the brands HEETS and “HeatSticks” are inserted and heated to generate a nicotine-containing aerosol. The IQOS product was first launched by PMI in Japan in 2014 and now has a 17.3 percent share of the market there. The IQOS product is currently available in 44 markets and has about 7.3 million consumers worldwide. The IQOS product is almost exclusively distributed through PMI’s official IQOS stores and websites and selected authorized distributors and retailers.
The Complainant is the owner of the following trademark registrations for the brand HEETS (the “HEETS trademark”):
- the International trademark HEETS with registration No.1328679, registered on July 20, 2016 in multiple jurisdictions, including the Russian Federation, for goods in International Classes 9, 11 and 34; and
- the International trademark HEETS with registration No.1326410, registered on July 19, 2016 in multiple jurisdictions, including the Russian Federation, for goods in International Classes 9, 11 and 34.
The disputed domain name was registered on December 5, 2018. It is linked to an English language website that offers the Complainant’s IQOS and HEETS products for sale. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the HEETS trademark, as it reproduces the trademark in its entirety, in addition to the nondistinctive word “you”.
The Complainant maintains that the Respondent lacks any rights or legitimate interest in the disputed domain name, as the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name that incorporates the HEETS trademark. The Complainant further submits that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but intends to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademarks of the Complainant. According to the Complainant, the disputed domain name falsely suggests an affiliation with the Complainant and its HEETS trademark, and the Respondent’s website prominently presents the HEETS trademark appearing at the top left of the website, where consumers would expect to find the name of the online shop or of the website provider. The Respondent’s website also uses the Complainant’s official product images without authorization, while at the same time falsely claiming copyright in this material, and includes no information regarding the identity of the provider of the website, which is only identified as “You Heets”.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. It is evident from the Respondent’s use of the disputed domain name that the Respondent knew of the Complainant’s HEETS trademark when registering the disputed domain name, as the Respondent started offering the Complainant’s products on its website immediately after registering the disputed domain name. The Complainant notes that “Heets” is not commonly used to refer to tobacco products, rather, it is a purely imaginative term that is unique to the Complainant.
According to the Complainant, the use of the disputed domain name also shows that the Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the HEETS trademark as to the source, sponsorship, affiliation, or endorsement of its website and of the products on its website. By reproducing the HEETS trademark in the disputed domain name and in the title of its website, the Respondent falsely suggests that the Complainant or an affiliated dealer of the Complainant is the source of its website. This suggestion is further supported by the Respondent’s use of the Complainant’s official product images, accompanied by a copyright notice claiming the copyright for the Respondent’s website and its contents. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Procedural Issue: Language of the Proceedings
In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, 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.
The Complainant submitted its Complaint in English and requests the proceeding to be held in English. It argues that the Complainant is unable to communicate in Russian and the translation of the Complaint would burden the Complainant and delay the proceedings, while it could be presumed from the circumstances of the case that the Respondent has knowledge of the English language, as the website at the disputed domain name is in English.
The Center has sent all its messages to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has not responded to this invitation; it has thus not objected to the Complainant’s request the proceeding to be held in English and has not stated that it does not understand English. The Panel notes that all the content of the website at the disputed domain name is in the English language.
Taking the above circumstances into account, the Panel accepts that the Respondent would not be disadvantaged if the language of the proceeding is English, and is satisfied that using the English language in this proceeding would be fair and efficient. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English. 6.2 Substantive Matters
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(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 Respondent has registered and is using the disputed domain name in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the HEETS trademark.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.
The relevant part of the disputed domain name is therefore the sequence “youheets”. It consists of the elements “you” and “heets”. The “heets” element is identical to the HEETS trademark, while the “you” element is a generic word. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element. The nature of such additional terms may however bear on assessment of the second or third elements. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”).
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the HEETS trademark in which the Complainant has rights. B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent has not been authorized by the Complainant to use the HEETS trademark or to distribute or resell the IQOS products, and that the Respondent is not carrying out a
bona fide use of the disputed domain name. According to the Complainant, the Respondent uses the disputed domain name for a website that offers the Complainant’s products for sale, displays the Complainant’s HEETS trademark and marketing materials and claims copyright in the website without authorization by the Complainant and without disclosing the lack of relationship between the Parties. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not submitted a Response and has not alleged that it has rights and legitimate interests in the disputed domain name and has not disputed the Complainant’s allegations in this proceeding.
The disputed domain name is confusingly similar to the HEETS trademark and Internet users may regard it as referring to a location where the Complainant’s HEETS products are offered for sale. The disputed domain name resolves to a website that indeed offers the Complainant’s HEETS and IQOS products, displays the HEETS trademark and marketing materials and claims the copyright in these materials without identifying the supplier of the offered goods and without disclosing the lack of relationship between the Parties. As summarized in section 2.8.1 of WIPO Overview 3.0, UDRP panels acting under the Policy have recognized that resellers and distributors using a domain name containing the complainant’s trademark to undertake sales of the complainant’s goods may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name, but only if they comply with certain cumulative requirements, one of which is that the reseller’s or distributor’s website must accurately and prominently disclose its relationship with the trademark holder. This requirement has not been complied with in the present case.
In view of the above and in the lack of any denial by the Respondent of it, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant’s HEETS trademark, has registered and used the disputed domain name in an attempt to exploit the trademark’s goodwill to attract Internet users to the Respondent’s website which offers the Complainant’s products without disclosing the lack of relationship between the Parties and without authorization of this conduct by the Complainant. To the Panel, such conduct does not appear to be legitimate and giving rise to rights and legitimate interests of the Respondent in the disputed domain name.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
As discussed above, the disputed domain name fully incorporates the HEETS trademark. The Respondent does not deny that it has linked it to a website that offers the Complainant’s HEETS and IQOS products and displays the HEETS trademark and marketing materials and claims the copyright in these materials without identifying the supplier of the offered goods and without disclosing the lack of relationship between the Parties. The Respondent also does not deny that it lacks authorization from the Complainant. The HEETS trademark has been registered two years prior to the registration of the disputed domain name.
Taking the above into account, the Panel accepts that it is more likely than not that the Respondent has registered the disputed domain name with knowledge of the Complainant and targeting the HEETS trademark in an attempt to attract traffic to the disputed domain name by confusing Internet users that they are reaching an official online location where the Complainant’s HEETS and IQOS products are offered for sale and then offer them these products for commercial gain. In view of this, the Panel accepts that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name, by creating a likelihood of confusion with the Complainant’s HEETS trademark.
Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith. 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.
Assen Alexiev
Sole Panelist
Date: September 6, 2019
Full & Egal Universal Law Academy