The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Whois Privacy Protection Service, Ukraine / Vitalij Solomin, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2019. On August 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 30, 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 August 30, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 3, 2019. On August 30, 2019, the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. On September 3, 2019, the Complainant confirmed its request in English on September 3, 2019 and submitted a request for English to be the language of the proceeding the same day. 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 in both English and Russian, and the proceedings commenced on September 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2019. The Center appointed Irina V. Savelieva as the sole panelist in this matter on October 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, Philip Morris Products S.A. is a company which is part of the group of companies affiliated to Philip Morris International Inc. (“PMI”). PMI is the leading international tobacco company, with products sold in approximately 180 countries. PMI’s brand portfolio includes brands like MARLBORO, the widely known international selling cigarette brand since 1972. The Complainant’s product is called IQOS. IQOS is a precisely control heating device with specially designed tobacco products, under the brand name HEETS or HEATSTICKS which are inserted into a device and heated to generate a flavourful nicotine-containing aerosol. The IQOS system includes of an IQOS Pocket Charger specially designed to charge the IQOS Holder. The IQOS system was first launched by PMI in Japan in 2014 and is available in key cities in around 48 markets across the world. The IQOS system has achieved considerable international success and approximately 8 million consumers have converted to this system worldwide. To date, the IQOS system is distributed through PMI’s official stores, websites and selected authorised distributors and retailers. The RMI owns a large portfolio of well-known trademarks and has the following trademark registrations: - International Registration HEETS (word/device) No.1328679 registered on July 20, 2016 in more than 40 countries, including the Russian Federation and Ukraine; - International Registration HEETS (word) No. 1326410 registered on July 19, 2016 in more than 35 countries, including the Russian Federation and Ukraine; - International Registration HEATSTICKS (word) No 1217386 registered on July 21, 2014 in more than 30 countries including Ukraine; The disputed domain name The Complainant contends that the disputed domain name entirely incorporates the Complainant’s well-known registered trademark HEETS in word format with an additional term “stick’. The Complainant further contends that the disputed domain name is confusingly similar to the Complainant’s registered trademark HEETS and/or HEATSTICKS. Further, the Complainant draws attention to the fact that the Complainant’s IQOS logo which is also registered the trademarks are used on the website at the disputed domain name. It creates a false impression of connection between the Respondent’s website and the Complainant’s trademarks and logos. The Complainant, therefore, submits that the disputed domain name The Complainant has not found that the Respondent has any rights or legitimate interests in the disputed domain name The Respondent is not making legitimate noncommercial or fair use of the disputed domain name. On the contrary, the website uses the Complainant’s official products images, logos and marketing materials without authorization, and at the same time the Respondent falsely claims copyright in this material. Therefore, the Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name and it is not involved in bona fide offering of goods. c) The disputed domain name was registered and is being used in bad faith The Complainant states its trademark registrations predate the registrations of the disputed domain. Therefore it seems highly unlikely that the Respondent was not aware of the existence of the Complainant’s trademarks when unlawfully registering the disputed domain name. It is also evident from the Respondent’s use of the disputed domain name Finally, the fact that the Respondent was using a privacy protection service to hide his true identity in itself indicates bad faith. Consequently, the Complainant concludes that the Respondent should be considered to have registered and used the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Panels finds that the Respondent was given notice of this proceeding in accordance with the Rules both in the Russian and English languages. However, the Respondent failed to file a response to the Complaint and has not sought to answer to the Complainant’s assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given a fair opportunity to present his case and finds no exceptional circumstances why it could not do so; and the Panel will proceed to the decision based on the Complaint in accordance with paragraph 5(f) of the Rules. The Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove the elements required by the Policy. In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must prove that the three following elements are satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. Pursuant to paragraph 15(a) of the Rules the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions, evidence and inferences drawn from the Respondent’s failure to reply. A. Language of the Proceedings The Registrar has confirmed that the language of the Registration Agreement is in Russian. Paragraph 11(a) of the Rules states that 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 regards to the circumstances of the administrative proceeding. The Complainant has requested English as the language of the proceeding for the following reasons: (a) the disputed domain name is Latin scripts (b) the website at the disputed domain name offer “English” as one of the language options and also includes a number of English words and/or phrases, (c) substantial burden and expense would be imposed on the Complainant, which could cause undue delay, and (d) English is a common language in global business. In light of the above, the Panel finds that there is evidence showing that the Respondent may be familiar with the English language Further, the Respondent did not reply to the submission of the Complainant about Complainant’s request for English to be the language of the proceedings. Therefore, the Panel proceeds to a decision in English. B. Identical or Confusingly Similar The Complainant has registered the trademarks HEETS and HEATSTICKS worldwide in word and device format from 2014, which represent well-known marks in the area of innovative tobacco products. The Complainant submits that the disputed domain name is confusingly similar to its trademarks. The disputed domain name The Panel refers to consistent practice and past UDRP decisions, which confirm that incorporating trademark elements in another combination does not negate a finding of confusing similarity. It was specifically highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which states that “this test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. (This may also include recognizability by technological means such as search engine algorithms.) In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant’s trademark and the disputed domain name to ascertain confusing similarity.” The combination of words “stick-heets”” incorporates the Complainant’s trademarks and makes a clear reference to the nature of the products distributed by the Complainant’s and it should be considered affirming confusing similarity. In the Panel view, the disputed domain name is confusingly similar to HEETS and/or HEATSTICKS trademarks, which is either reproduced in its entirety with the word “sticks” or in a different combination or order but being phonetically similar and are clearly recognizable within the disputed domain name. Accordingly, the Panel finds that the disputed domain name The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy as the first element of the Policy. C. Rights or Legitimate Interests The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. Even though the Respondent has not filed a response to the Complaint and has not contested the Complainant’s assertions, the Panel will have to consider whether the Respondent’s use of the disputed domain name would indicate the Respondent’s rights or legitimate interests in the disputed domain name. According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name: (i) the respondent’s use of or demonstrable preparations to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is 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. A respondent may show its rights or legitimate interests, non-exhaustively, by producing evidence to support the circumstances under paragraphs 4(c) of the Policy. By not responding to the Complainant’s contentions, the Respondent in this proceeding has not attempted to demonstrate his rights or legitimate interests. The Panel further notes that there is no evidence that before any notice of the dispute with the Complainant, that the Respondent was using the disputed domain name for a bona fide offering of goods or services. According to the Complainant, the websites is in the Russian language is used at the disputed domain name to create an impression that it is associated with the Complainants and its latest tobacco products by using similar trademarks and its logos. The described use of the disputed domain name According to Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the use of a trademark as a domain name by an authorized or non-authorized third party is only to be regarded as a bona fide offering of goods or services within the meaning of paragraph 4(c) of the Policy if the following conditions are satisfied: (a) the respondent’s use of must actually be offering the goods or services at issue; (b) the respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods; (c) the site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents; and (d) the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. As the Complainant contests with reference to its evidence, the Respondent fails at least on two elements of the above test: firstly, the Respondent does not publish a disclaimer on his website; and secondly, the Respondent presents himself as the trademark owner by using the Complainant’s official HEETS and/or HEATSTICKS trademarks and logos on his website; In addition to that, the Respondent makes a false copyright claim to the Complainant’s materials used on his website. As to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain name. The Panel recalls that the Respondent registered the disputed domain name in 2018; this is long after the Complainant has registered its innovative and distinctive HEETS and/or HEATSTICKS trademarks starting from 2014. The trademarks and the Complainant’s activity are well known and highly recognized within its industry. There is no further evidence that the Respondent is making or has made legitimate noncommercial or fair use of the disputed domain name. Moreover, the Respondent is using the disputed domain name with the purpose of gaining profit. Therefore, paragraph 4(c)(iii) of the Policy does not apply. The Panel finds the Complainant has established its prima facie case to show that the Respondent has no rights or legitimate interests in the disputed domain names, which has not been rebuffed by the Respondent, and, accordingly, the Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy as the second element of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy, provides that the following circumstances are deemed to evidence that a respondent has registered and is using 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) 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location. The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain name has been registered with the Respondent’s knowledge of the Complainant’s trademarks, worldwide activity and reputation. The Complainant’s first use and first registration of HEETS and HEATSTICKS trademarks predate any use the Respondent may have made of the disputed domain name. The disputed domain name was registered in 2018, years after the Complainant’s first use of these registered trademarks. The website at the disputed domain name allegedly offers the Complainants products for sale. It is the Panel’s view, under the present circumstances, that the Respondent most likely registered the disputed domain name with full awareness of the Complainant’s trademark as well as the goodwill associated with them. It is clear in the Panel’s opinion that in the mind of an Internet user, the disputed domain name could be directly associated with the Complainant’s trademarks, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (see AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327). Further, the Respondent has never been granted permission to register the disputed domain name. The Respondent takes advantage of HEETS and HEATSTICKS trademarks by intentionally attempting to attract visitors to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or a product or service on the Respondent’s website. The Panel finds that the Respondent’s registration and use of the disputed domain name, shows the Respondent’s intent to rely on a risk of confusion with the Complainant’s activity and trademarks as to the source, sponsorship, affiliation or endorsement of the disputed domain name and the website associated with it. This conduct has been considered as bad faith under the Policy, as in Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946, in which the panel stated: “It follows from what has been said about legitimacy that the Panel is satisfied that Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site. Pursuant to Policy paragraph 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii).” These findings, together with the finding that the Respondent has no rights or legitimate interests in the disputed domain name, lead the Panel to conclude that the disputed domain name was registered and is being used by the Respondent in bad faith. Therefore, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and, accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy as the third element of the Policy. 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 Irina V. Savelieva
Sole Panelist
Date: November 6, 2019
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