The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is 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 January 17, 2020. On January 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 20, 2020, 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 January 23, 2020 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 in English on January 24, 2020. On January 28, 2020, the Center sent an email regarding the language of the proceeding, noting also the Complainant had already submitted its language request in the Complaint, requesting English to be the language of the proceeding. The Respondent has not replied 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 in English and Russian of the Complaint, and the proceedings commenced on February 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 2, 2020. The Center appointed Olga Zalomiy as the sole panelist in this matter on March 16, 2020. 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 tobacco company, which is a part of the group of companies affiliated with Philip Morris International Inc., an international tobacco company (jointly referred to as “PMI”). The Complainant is the owner of the IQOS and HEETS trademarks worldwide, such as: - International Registration No. 1328679 for the HEETS (device) mark issued on July 20, 2016 designating Ukraine, among other countries; - International Registration No. 1326410 for the HEETS (word) mark issued on July 19, 2016 designating Ukraine, among other countries; - International Registration No. 1217386 for the HEATSTICKS (word) mark issued on July 21, 2014 designating Ukraine, among other countries. - International Registration No. 1218246 for the IQOS (word) mark issued on July 10, 2014 designating Ukraine, among other countries; - International Registration No. 1343294 for the THIS CHANGES EVERYTHING (word) mark registered on December 12, 2016 designating Ukraine, among other countries; - International Registration No. 1329691 for the IQOS (device) mark issued on August 10, 2016 designating Ukraine, among other countries. The Respondent registered the Domain Name on December 12, 2019. The Respondent has been using the Domain Name to direct to a multi-language website existing in Russian and in English purportedly offering for sale the Complainant’s HEETS and IQOS products. The website is using several of the Complainant’s official product images without the Complainant’s authorization, while at the same time providing a copyright notice at the bottom of the website claiming copyright in the material presented on the website. 5. Parties’ Contentions A. Complainant The Complainant claims that it is a company, which is part of the PMI. The Complainant states that PMI is the leading international tobacco company, with products sold in approximately 180 countries. The Complainant argues that the Domain Name is identical or confusingly similar to the Complainant’s HEETS and HEATSTICKS trademarks. The Complainant claims that the Domain Name incorporates the Complainant’s HEETS trademark in its entirety. The Complainant argues that the Domain Name incorporates elements that are visually similar and conceptually and phonetically identical to the Complainant’s HEATSTICKS trademark. The Complainant contends that the phrase “stick heets”, in itself, incorporates the dominant and recognizable feature(s) of the Complainant’s registered HEATSTICKS trademark. The Complainant contends that the applicable generic Top-Level Domain (“gTLD”) in the Domain Name is viewed as a standard registration requirement and as such is disregarded under the confusing similarity test. The Complainant states that the Respondent has no rights or legitimate interests in respect of the Domain Name because of the following reasons: 1) the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its HEETS trademark or a domain name that incorporates the most distinctive and recognizable features of the Complainant’s HEATSTICKS trademark; 2) the Respondent is not making a legitimate noncommercial or fair use of the Domain Name, because: (i) the Respondent is neither an authorized distributor or reseller of the HEETS products; (ii) the website provided under the Domain Name does not meet requirements for bona fide offering of goods, because: (a) the Domain Name in itself suggests at least an affiliation with the Complainant and its HEETS and/or HEATSTICKS trademarks because the Domain Name incorporates elements that are visually similar, and conceptually and phonetically identical to the Complainant’s HEATSTICKS trademark; (b) the owner / administrator of the website, prominently and without authorization presents the Complainant’s registered IQOS logo, hummingbird and THIS CHANGES EVERYTHING trademark appearing at the top left of the website, where relevant consumers will usually expect to find the name of the online shop and/or the name of the website provider; (c) the Respondent’s website uses the Complainant’s official product images without authorization; (d) the website includes no information regarding the identity of the provider of the website, which is only identified as “Heets оптом” (informal translation “Heets Wholesale”) on the website, being a name which similarly includes the Complainant’s registered HEETS trademark. The Complainant states that the Respondent’s registration and use of the Domain Name constitutes bad faith because the Respondent knew of the Complainant’s HEETS and HEATSTICKS trademarks at the time of the Domain Name registration. The Complainant contends that the Respondent chose the Domain Name intending to invoke a misleading association with the Complainant because the term “heets” is imaginative and unique to the Complainant. The Complainant claims that the Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s registered HEETS and HEATSTICKS trademarks as to the source, sponsorship, affiliation, or endorsement of its website or its services. The Complainant submits that by reproducing the Complainant’s trademark in the Domain Name and the title of the website associated with the Domain Name, and by using the Complainant’s images, the Respondent’s website suggests the affiliation between the Complainant and the Respondent. The Complainant submits that the Respondent’s purported recent involvement in the bad faith registration and use of the domain name ˂stick-heets.com˃ shows a pattern of bad faith conduct in connection with domain names incorporating the Complainant’s trademarks. The Complainant argues that the Respondent’s use of a privacy protection service to hide its identity may constitute 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 Under paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the registration agreement, unless the parties agree to use a different language, or the registration agreement provides otherwise. The Panel has the right to determine the language of the administrative proceeding based on the circumstances of the case. Because the language of the Registration Agreement for the Domain Name is Russian, the default language of the administrative proceeding should be Russian. The Complainant requested that English be the language of the administrative proceeding because of the following: (i) the Respondent is capable to communicate in English, because the Domain Name is in Latin script and not in Cyrillic script; the website under the Domain Name displays words in English and in Russian; and the website connected to the Domain Name is a multi-language website allowing its users to chose either English-language or Russian-language version of the website; (ii) the Complainant, which is a Swiss entity, is unable to communicate in Russian; and (iii) the privacy registration service used by the Respondent to register the Domain Name offers services in both English and Russian. 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, […] (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint”. See section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel grants the Complainant’s request that English be the language of this proceeding because of the following circumstances: (i) the Center notified the Respondent of the proceeding in both English and Russian, but the Respondent failed to respond to such notice and invitation to file a response in the proceeding; (ii) the Complainant is not conversant with the Russian language and would have to incur significant additional cost in the proceeding, if it were required to proceed in the Russian language; (iii) the Respondent appears to understand English because the website connected to the Domain Name is a multi-language website, which has content in English and in Russian. It will be unfair to request the Complainant to translate the Complaint and accompanying documents into Russian because it will put an undue financial burden on the Complainant and delay resolution of the dispute. At the same time, it will not be unfair to the Respondent if the proceeding is conducted in English because the Respondent appears to understand English. Considering the above, the Panel grants the Complainant’s request that English be the language of this proceeding. 6.2. Discussion and Findings on the Merits 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; 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 Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must prove that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights. The evidence of file shows that the Complainant owns several trademark registrations for the HEETS and HEATSTICKS trademarks. 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 consists of the word “stick”, the Complainant’s HEETS trademark, and the gTLD “.com”. 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”.1 Because the HEETS trademark is recognizable within the Domain Name, the addition of the term “stick” does not prevent a finding of confusing similarity under the first element2 . In addition, because the Domain Name incorporates a combination of elements that are visually, conceptually and phonetically similar to the Complainant’s HEATSTICKS mark, the Panel finds that the Domain Name is confusingly similar to the Complainant’s HEATSTICKS mark. “The applicable gTLD in a domain name … is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”3 Thus, the Domain Name is confusingly similar to the Complainant’s HEETS and HEATSTICKS 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 out a prima facie case in respect of the lack of rights or legitimate interests of the Respondent.4 The Complainant alleges that it has not licensed or permitted the Respondent to use the Complainant’s HEETS or HEATSTICKS trademark in domain names, or for any other purpose. The Complainant argues that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name as a reseller or distributor. The Complainant contends that the Respondent is neither authorized distributor or reseller of the Complainant’s products. Previous UDRP panels have recognized that resellers or distributors using domain names containing complainant’s trademark to undertake sales of the complainant’s goods may be making a bona fide offering of goods and thus have a right or legitimate interest in such domain names in some situations5 . Outlined in the Oki Data case6 , the following cumulative requirements must be satisfied for the 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 trademark7 .” In this case, the Respondent’s use of the Domain Name does not satisfy requirements of such bone fide offering of goods and services. The Respondent used the Domain Name to direct to a website in English and Russian purportedly offering for sale the Complainant’s products. The website at the Domain Name suggests affiliation between the Complainant and the Respondent because it displays the Complainant’s HEETS and IQOS trademarks, the Complainant’s photographs of its products and contains no information about the website owner apart from being identified as “Heets оптом” (“Heets Wholesale”), which suggests affiliation with or endorsement by the Complainant. The website at the Domain Name does not accurately and prominently disclose the Respondent’s relationship with the Complainant. The evidence on file also shows that the Respondent Vitalij Solomin has not been commonly known by the Domain Name. 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 has shifted to the Respondent. Because the Respondent failed to present any rebutting evidence, the Complainant is deemed to have satisfied the second element of the UDRP. C. Registered and Used in Bad Faith Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name was registered and is being used in bad faith. The UDRP establishes that, for purposes of paragraph 4(a)(iii), “bad faith” registration and use of a domain name can be established by a showing of circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the respondent’s 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 respondent’s website or location, or of a product or service on the respondent’s website or location. See Policy, paragraph 4(b)(iv). Prior UDRP panels have found “the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: … (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, … (vi) absence of any conceivable good faith use.”8 Given that the Respondent registered the Domain Name a little over a month after an adverse decision against the Respondent in a prior domain name case, where the Respondent registered a domain name that differed from the Domain Name only by a hyphen, the Panel finds that the Respondent registered the Domain Name in bad faith. See, Philip Morris Products S.A. v. Whois Privacy Protection Service / Vitalij Solomin,WIPO Case No. D2019-2103, where the Respondent was found to have registered the domain name Finally, the Panel finds that the Respondent registered and is using the Domain Name in bad faith also because the Respondent, who has engaged in a pattern of abusive domain name registration, has registered the Domain Name to prevent the Complainant from reflecting the mark in a corresponding domain name9 . In the past, the Respondent registered a domain name virtually almost identical to the Domain Name to direct to a website that purportedly offered for sale the Complainant’s IQOS system in Russia and Ukraine. Philip Morris Products S.A. v. Whois Privacy Protection Service / Vitalij Solomin, supra. The Complainant has satisfied the third element 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 Domain Name Olga Zalomiy 1 Section 1.7, WIPO Overview 3.0. 2 Section 1.8, WIPO Overview 3.0. 3 Section 1.11.1, WIPO Overview 3.0. 4 Section 2.1, WIPO Overview 3.0. 5 Section 2.8.1, WIPO Overview 3.0. 6 Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. 7 Id. 8 Section 3.1.4, WIPO Overview 3.0. 9 Section 2.5.2., WIPO Overview 3.0.
Sole Panelist
Date: March 28, 2020
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