The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Illya Taryanik, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2020. On February 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response: (a) confirming it is the Registrar for the disputed domain name; (b) disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint; (c) disclosing the Respondent registered the disputed domain name on September 14, 2019; (d) stating the language of the registration agreement is English; and (e) confirming the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name. The Center sent an email communication to the Complainant on February 11, 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 on February 12, 2020. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the 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 February 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2020. The Center appointed Warwick A. Rothnie 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 part of the corporate group of which Philip Morris International Inc. is the parent (“Philip Morris group”). As is no doubt well known, the Philip Morris group produces tobacco products, selling its products in approximately 180 countries. According to the Complaint, the Philip Morris group is in the process of transforming its business from combustible cigarettes to Reduced Risk Products. The Philip Morris group defines Reduced Risk Products as products which present, are likely to present, or have the potential to present less risk of harm to smokers who switch to these products from combustible cigarettes. One of its products in this category is called IQOS. This is a precisely controlled heating device into which specially designed tobacco products under the brand names “HEETS” or “HeatSticks” are inserted and heated to generate a flavourful nicotine-containing aerosol. The IQOS product first went on sale in Japan in 2014, where it has gained 18.3 percent market share. At this point, the IQOS product is on sale in 51 markets around the world. In the United States, the sale of such products requires regulatory approval from the Food & Drug Administration. According to the Complaint, the sale of such products without the necessary regulatory approval is illegal. Philip Morris group has marketing approval for, and offers for sale, version 2.4 of its IQOS product in the United States. This version uses “HeatSticks” inserts. The IQOS product has been developed to a version 3. Version 3 uses “HEETS” brand inserts. This version does not have regulatory approval in the United States and, according to the Complaint, offering it for sale there is illegal. The Complainant holds: (a) an International Registration, Number 1326410 for HEETS, for goods in International Classes 9, 11, and 34 which was registered on July 19, 2016, and designating numerous countries or jurisdictions, including inter alia, China, the European Union, Japan, and the United States; (b) an International Registration, Number 1328679 for a figurative version of HEETS, which was registered on July 20, 2016, for goods in International Classes 9, 11, and 34; (c) United States Registered Trademark Number 5,471,867, HEETS, in respect of batteries and charges for electronic cigarettes and related devices in International Class 9, which was registered in the United States on May 22, 2018 and claims priority from International Registration No. 1326410; (d) United States Registered Trademark No. 5,238,861 for the figurative version of HEETS in respect of goods in International Classes 9, 11, and 34, which was registered in the United States on July 11, 2017 and claims priority from International Registration No. 1328679; (e) United States Registered Trademark No. 5,860,364, HEETS, in respect of tobacco sticks in International Class 34, registered on September 17, 2019. As noted above, the Respondent registered the disputed domain name on September 14, 2019. Prior to the Complaint being filed, the disputed domain name resolved to a website offering the Philip Morris group’s IQOS version 3, with HEETS inserts, for sale. The website had a heading “Heetssales BUY HEETS ONLINE USA – Buy Iqos in US”. In the top, left corner of the landing page, there was a banner, or heading, “HEETSALES”, in the figurative style of the Complainant’s figurative trademark. The website offered free shipping of products purchased through the site to all of the United States, with the apparent exceptions of Arizona, Alaska or Hawaii. In the middle of the screen on the landing page, in very prominent type, larger than the other type on the page appears: “What is IQOS Heated Tobacco Technology At the very bottom of the page in a section headed “About Us” there was the following statement: “This website and its content is copyright of this website unofficial IQOS online store. At the time this decision is being prepared, the disputed domain name resolves to a page which states “Sorry we are closed ! :-(“ 5. Discussion and Findings No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to its case. When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable. Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following: (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 has been registered and is being used in bad faith. The Panel finds that English, as the language of the registration agreement, is the appropriate language of the proceeding. See paragraph 11 of the Rules and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5. Furthermore, the Panel notes the Respondent has provided an address in the United States and the website to which the disputed domain name resolved was in English and offered products for sale throughout the United States, where the official language is English. A. Identical or Confusingly Similar The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights. There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark. The Complainant has proven ownership of a number of registered trademarks for HEETS in plain text and a figurative version including the three trademarks registered in the United States identified in section 4 above. The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See, e.g., WIPO Overview 3.0, sections 1.7 and 1.11. Disregarding the “.com” gTLD as a functional component of the domain name system, the disputed domain name fully incorporates the Complainant’s trademark and adds the suffix “sales”. The addition of such a descriptive term to the Complainant’s trademark does not avoid a finding of confusing similarity. See WIPO Overview 3.0, section 1.8. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or (iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1. The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with the Philip Morris group. The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name. The Complainant states that it does not know if the products the Respondent is offering for sale are genuine Philip Morris products. It points out, however, that it is not legal to offer the IQOS version 3 device and associated HEET sticks in the United States at this time. Even if the products were genuine, the Complainant also contends that the website does not comply with the requirements derived from Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. That is: (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. See also WIPO Overview 3.0, section 2.8.1. In the present case, the Complainant contends that the third requirement has not been satisfied. As noted above, the website did include a form of disclaimer, stating it was an unofficial IQOS online store. The Complainant points out that the disclaimer is at the very bottom of the page, in small type and might never been seen by many people visiting the website. The Complainant claims the form and content of the disclaimer is ambiguous and vague. Its message is further confused as, according to the Complainant, the website featured official product photographs and representations used by the Philip Morris group. Also, the prominent text answering the question what the IQOS system is, described it as “our” innovative alternative to smoking. The Complainant contends that this conveyed to a reader of the page that the operator of the website was the inventor or person responsible for the IQOS system, not just an unaffiliated reseller. Without endorsing the adequacy of the disclaimer in the circumstances, it is sufficient to note that the sale and offering for sale of products in the United States which do not have the required regulatory approvals and so is prohibited under United States law cannot qualify as a good faith offering of goods under the Policy. Accordingly, the Complainant has established a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant. It is plain from the nature and content of the Respondent’s website that the Respondent was well aware of the Philip Morris group and the Complainant’s trademark. The Respondent’s registration of the disputed domain name and use of it to offer for sale goods under the Complainant’s trademark in breach of the relevant regulatory requirements, therefore, constitutes registration and use in bad faith under the Policy. Accordingly, the Complainants have established all three requirements under the Policy. 6. 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 Warwick A. Rothnie
IQOS is our innovative alternative to smoking.”
All product and company names are trademarks™ or registered® trademarks of their respective holders.
‘IQOS’,’HEETS’ and ‘Heatsticks’ are registered trademarks of PMI (Phillip Morris International Inc.) in the United States and/or other countries.
Contact us to email heetssales@[...]”
Sole Panelist
Date: March 30, 2020
Full & Egal Universal Law Academy