The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Maksim Sergeevich Bessonov, Russian Federation (“Russia”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2020. On March 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 2020, 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 March 24, 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 March 25, 2020. On March 26, 2020, the Respondent sent an email communication in which it provided different registrant information. 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 April 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 22, 2020. The Respondent did not submit any response. Accordingly, on April 23, 2020, the Center informed the Parties that it will proceed to appoint a panel. The Center appointed Gareth Dickson as the sole panelist in this matter on May 11, 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 subsidiary of Philip Morris International, Inc (“PMI”). As part of its transformation from combustible cigarettes to what it calls “Reduced Risk Products”, PMI has developed a product called IQOS, into which a specially designed tobacco product under the brand names “HEETS” and “HeatSticks” is inserted and heated to generate a flavourful nicotine-containing aerosol. The Complainant is the registered proprietor of a number of trade marks for HEETS (the “Mark”), including: - International Registration No. 1326410 registered on July 19, 2016 designating amongst others the European Union (“EU”), Russia, and the United States of America (“USA”); and - International Registration HEETS No. 1328679 registered on July 20, 2016 designating amongst others the EU, Russia, and the USA. The disputed domain name was registered on October 10, 2019. It currently directs Internet users to an online shop which appears to sell and offer for sale the Complainant’s IQOS System as well as competing third party products and to do so while making prominent, and unauthorised, use of the Mark and the Complainant’s official product images. It purports to ship these products worldwide, whereas the IQOS System can only lawfully be sold in certain countries. The Complainant’s HEETS sticks are not currently authorised for sale or marketing in the USA. 5. Parties’ Contentions A. Complainant The Complainant alleges that since the disputed domain name reproduces the HEETS trade mark in its entirety along with the term “cheap”, the disputed domain name is confusingly similar to the Mark. The Complainant states that its IQOS products, into which the HEETS product is inserted, have to date been distributed through its group’s official stores and websites alone and asserts that it has not licensed or otherwise permitted the Respondent to use its HEETS trade mark or its official product images. The Complainant provides examples of the website found via the disputed domain name (the “Website”), on which there appear to be offered for sale the Complainant’s HEETS products in a manner which indicates that the Respondent is connected to or authorised by the Complainant (e.g. the prominent use of the HEETS trade mark and the Complainant’s own images), contrary to the fact. The Complainant states that it cannot be sure that the products offered on the Website are genuine IQOS products, but alleges that the Website holds itself out as being that of an official dealer, or as being otherwise affiliated with the Complainant. In addition to using the HEETS trade mark in the disputed domain name and on the Website, the Website also displays the Complainant’s IQOS mark. The Complainant argues that the Website does not show any details regarding the Respondent as the provider of the Website and contains only a small and imprecise disclaimer referring to the fact that the Website is not affiliated with PMI, but omitting any specific mention of the HEETS trade mark. The Complainant also states that the Respondent lacks rights or legitimate interests in respect of the disputed domain name since it has not licensed or otherwise permitted the Respondent to use any of its trade marks or to register the disputed domain name, and since the Respondent cannot be making a legitimate noncommercial or fair use of the disputed domain name by selling in the USA products which are not authorised for sale there. The Complainant also argues that the Respondent fails to meet the requirements of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, which sets out the conditions under which it is generally accepted that a reseller of genuine goods (if indeed the goods on the Website are genuine goods) may be able to establish rights or legitimate interests in respect of a domain name. The Complainant also argues that the disputed domain name was registered and is being used in bad faith. The Respondent began to use the disputed domain name and the Website to offer IQOS and HEETS products immediately after registration, demonstrating that the Respondent knew of the Mark when registering the disputed domain name, and it uses the Website to sell products which compete with the Complainant. The sale of unauthorised products in the USA is also cited as evidence of the Respondent’s bad faith, as is its use of the Complainants photographs and of a privacy protection service. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that: a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and c) the disputed domain name has been registered and is being used in bad faith. These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied. A. Identical or Confusingly Similar The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark. Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Panel therefore finds that the disputed domain name is confusingly similar to the Mark since the Mark is recognisable within the disputed domain name. The addition of “cheap” in the disputed domain name does not in any way distinguish the disputed domain name from the Mark nor prevent a finding of confusing similarity. Similarly the addition of the generic Top-Level Domain (“gTLD”) “.com” does not affect this finding. The disputed domain name is clearly intended to appear, and is, confusingly similar to the Mark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes 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. In the current proceeding, the Complainant has established its prima facie case. The evidence before the Panel is that the Mark is neither generic nor descriptive but enjoys a degree of inherent distinctiveness that makes a coincidental adoption by the Respondent highly unlikely. The Complainant states that it has not given the Respondent permission to use the Mark, in a domain name or otherwise, and submits that the Respondent has not been commonly known by the disputed domain name. There is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it, not least because it appears to be engaged in the sale of products in the USA which cannot lawfully be sold there: section 2.13.1 of the WIPO Overview 3.0 states that: “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”. Such consideration applies here. It must be noted that the use of a third party’s trade mark to offer genuine goods or services can in some circumstances be evidence of a bona fide offering of goods and services and thus constitute a legitimate interest in a domain name (see Section 2.8.1 of the WIPO Overview 3.0). For the purposes of the Policy, those circumstances have been set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”), which sets out four requirements which must all be met for the use to be considered legitimate. These requirements may be stated briefly as follows: - the Respondent must actually be offering the goods or services at issue; - the Respondent must use the site to sell only the trademarked goods; - the site must accurately disclose the registrant’s relationship with the trade mark owner; and - the Respondent must not try to corner the market in all domain names, thus depriving the trade mark owner of reflecting its own mark in a domain name. However, even assuming that the goods offered by the Respondent via the disputed domain name are genuine goods first put on the market by the Complainant or with its consent (which is not necessarily the case), the Respondent cannot benefit from Oki Data since: - The goods offered under the disputed domain name are not limited to those bearing the Complainant’s marks, but include goods which compete directly with goods sold under those marks; and - The Respondent does not appear to have accurately disclosed the lack of any relationship between it and the Complainant, notwithstanding that a commercial relationship will be inferred by the Respondent’s use of the Complainant’s trade marks in the disputed domain name. By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element. As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Panel notes that the disputed domain name was registered more than three years after the Mark was registered and was immediately used to provide access to a website which makes express reference to the Complainant’s products and its parent company and which uses the Complainant’s official product images. The Panel accepts that the disputed domain name was chosen by reference to the Mark. As a result, and in the absence of evidence from the Respondent that the similarity of the disputed domain name to the Mark is coincidental or permitted, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Mark when it registered the disputed domain name. The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Mark. The disputed domain name is also being used in bad faith. It is being used for a commercial purpose that involves redirecting Internet users (in particular those seeking the Complainant) to a competitor of the Complainant and is being used to sell products into jurisdictions where such sales are not lawful. Section 3.1.4 of the WIPO Overview 3.0 states: “[…] given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith”. The Respondent has not sought to explain their registration and use of the disputed domain name, has attempted to conceal its identity through use of a privacy protection service, and has not participated in these proceedings. As such there is no basis for the Panel to conclude that the Respondent’s use of the disputed domain name is justified. Therefore, and on the basis of the information available to it, the Panel finds that the Respondent has registered and is using the disputed domain name 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, Gareth Dickson
Sole Panelist
Date: May 25, 2020
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