The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Danil, Danil Vasilev, Ukraine. 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 24, 2020. On March 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 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 26, 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 27, 2020. 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 March 31, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 21, 2020. The Center appointed Assen Alexiev as the sole panelist in this matter on May 1, 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 affiliated to Philip Morris International Inc., which is a leading international tobacco company with products sold in about 180 countries. The Complainant’s group of companies has developed the IQOS system – a precisely controlled heating device into which specially designed tobacco products under the brand names HEETS and HEATSTICKS are inserted and heated to generate a nicotine-containing aerosol. The IQOS system was first launched in Japan in 2014 and has 18.3% share of the market in this country. The IQOS system is now available in key cities in 52 countries through official IQOS stores and websites and selected authorized distributors and retailers and has about 9.5 million users. The Complainant owns the following trademark registrations: - the International trademark HEETS with registration No.1326410, registered on July 19, 2016, for goods in International Classes 9, 11, and 34 for various jurisdictions, including Ukraine; and - the International trademark HEETS with registration No.1328679, registered on July 20, 2016, for goods in International Classes 9, 11, and 34 for various jurisdictions, including Ukraine (jointly referred to as the “HEETS trademark”); and - the International trademark HEATSTICKS with registration No.1217386, registered on July 21, 2014, for goods in International Class 34 for various jurisdictions, including Ukraine (the “HEATSTICKS trademark”). The disputed domain name was registered on January 15, 2020. It is currently inactive. At the time of filing of the Complaint it resolved to a Russian language website that sold the Complainant’s IQOS system and third-party products with prices indicated in Ukrainian Hryvnia, and provided an address in Ukraine and stated that it was a wholesale warehouse for IQOS products in Ukraine. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to the HEETS and the HEATSTICKS trademarks, as it incorporates the HEETS trademark in its entirety, with the addition of the dictionary word “sticks”, and the combination of these two elements renders the disputed domain name confusingly similar to the HEATSTICKS trademark. According to the Complainant, Internet users visiting the website associated to the disputed domain name would expect to find a website commercially linked to the owner of the HEETS and HEATSTICKS trademarks, and this association is exacerbated by the unauthorized use on the Respondent’s website of the Complainant’s official product images. The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name, as the Complainant has not permitted the Respondent to use the HEETS and HEATSTICKS trademarks or to register a domain name incorporating them, and the Respondent is not an authorized distributor or reseller of IQOS products. According to the Complainant, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but attempts to unfairly obtain commercial gain by misleadingly diverting consumers to its website, falsely suggesting an affiliation with the Complainant. According to the Complainant, the Respondent provides no information regarding its identity on its website and uses the HEETS trademark and an approximation of the HEATSTICKS trademark together with the Complainant’s official product images without authorization, falsely claiming copyright in this material, and sells competing tobacco products and accessories of other commercial origin. As a result, the Complainant claims, Internet users may falsely believe that the Respondent’s website is an official or endorsed store of the Complainant’s IQOS System. The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent’s use of the disputed domain name shows that when registering the disputed domain name, the Respondent knew of the HEETS and HEATSTICKS trademarks, and the HEETS trademark is imaginative and unique to the Complainant and is not commonly used to refer to tobacco products. The Respondent started offering the Complainant’s IQOS products alongside competing products of other commercial origin immediately after registering the disputed domain name. According to the Complainant, the Respondent chose the disputed domain name with the intention of invoking a misleading association with the Complainant since the Respondent has reproduced the HEETS and HEATSTICKS trademarks in the disputed domain name and the title of its website, which misleadingly suggests the Complainant or an affiliated dealer as the source of this 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 website and its contents. According to the Complainant, the above shows that the Respondent has registered and is using the disputed domain name with the intention to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s HEETS and HEATSTICKS trademarks as to the source, sponsorship, affiliation, or endorsement of its website, and offering for sale not only the IQOS System, but also third party products of other commercial origin. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 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. In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case. By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”. The Respondent however did not submit a Response in this proceeding. A. Identical or Confusingly Similar The Complainant has provided evidence and has thus established its rights in the HEETS and HEATSTICKS trademarks. 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). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). 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 “heets-sticks”. It consists of the elements “heets” and “sticks”. The “heets” element is identical to the HEETS trademark, and the whole combination is confusingly similar to the HEATSTICKS trademark, as the only differences between them – the replacement of the letter “a” by “e” and the insertion of a hyphen between “heets” and “sticks” does not alter the pronunciation and overall appearance of the disputed domain name, and the HEETS and HEATSTICKS trademarks are clearly recognizable in it. Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant trademark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of the WIPO Overview 3.0. In view of the above, the Panel finds that the disputed domain name is confusingly similar to the HEETS and HEATSTICKS trademarks 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 and HEATSTICKS trademarks or to distribute 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 IQOS products for sale alongside competing products, and displays the Complainant’s HEETS and an approximation of the HEATSTICKS trademarks and official product images in the website without authorization by the Complainant, while falsely claiming copyright in these materials. 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 or 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 and HEATSTICKS trademarks and Internet users may regard it as referring to a location where the Complainant’s IQOS products are offered for sale. The disputed domain name resolves to a website that offers the Complainant’s IQOS products and competing products of other manufacturers, displays the HEETS trademark and the sign “Heets-Sticks”, which is confusingly similar to the HEATSTICKS trademark, as well as official product images of the Complainant’s IQOS products without identifying the supplier of the offered goods and without disclosing the lack of relationship between the Parties, and claims copyright in the website. As summarized in section 2.8.1 of WIPO Overview 3.0, panels 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, among which are the requirements that the reseller’s or distributor’s website must accurately and prominently disclose its relationship with the trademark holder and must offer only the goods of the trademark holder. These two requirements have 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 and HEATSTICKS trademarks, has registered and used the disputed domain name in an attempt to exploit the goodwill of these trademarks to attract Internet users to the Respondent’s website which offers the Complainant’s products and competing 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 is confusingly similar to the HEETS and HEATSTICKS trademarks, which are registered for various jurisdictions, including Ukraine. The Respondent does not deny that the disputed domain name is linked to a website targeting the market in Ukraine that offers the Complainant’s IQOS products alongside competing products and displays the HEETS trademark and the sign “Heets-Sticks”, which is confusingly similar to the HEATSTICKS trademark, as well as official product images of the Complainant’s IQOS products without identifying the supplier of the offered goods and without disclosing the lack of relationship between the Parties, while at the same time falsely claiming copyright in the website. Therefore, the Panel finds that the disputed domain name was registered and has been 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 Assen Alexiev
Sole Panelist
Date: May 11, 2020
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