The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Privacy Protection, Hosting Ukraine LLC, Ukraine / Лиза Загорова (Lisa Zagorova), 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 April 7, 2020. On April 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 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 April 14, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent a communication regarding the language of proceeding in English and in Russian to the Parties and invited the Complainant to respond by April 17, 2020 and the Respondent to comment on the Complainant’s response by April 19, 2020. On April 15, 2020, the Complainant filed an amended Complaint and a request for English to be the language of the proceeding. The Respondent did not comment 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, and the proceedings commenced on April 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 13, 2020. The Center appointed Assen Alexiev as the sole panelist in this matter on May 25, 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 United Arab Emirates trademark HEET with registration No. 253931, registered on March 5, 2018 for goods in International Class 34 (the “HEET trademark”); - the United Arab Emirates trademark HEETS with registration No. 256864, registered on December 25, 2017 for goods in International Class 34; and - the United Arab Emirates trademark HEETS with registration No. 256867, registered on December 25, 2017 for goods in International Class 34 (the “HEETS trademark”). The disputed domain name was registered on February 10, 2020. It resolves to an English language website with the title “IQOS Heets Dubai. Same day delivery | One box = 139 AED”, which sells the Complainant’s HEETS and IQOS products and offers delivery in Dubai, Abu Dhabi, Ajman, Sharjah and Ras Al Khaima. All prices on the website are indicated in United Arab Emirates dirham (AED) currency. 5. Parties’ Contentions A. Complainant The Complainant states that the disputed domain name is confusingly similar to the HEET trademark in which the Complainant has rights, as it includes a misspelling of the trademark through the addition of an extra “e” in the word “heeet”, together with the dictionary word “get”. The Complainant submits that the Respondent lacks any right or legitimate interest in the disputed domain name, as the Complainant has not licensed or otherwise permitted the Respondent to use the HEET trademark or to register a domain name incorporating it. According to the Complainant, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but intends to obtain an unfair commercial gain by misleadingly diverting consumers. The Respondent is not an authorized distributor or reseller of the IQOS system, and the website at the disputed domain name does not meet the requirements for a bona fide offering of goods. The disputed domain name suggests an affiliation with the Complainant and its HEET trademark, and the associated website purports to be an official retailer of the Complainant’s HEETS tobacco products in United Arab Emirates by prominently using the Complainant’s HEET trademark within the website’s banner and a number of the Complainant’s official product images without the Complainant’s authorization. The website includes no information regarding the identity of its provider, which is only identified as “Iqos Heets in UAE”, and contains an unremarkable disclaimer at the bottom of the website, after the offers for visitors to the website to make purchases from it, so it is likely that users will order products in the online store without scrolling all the way to end of the page and without recognizing the disclaimer. The disclaimer makes no mention of the HEET trademark, who owns it and the relationship or lack thereof between the provider of the website and the trademark. According to the Complainant, the presence of this disclaimer confirms that the Respondent was aware of the Complainant’s trademarks when it registered the disputed domain name. 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 the Respondent knew of the Complainant’s HEET trademark when registering it, and its registration was made with the intention of invoking a misleading association with the Complainant, as the Respondent started offering the Complainant’s Iqos system immediately after registering the disputed domain name through a website that suggests an affiliation to the Complainant and uses the Complainant’s trademarks and official product images. The Complainant also notes that the Respondent is using a privacy protection service to hide its true identity. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Procedural issue - Language of the Proceeding According to the information provided by the Registrar, the language of the Registration Agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, 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 regard to the circumstances of the administrative proceeding. The Complainant requests that the language of the proceedings be English, stating that the circumstances of the case show that the Respondent has knowledge of the English language, as the website under the disputed domain name is in English, while the Complainant is not capable of providing the Complaint in the language of the registration agreement without unreasonable effort and costs. The Center has sent all its communications to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has not submitted a Response or any objections to the Complainant’s request that the proceedings be held in English. As noted by the Complainant, the whole content of the website at the disputed domain name is in English. The above satisfies the Panel that the Respondent can communicate in English, and that the Respondent would not be disadvantaged if the language of the proceeding is English, and is satisfied that using the English language in this proceeding would be fair and efficient. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English. 6.2. Substantive issues 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 HEET trademark. 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 for purposes of the first element is therefore the sequence “getheeet”. It consists of the elements “get” and “heeet”. The “get” element is a dictionary word with no distinctiveness, while the “heeet” element is confusingly similar to the HEET trademark, as the only difference between them is the addition of a third letter “e” in the disputed domain name, which does not alter the pronunciation and overall appearance of the disputed domain name, in which the HEET trademark is clearly recognizable. As discussed in section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of dictionary words would not prevent a finding of confusing similarity under the first element, and as discussed in section 1.9 of the WIPO Overview 3.0, a domain name which consists of an obvious misspelling of a trademark is considered by UDRP panels to be confusingly similar to the relevant mark for purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark. In view of the above, the Panel finds that the disputed domain name is confusingly similar to the HEET trademark in which the Complainant has rights. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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 HEET trademark 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 attempts to mislead and attract Internet users by using the disputed domain name for a website that offers the Complainant’s HEETS and IQOS products for sale and displays the Complainant’s HEETS trademark and official product images of the Complainant’s products in the website without authorization by the Complainant. The Complainant notes that the disclaimer on the website at the disputed domain name does not prevent the confusion of Internet users, as it is located at the bottom of the website below the products offerings, so it is likely that users will order products in the online store without scrolling all the way to end of the page and without recognizing the disclaimer. 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 HEET trademark. It resolves to website that offers the Complainant’s HEETS and IQOS products and displays the HEETS trademark, as well as official product images of the Complainant’s products without identifying the supplier of the offered goods and without properly disclosing the lack of relationship between the Parties. 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. This requirement has not been complied with in the present case. The website at the disputed domain name contains the statements “Our online store has the most profitable heets cost, which is regularly reduced through promotions and discounts. Low prices are due to direct cooperation of our company with the manufacturer of tobacco sticks and work online” and “NEW IQOS HEETS HEETS CREATION Buy only original HEETS CREATION from verified sellers in UAE”. The disclaimer on the website is located at the bottom of the website, and as noted by the Complainant, Internet users may see it only after having arrived at the website and having seen the commercial offers on it and the statements cited above, which greatly diminishes the effect of the disclaimer. The effect of the disclaimer is further diminished by the fact that the provider of the goods offered on the associated website is identified as “Iqos Heets in UAE”, thus referring to the Complainant. 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 HEET trademark, has registered and used the disputed domain name in an attempt to exploit the goodwill of this trademark to attract Internet users to the Respondent’s website which offers the Complainant’s products without properly 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 names. 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.” The disputed domain name incorporates a confusingly similar misspelling of the HEET trademark. The Respondent does not deny that it is linked to a website targeting the United Arab Emirates that offers the Complainant’s IQOS and HEETS products and displays the HEETS trademark and official product images of the Complainant’s IQOS products without identifying the supplier of the offered goods and without properly disclosing the lack of relationship between the Parties, thus creating a false impression that the website at the disputed domain name is affiliated to the Complainant. In view of this and in the lack of any evidence to the contrary, the Panel finds that is more likely than not that by registering and using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s HEET trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’ website or of the products offered on it. 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: June 12, 2020
Full & Egal Universal Law Academy