The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Шматков Игорь Олегович / Shmatkov Igor, 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 August 28, 2020. On August 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 1, 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 September 7, 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 September 8, 2020. The Registrar confirmed that the language of the Registration Agreement for the Domain Name is Russian. On September 7, 2020, the Center sent an email communication in both English and in Russian to the Parties regarding the language of the proceeding. On September 8, 2020, the Complainant requested the language of the proceeding to be English. The Respondent did not submit any comments 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 September 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2020. The Center appointed Olga Zalomiy as the sole panelist in this matter on October 8, 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 (“PMI”). The Complainant is the owner of the HEETS trademarks worldwide, such as: - United Arab Emirates Registration HEETS (word) No. 256864 registered on December 25, 2017; - United Arab Emirates Registration HEETS (word/device) No. 256867 registered on December 25, 2017; - United Arab Emirates Registration IQOS (word) No. 211139 registered on May 16, 2016. The Respondent registered the Domain Name on December 16, 2019. The Domain Name resolves to a website offering for sale in the UAE purported HEETS products and IQOS systems. The website connected to the Domain Name is using several of the Complainant’s official product images without the Complainant’s authorization as well as the Complainant’s trademarks. No information about the owner of the website is provided. The website at the Domain Name promotes a Telegram channel under the name “IQOS HEETS CLUB”, which also uses the Complainant’s official product images without authorization. 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 an 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 trademark. The Complainant claims that the Domain Name incorporates the Complainant’s HEETS trademark in its entirety. The Complainant contends that the descriptive word “shop”, is insufficient to avoid finding of confusing similarity. The Complainant contends that the applicable generic Top-Level Domain (“gTLD”) in the Domain Name is viewed as a standard registration requirement, which 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; 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 or IQOS system; (ii) the website provided under the Domain Name does not meet requirements for bona fide offering of goods, because: (a) the composition of the Domain Name suggests an affiliation with the Complainant and its HEETS mark; (b) the owner / administrator of the website, prominently and without authorization presents the Complainant’s registered HEETS and IQOS marks, appearing within the website banner, which may confuse Internet users in believing that the website is affiliated with the Complainant; (c) the Respondent’s website uses the Complainant’s official product images without authorization; (d) the website provides no information regarding the identity of the provider of the website, which is only identified as “IQOS HEETS IN UAE”. The Complainant contends that the Respondent’s website promotes a Telegram channel under the name “IQOS HEETS CLUB”, which also uses the Complainant’s official product images without authorization. The Complainant alleges that the Respondent is either the same person or is connected to the same person as the respondent in the, Philip Morris Products S.A. v. Privacy Protection, Hosting Ukraine LLC/Лиза Загорова (Lisa Zagorova), WIPO Case No. D2020-084 (the “D2020-0847 case”), because of the following circumstances: 1) the Telegram channel promoted on the website at the Domain Name, refers to the website connected to the ˂getheet.com˃ domain name, which is the domain name subject of the D2020-0847 case; 2) the layout and content of both websites are substantially identical. The Complainant claims that because its IQOS System is primarily distributed through official/endorsed store, consumers are being misled regarding the relationship between the website and the Complainant, and will mistakenly believe that the website under the Domain Name is an official/endorsed distributor. 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 trademark 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 trademark 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 involvement in the bad faith registration and use of the domain name ˂getheet.com˃ shows a pattern of bad faith conduct in connection with domain names incorporating the Complainant’s trademark. 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. Procedural Issue - 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 would be Russian. However, the Complainant requested that English be the language of the administrative proceeding because of the following reasons: (i) the Respondent is capable of communicating in English, while the Complainant cannot communicate in Russian without incurring unnecessary expenses. The Complainant asserts that the Respondent understands English because the Domain Name is in Latin script and not in Cyrillic script and because the website under the Domain Name is in English; and (ii) the Complainant, which is a Swiss entity, is unable to communicate in 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 finds as (i) the Center notified the Respondent of the language of the proceeding in both English and Russian, and invited it to comment on the Complainant’s request for English to be the language of the proceeding, and hence the Respondent could have objected to the Complainant’s request. However, the Respondent failed to submit such objection after the Complainant filed its request to conduct the proceeding in English; (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 participate in the proceeding in the Russian language; (iii) the Respondent appears to understand English because the website connected to the Domain Name is in English; so conducting the proceeding in English will not be unfair to the Respondent. Considering the above, the Panel grants the Complainant’s request that English be the language of this proceeding. 6.2 Substantive Issues 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 Respondent has registered and is using the Domain Name 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 submitted evidence shows that the Complainant owns several trademark registrations for the HEETS trademark. Pursuant to section 1.2.1 of the WIPO Overview 3.0, this satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. “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.”1 It is well-established, that the applicable gTLD should be disregarded under the confusingly similarity test as a standard registration requirement.2 The Domain Name consists of the Complainant’s HEETS trademark, a hyphen, a descriptive term “shop” and the gTLD “.xyz”. Because the Complainant’s HEETS trademark is recognizable within the Domain Name, neither the inclusion of the hyphen, nor the addition of the descriptive term “shop” or the gTLD “.xyz” detracts from confusing similarity. Therefore, the Domain Name is confusingly similar to the Complainant’s HEETS trademark. The Complainant has satisfied the first element of the UDRP. B. Rights or Legitimate Interests To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defenses under the UDRP, paragraph 4(c) include the following: (i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The evidence on file shows that the Complainant has not licensed or permitted the Respondent to use the Complainant’s HEETS trademark in domain names, or for any other purpose. The Respondent has not been commonly known by the Domain Name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name. Previous UDRP panels have recognized that resellers or distributors using domain names containing the 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 situations.3 Outlined in the Oki Data case4 , 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 trademark.”5 In this case, the Respondent’s use of the Domain Name does not satisfy requirements of such bona fide offering of goods and services. The Respondent used to use the Domain Name to direct to a website in English that was offering for sale in the United Arab Emirates purportedly the Complainant’s HEETS and IQOS products. The website at the Domain Name suggested affiliation between the Complainant and the Respondent because it displayed the Complainant’s HEETS and IQOS trademarks in the banner of the website associated with the Domain Name, the Complainant’s photographs of its products, a tagline “IQOS HEETS Dubai Free delivery” and contained no information about the website owner, identifying it simply as “IQOS HEETS IN UAE”. The website was offering for sale purported original HEETS products “made in Russia, Kazakhstan origin” and IQOS systems. Based on the foregoing, the Panel finds that the Complainant has made out the prima facie case in respect of the lack of rights or legitimate interests of the Respondent6 , so 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 Panel concludes that 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.”7 The Panel concludes, on the evidence submitted by the Complainant, that the Respondent has registered and used the Domain Name in bad faith. Given the renown of the Complainant’s HEETS marks, the Complainant’s subsisting trademark registrations in numerous countries and the Respondent’s subsequent use of the Domain Name for a website that sells goods under the Complainant’s HEETS and IQOS trademarks, the Respondent could not plausibly assert that, in registering the Domain Name, which fully incorporates the Complainant’s HEETS trademark in its entirety, he was not aware of the Complainant’s rights in the HEETS mark. It is likely that the Respondent registered the Domain Name to trade on the goodwill of the Complainant’s trademark. It is also likely that the Respondent is using the Domain Name in bad faith because it is likely seeking to cause confusion with the Complainant and its trademarks for his commercial benefit. The website at the Domain Name is designed to look like a website of an official or authorized reseller of the Complainant’s products. While the website contains no information about its owner, it purportedly sells in the UAE original HEETS products “made in Russia, Kazakhstan origin” as well as IQOS systems. The Respondent’s website prominently displays the Complainant’s HEETS and IQOS trademarks and the Complainant’s photographs of its products. The Respondent is using the Complainant’s HEETS trademark in the “GET HEETS IN UAE” tagline appearing at the top of the website connected to the Domain Name. The Panel concludes that the Respondent registered and 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. The Panel further finds that the Respondent registered and is using the Domain Name in bad faith 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 name . Based on the evidence presented, the Respondent is either the same person or is connected to the same person as the respondent in the D2020-0847 case, because of the following circumstances: 1) the Telegram channel promoted on the website at the Domain Name, refers to the website connected to the ˂getheet.com˃ domain name, which is the domain name subject of the dispute in the D2020-0847 case; 2) the layout and content of the websites in this case and in the D2020-0847 case are substantially identical. Therefore, the Panel finds that the Domain Name was registered and is being used in bad faith. 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 disputed domain name Olga Zalomiy 1 Section 1.8., WIPO Overview 3.0. 2 Section 1.11.1, WIPO Overview 3.0. 3 Section 2.8.1, WIPO Overview 3.0. 4 Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. 5 Id. 6 Section 2.1, WIPO Overview 3.0. 7 Section 3.1.4, WIPO Overview 3.0.
Sole Panelist
Date: October 20, 2020
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