The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Mykhailo Voloshyn, 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 October 27, 2020. On October 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 9, 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 November 12, 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 November 16, 2020. On November 24, 2020, the Center sent an email to the Parties in English, Ukrainian, and Russian regarding the language of the proceedings. On November 25, 2020, the Complainant requested that English be the language of the proceedings and provided respective arguments in support of its request. The Respondent did not provide any comments regarding the language of the Proceedings. 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 in English, Ukrainian, and Russian, and the proceedings commenced on November 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 24, 2020. The Center appointed Taras Kyslyy as the sole panelist in this matter on January 4, 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 company, which is part of the group of companies affiliated to Philip Morris International Inc., an international tobacco company. The Complainant inter alia owns HEETS International trademark registrations as follows: - No. 1328679, registered on July 20, 2016; and The Complainant inter alia also owns IQOS International trademark registrations as follows: - No. 1218246, registered on July 10, 2014; and The disputed domain name was registered on June 1, 2020, and was used for a website selling tobacco smoking devices and accessories branded with the Complainant’s trademarks. The website was in English and German languages. At the time of drafting of the decision, the disputed domain name resolves to an inactive website. 5. Parties’ Contentions A. Complainant The disputed domain name is identical or confusingly similar to the Complainant’s trademarks. The disputed domain name entirely incorporates the Complainant’s trademark. Additions of the generic Top-Level Domain (“gTLD”) “.net” and the non-distinctive number “24” do not add any distinctiveness to the disputed domain name. The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use its trademarks and to register the disputed domain name. The Respondent has a clear intent to obtain commercial gain with a view to misleadingly divert consumers or tarnish the trademarks owned by the Complainant. The website at the disputed domain name is designed to make an impression it is related to or authorized by the Complainant, which is not true, and does not clarify the real Respondent’s relationship to the Complainant. All these cannot be considered a bona fide offering of goods. The disputed domain name was registered and is being used in bad faith. The Respondent knew of the Complainant’s trademarks when registering the disputed domain name. The Respondent registered and used the disputed domain name with the intention of attracting, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of its website or location or a product or service on its website or location. The website at the disputed domain name inter alia directs its sales of the tobacco products to the United States of America, while such activities lack respective approval under the local legislation and are illegal. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of Proceedings The Complaint was filed in English. The languages of the Registration Agreement for the disputed domain name are Russian and Ukrainian. Paragraph 11(a) of the Rules provides that “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 Panel may also order that any documents submitted in a language other than that of the proceeding be translated. However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM,WIPO Case No. D2006-0334). In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties. According to section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), 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, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement. The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that the Respondent must be familiar with the English language since (i) the disputed domain name is comprised of Latin characters, (ii) the website at the disputed domain name includes English words and/or phrases, (iii) the privacy registration service used by the Respondent conducts its business in English. The Complainant also believes that the language of the proceedings shall be English, otherwise due to additional costs and undue delay the Complainant would be unfairly disadvantaged. The Panel further notes that no objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Russian or Ukrainian, the languages of the Registration Agreement. This was despite the Center notifying the Respondent in Ukrainian, Russian, and English that the Respondent was invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known its preference but did not do so. The Panel also notes that the content of the website under the disputed domain name was also in English. The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian and/or Ukrainian. Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English. B. Identical or Confusingly Similar The gTLD “.net” in the disputed domain name is viewed as a standard registration requirement and is disregarded for the purposes of the confusing similarity test (see, e.g., Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275). According to section 1.7 of the WIPO Overview 3.0, in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. According to section 1.8 of the WIPO Overview 3.0 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 disputed domain name reproduces the HEETS trademark in its entirety, in addition to the number “24”. Considering the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant did not license or otherwise agree on the use of its prior registered trademarks by the Respondent (see, e.g., Sportswear Company S.P.A. v. Tang Hong,WIPO Case No. D2014-1875). According to section 2.8.1 of the WIPO Overview 3.0, resellers or distributors using a domain name containing a complainant’s trademark to undertake sales related to the complainant’s goods may be making a bona fide offering of goods and thus have a legitimate interest in such domain name. Outlined in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (the “Oki Data Test”), the following cumulative requirements will be applied in the specific conditions of a UDRP case: (i) the respondent must actually be offering the goods at issue; (ii) the respondent must use the site to sell only the trademarked goods; (iii) the site must accurately and prominently disclose the registrant’s relationship with trademark holder; and (iv) the respondent must not try to “corner the market” in domain names reflecting the trademark. The Panel finds that the Respondent failed to satisfy the third of the above requirements by not disclosing its actual relationship or lack thereof with the Complainant, and thus failed to pass the Oki Data Test. The Respondent’s use of the disputed domain name misleads consumers into thinking that the website is operated by or affiliated with the Complainant. As such, the Respondent’s use of the disputed domain name cannot be considered bona fide. Furthermore, the Respondent provided no evidence that it otherwise holds rights or legitimate interests in the disputed domain name. Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith The Respondent’s use of the disputed domain name to purport to sell the Complainant’s products applying Complainant’s trademarks HEETS and IQOS shows that at the time of the registration of the disputed domain name the Respondent clearly knew and targeted the Complainant’s prior registered trademarks, which confirms its bad faith (see, e.g., The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113). According to paragraph 4(b)(iv) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “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”. In this case, the disputed domain name resolved to website featuring the Complainant’s trademarks and making false impression of being the Complainant’s website to intentionally attract Internet users by creating likelihood of confusion with the Complainant’s trademarks as to the source of the website and its products. The Panel finds the above confirms the disputed domain name was registered and used in bad faith. Although at the time of this decision the disputed domain name resolves to inactive webpage, its previous bad faith use and lack of explanation of possible good faith use from the Respondent makes any good faith use of the disputed domain name implausible. Thus, the current passive holding of the disputed domain name does not prevent a finding of bad faith (see, e.g., Abbott Diabetes Care Inc. v. Privacy Protection, Hosting Ukraaine LLC / Виталий Броцман (Vitalii Brocman),WIPO Case No. DPW2017-0003). Considering the above, the Panel finds the disputed domain name was registered and are being used in bad faith, therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy. 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 Taras Kyslyy
- No. 1326410, registered on July 19, 2016.
- No. 1329691, registered on August 10, 2016.
Sole Panelist
Date: January 12, 2021
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