The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Stepan Malik (S.M.), Heets Store, Ukraine. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2020. On November 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 10, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 13, 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. 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 November 18, 2020. On November 18, 2020, the Center received an email communication from the Respondent offering settlement. The Complainant requested suspension of the proceedings on November 27, 2020. No settlement was reached and the proceedings were reinstituted on December 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2020. The Respondent did not submit a formal response. Accordingly, on January 13, 2021, the Center informed the Parties that it would proceed to appoint a panel. The Center appointed Olga Zalomiy as the sole panelist in this matter on January 15, 2021. 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 part of the group of companies affiliated with Philip Morris International Inc., an international tobacco company (“PMI”). The Complainant is the owner of the IQOS and HEETS trademarks worldwide, such as: - International Registration No. 1328679 for the combined HEETS mark, registered on July 20, 2016 designating Ukraine, among other countries; The Respondent registered the Domain Name The Complainant asserts 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 alleges that the Domain Names are identical or confusingly similar to the Complainant’s HEETS trademark. The Complainant claims that the Domain Names incorporate the Complainant’s HEETS trademark in its entirety. The Complainant contends that the descriptive word “shop” or the descriptive word “magaz” are insufficient to avoid finding of confusing similarity. The Complainant states that the applicable generic Top-Level Domain (“gTLD”) in the Domain Names is viewed as a standard registration requirement, which is disregarded under the confusing similarity test. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Names because of the following reasons: 1) the Respondent is neither an authorized distributor or reseller of the IQOS system; 2) the Respondent’s websites provided under the Domain Names do not meet the requirements set out by numerous panel decisions for a bona fide offering of goods because the Respondent’s websites are selling competing tobacco products and/or accessories of other commercial origin; 3) the Respondent is not making a legitimate noncommercial or fair use of the Domain Names, because the websites provided under the Domain Names do not meet requirements for bona fide offering of goods, because: (a) the composition of the Domain Names suggests an affiliation with the Complainant and its HEETS mark; (b) the owner / administrator of the websites, prominently and without authorization presents the Complainant’s registered HEETS mark, appearing at the top left corner of the websites, which may confuse Internet users in believing that the websites are affiliated with the Complainant; (c) the Respondent’s websites uses the Complainant’s official product images without authorization; (d) the websites provide no information regarding the identity of the provider of the websites, which are only identified as “HEETS-SHOP” or “Heets-Store (Cherkasy)” / “IQOS-SHOP” respectively. The Complainant claims that because its IQOS System is primarily distributed through official/endorsed store, consumers will mistakenly believe that the websites under the Domain Names are official/endorsed distributors. The Complainant states that the Respondent’s registration and use of the Domain Names constitutes bad faith because the Respondent knew of the Complainant’s HEETS trademark at the time of the Domain Names’ registration. The Complainant contends that the Respondent chose the Domain Names 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 is using the Domain Names 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 Names and by using the Complainant’s images, the Respondent’s websites suggest the affiliation between the Complainant and the Respondent. The Complainant argues that the Respondent’s use of the Complainant’s HEETS trademark for the purposes of offering for sale the IQOS System and for purposes of offering for sale third party products of other commercial origin constitute clear evidence of the Respondent’s bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 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 Names: (i) the Domain Names are 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 Names; and (iii) the Respondent has registered and is using the Domain Names in bad faith. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must prove that the Domain Names are 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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 Here, each of the Domain Names consists of the Complainant’s HEETS trademark, a hyphen, either a descriptive term “store” or the descriptive term “magaz”, which is the colloquial term for a store in Russian, and the gTLD “.online”. Because the Complainant’s HEETS trademark is recognizable within the Domain Names, neither the inclusion of the hyphen, nor the addition of the descriptive term “shop” or a descriptive term “magaz”, or the gTLD “.online” detracts from confusing similarity. Thus, the Domain Names are confusingly similar to the Complainant’s HEETS trademark. The Panel finds that the Complainant has satisfied the first element of the UDRP. B. Rights or Legitimate Interests To satisfy the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent3 . Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on the evidence, shall demonstrate a respondent’s rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the UDRP: (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 Names. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Names. 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. Outlined in the Oki Data case 4, 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 The Panel finds the Respondent’s conduct inconsistent with bona fide offering of goods and service given that the Respondent is using the websites at the Domain Names to sell he Complainant’s IQOS systems and HEETS products along with goods of the Complainant’s competitors. Further, the websites at the Domain Names suggested affiliation between the Complainant and the Respondent because they display the Complainant’s photographs of its products and either a tagline “HEETS-SHOP” and “HEETS-STORE” respectively. Further, the Respondent’s “www.heets-store.online” website displays photographs of the Respondent’s store located at a galleria mall. The photographs show large interior and exterior store signs “IQOS”, which exacerbates the impression that the Respondent is an official or authorized IQOS deals that runs an official store selling the IQOS systems. For the reasons stated, 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 Respondent in the Domain Names. Once a complainant makes a prima facie case, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Domain Names. 6 The Respondent has failed to do so. Thus, the Panel concludes that the Complainant has 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 Names were registered and are 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”7 . The Panel concludes, on the evidence submitted by the Complainant, that the Respondent has registered and is using the Domain Names in bad faith. Given the reputation of the Complainant’s HEETS marks, the Respondent’s use of the Domain Names incorporating the Complainant’s trademark for the websites that sell goods under the Complainant’s HEETS and IQOS trademarks, and the Respondent’s use of the Complainant’s mark in the large storefront sign, the Respondent could not plausibly assert that he did not register the Domain Names to trade on the goodwill of the Complainant’s trademark. Further, the evidence shows that the Respondent’s websites at the Domain Names are designed to look like websites of an official or authorized reseller of the Complainant’s products. While the websites contain no information about their owner, they purportedly sell in Ukraine original IQOS systems and HEETS products. The Respondent’s websites prominently display 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 “HEETS-SHOP” and “HEETS-STORE” taglines appearing at the top left corner of the websites connected to the Domain Names. The photographs displayed on the Respondent’s “www.heets-store.online” website also show that the Respondent is using the Complainant’s IQOS trademark on the large storefront sign and on the internal store sign. The Panel concludes that the Respondent registered and is using the Domain Names 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. Finally, the Panel finds that the Respondent registered and used the Domain Names in bad faith, because the Respondent has been engaged in a pattern of registering domain names preventing the Complainant from reflecting its HEETS mark in corresponding domain names as contemplated in paragraph 4(b)(ii) of the UDRP. Prior UDRP panels have held that “establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration” 8, such as a situation where, like here, “a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner. 9 The evidence on file shows that the website connected to the ˂heets-store.online˃ Domain Name is using the same photographs of the purported Respondent’s store located at a galleria mall as the respondent in the case Philip Morris Products S.A. v. Маханьков Михаил Владимирович / Makhankov Mikhail,WIPO Case No. D2020-2793. Furthermore, the website under that Domain Name shows that the contact person for the Respondent’s store is Маханьков Михаил, who was the respondent in Philip Morris Products S.A. v. Маханьков Михаил Владимирович / Makhankov Mikhail, supra. In addition, the address for both stores in Philip Morris Products S.A. v. Маханьков Михаил Владимирович / Makhankov Mikhail, supra and the present case are also identical. Finally, the websites connected to the domain name in Philip Morris Products S.A. v. Маханьков Михаил Владимирович / Makhankov Mikhail, supra and to the ˂heets-store.online˃ Domain Name promote the same Telegram channel under the name “IQOS-shop”. Based on the evidence presented, the Panel finds that the Domain Names were registered and are 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 Domain Names Olga Zalomiy 1 Section 1.8, WIPO Overview 3.0. 2 Section 1.11.2, WIPO Overview 3.0. 3 Section 2.1, 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. 8 Section 3.1.2, WIPO Overview 3.0. 9 Id.
- International Registration No. 1326410 for the HEETS mark, registered on July 19, 2016 designating Ukraine, among other countries;
- International Registration No. 1218246 for the IQOS mark, registered on July 10, 2014 designating Ukraine, among other countries;
- International Registration No. 1461017 for the combined IQOS mark, registered on January 18, 2019 designating Ukraine, among other countries.
Sole Panelist
Date: January 22, 2020
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