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 / Кузьменко Егор Александрович / Kuzmenko Egor, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2021. On March 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 27, 2021, 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 April 6, 2021, 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 April 6, 2021. On April 6, 2021, the Center sent an email in English and Russian regarding the language of the proceeding. On the same day, the Complainant requested that the language of the proceeding be English, noting also the Complainant had already submitted its language request at paragraph 10 of the Complaint. The Respondent has not replied 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 in both Russian and English language, and the proceedings commenced on April 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default in both Russian and English language on May 5, 2021. The Center appointed Olga Zalomiy as the sole panelist in this matter on May 17, 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 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/design) No. 256867 registered on December 25, 2017; -United Arab Emirates Registration IQOS (word) No. 211139 registered on March 16, 2016; -United Arab Emirates Registration (word/stylized) No. 257763 registered on April 22, 2018; and - United Arab Emirates Registration (word/stylized) No. 305079 registered June 27, 2019. The Respondent registered the Domain Name on March 9, 2021. The Respondent has been using the Domain Name to direct to an online store purportedly offering for sale in the United Arab Emirates Complainant’s HEETS products and IQOS systems. The website is using several of the Complainant’s official product images without the Complainant’s authorization as well as the Complainant’s trademarks. 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 the leading 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 geographical indication “Dubai”, 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 and as such 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 IQOS system; (ii) the website provided under the Domain Name does not meet requirements for bona fide offering of goods, because: (a) the Domain Name in itself suggests at least 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 mark, appearing at the top left of the website (as a part of its logo “HEETS DUBAI online store”), where relevant consumers will usually expect to find the name of the online shop and/or the name of the website provider; (c) the Respondent’s website uses the Complainant’s official product images without authorization; (d) the website includes no information regarding the identity of the provider of the website, which is only identified as “Heets Dubai online store”. The Complainant claims that because its IQOS System is primarily distributed through official/endorsed stores, 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 and because the Respondent started offering the Complainant’s IQOS System immediately after registering the Domain Name. 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 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. 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 should 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 to communicate in 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 proceeding in both English and Russian, but the Respondent failed to respond to such notice and invitation to file a response in the proceeding; (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 proceed in the Russian language; (iii) the Respondent appears to understand English because the website connected to the Domain Name is in English; conducting the proceeding in English will not be unfair to either of the parties. Considering the above, the Panel grants the Complainant’s request that English be the language of this proceeding. 6.2. Substantive Elements of the Policy 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 Domain Name has been registered and is being used 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, hyphen, the geographical term “Dubai” and the gTLD “.com”. Because the Complainant’s HEETS trademark is recognizable within the Domain Name, neither the inclusion of the geographic term “Dubai”, nor the addition of hyphen or gTLD “.com” 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 is neither authorized distributor, nor authorized reseller of the Complainant’s products. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name as a reseller or distributor. Previous UDRP panels have recognized that resellers or distributors using domain names containing 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 situations3 . Outlined in the Oki Data4 case, 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 is using the Domain Name to direct to a website in English that is offering for sale in the United Arab Emirates purportedly the Complainant’s HEETS products and IQOS systems. The website at the Domain Name suggests affiliation between the Complainant and the Respondent because it displays the Complainant’s HEETS and IQOS trademarks, the Complainant’s photographs of its products and contains no information about the website owner, which suggests affiliation with or endorsement by the Complainant. The website at the Domain Name does not accurately and prominently disclose lack of relationship between the Respondent’s and the Complainant. The evidence on file also shows that the Respondent has not been commonly known by the Domain Name. To succeed under the second UDRP element, the Complainant must make out a prima facie case in respect of the lack of rights or legitimate interests of the Respondent.6 The Panel finds that the Complainant has made out the prima facie case and 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 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 mark and the Complainant’s subsisting trademark registrations in numerous countries, the Respondent could not plausibly assert that, in registering the Domain Name, which fully incorporates the HEETS trademark, 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. The website at the Domain Name is designed to look like a website of an official or authorized reseller of the Complainant’s products in Dubai. 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 top left corner of the Respondent’s website. The website at the Domain Name contains no information about its owner. The Panel concludes that the Respondent registered and is using the Domain Name to intentionally attempt to attract, for commercial gain, the 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. Such use is 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 Name Olga Zalomiy 1 Section 1.8, WIPO Overview 3.0. 2Section 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: May 21, 2021
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