The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Heets оптом, ТОВ СТІКХІТС КОМ, Ukraine, Vitalij Solomin, Ukraine.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2021. On July 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 30, 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 August 4, 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 August 5, 2021.
On August 4, 2021, the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. On August 5, 2021, the Complainant reconfirmed its request that English be the language of the proceedings referring to 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 both English and Russian, and the proceedings commenced on August 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2021. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on September 15, 2021.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on October 18, 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 BackgroundPhilip Morris Products S.A., the Complainant in the present proceedings, is a part of the group of companies affiliated to Philip Morris International Inc. (jointly referred to as “PMI”). PMI is a cigarette and tobacco manufacturing company, with products sold in approximately 180 countries.
PMI has developed heated tobacco products, including IQOS. It is a heating device into which tobacco products under the brand names “HEETS” or “HEATSTICKS” are inserted and heated to generate a nicotine-containing aerosol. To date, the IQOS System has been almost exclusively distributed through PMI’s official IQOS stores and websites and selected authorized distributors and retailers.
The Complainant is the owner of, among others, the following trademark registrations:
- International Trademark Registration HEETS (word) No. 1326410 registered on July 19, 2016;
- International Trademark Registration (word/device) No. 1328679 registered on July 20, 2016;
- International Trademark Registration HEATSTICKS (word) No. 1217386 registered on July 21, 2014;
- International Trademark Registration IQOS (word) No. 1218246 registered on July 10, 2014;
- International Trademark Registration (device) No. 1329691 registered on August 10, 2016.
The Respondent registered the Domain Name on June 16, 2021.
As of the date of this Decision, the Domain Name resolves to the website “www.stikheets.com“ – an online shop offering for sale the Complainant’s HEETS products (the “Website”).
5. Parties’ Contentions A. ComplainantThe Complainant requests that the Domain Name be transferred to the Complainant. According to the Complainant, each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case.
First, the Complainant submits that the Domain Name is confusingly similar to the HEETS and HEATSTICKS trademark registrations of the Complainant.
Second, the Complainant argues that the Respondent has neither rights nor legitimate interests in the Domain Name.
Third, the Complainant submits that the Domain Name was registered and is being used in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which can be summarized as follows:
(i) the disputed 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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met.
At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”. See section 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A. Language of ProceedingsThe language of the Registration Agreement for the Domain Name is Russian. 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.
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).
The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that the Respondent is capable of communicating in English, as the Domain name is in Latin script, indicating that the Website is directed to an English-speaking public. Also, the Domain Name includes a number of English words, suggesting the Respondent understands English.
The Complainant further submits that it has no knowledge of Russian and decided to file the Complaint in English being a common language in global business.
This Panel finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian. Moreover, the Panel notes that the Respondent did not comment on the language of the proceedings.
Thus, taking 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 SimilarThe first element that the Complainant must establish is that the Domain Name is identical or confusingly similar to the Complainant’s trademark rights.
The Complainant holds valid HEETS trademark registrations, which precede the registration of the Domain Name.
The Domain Name incorporates the Complainant’s HEETS trademark in its entirety. As numerous UDRP panels have held, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696).
This Panel accepts that the addition of the term “stik” does not prevent confusing similarity between the Domain Name and the Complainant’s trademark. UDRP Panels have consistently held that 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 similar under the first element. See WIPO Overview 3.0, section 1.8.
The generic Top-level domain “.com” in the Domain Name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See WIPO Overview 3.0, section 1.11.1.
Given the above, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Thus, the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate InterestsThe second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Name.
The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it has made 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 prior to the dispute; or
(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or
(c) that it 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.
Although given the opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances foreseen in paragraph 4(c) of the Policy are present in this case.
On the contrary, it results from the evidence in the record that there are the Complainant’s HEETS trademark registrations, which predate the Respondent’s registration of the Domain Name. There is no evidence in the case that the Complainant has licensed or otherwise permitted the Respondent to use the HEETS trademark or to register the Domain Name incorporating this trademark. There is also no evidence to suggest that the Respondent has been commonly known by the Domain Name.
Moreover, it results from the evidence in the record that the Respondent does not make use of the Domain Name in connection with a bona fide offering of goods or services, as well as it does not make a legitimate, noncommercial or fair use of the Domain Name without intent for commercial gain.
The Respondent, which seems to be reselling the Complainant’s products, could make a bona fide offering of goods and services and thus have a legitimate interest in the Domain Name if its use meets certain requirements as set out in Oki Data Americas, Inc. v ASD, Inc.,WIPO Case No. D2001-0903. These requirements are that: (1) the Respondent must actually be offering the goods or services at issue; (2) the Respondent must use the website to sell only the trademarked goods, otherwise, it could be using the trademark to bait Internet users and then switch them to other goods; (3) the website must accurately disclose the Respondent’s relationship with the trademark owner; and (4) the Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in the Domain Name.
In the present case, the above referred requirements are not met.
As of the date of this Decision, the Domain Name resolves to the Website featuring the Complainant’s HEETS mark and offering for sale the Complainant’s HEETS products without the Complainant’s authorisaton or the possession of any license. The nature and content of the Domain Name clearly suggests an affiliation with the Complainant, as well as its trademarks. The Panel notes in this regard that the Domain Name reproduces the Complainant’s HEETS trademark in entirety with the additional term “stik”. Also, the Website features number of the Complainant’s trademarks, such as the HEETS or IQOS trademarks, in addition to incorporating elements that are visually, conceptually and phonetically similar to the Complainant’s HEATSTICKS trademark. Moreover, the Website uses the Complainant’s official product images and marketing materials without authorization, while at the same time falsely claiming copyright in this material. Fundamentally, the Respondent’s use of the Domain Name will not be considered “fair” if it falsely suggests affiliation with the Complainant as a trademark owner. See WIPO Overview 3.0, section 2.5.
Furthermore, the Panel notes that the relationship between the Respondent and the Complainant is not disclosed on the Website. The provider of the Website is only identified as “Heets оптом” (“Heets Wholesale”). This further perpetuates the impression of an official commercial relationship between the Respondent and the Complainant.
In addition, as noted above, the Complainant’s IQOS System, including the HEETS products, is primarily distributed through official/endorsed stores. The Panel believes that use of the Complainant’s trademarks and official images within the Website misled consumers regarding the relationship between the Respondent and the Complainant, as Internet users may falsely believe that the Respondent is an official/endorsed distributor of IQOS products.
Given the above, the Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the Domain Name. Thus, there is no evidence in the case file that refutes the Complainant’s submissions. The Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad FaithThe third requirement the Complainant must prove is that the Domain Name has been registered and is being used in bad faith.
Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See WIPO Overview 3.0, section 3.1.
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.
As indicated above, the Complainant’s rights in the HEETS and HEATSTICKS trademarks predate the registration of the Domain Name. The Panel finds that the Respondent was or should have been aware of the Complainant’s trademark at the time of registration of the Domain Name. This finding is supported by the type of products offered through the Domain Name. Also, it has been proven to the Panel’s satisfaction that the Complainant’s HEETS and HEATSTICKS trademarks are well-known, unique to the Complainant and not commonly used to refer to tobacco products or electronic devices. Thus, the Respondent could not likely reasonably ignore the reputation of products the trademarks identify.
Moreover, the Domain Name is being used in bad faith by the Respondent to offer the Complainant’s products for sale without the Complainant’s authorization. By reproducing the Complainant’s registered HEETS trademark in the Domain Name, as well as by displaying the other Complainant’s trademarks (such as IQOS) on the Website, the Respondent suggests to be an official online retailer of the Complainant’s products. There is thus little doubt that the Respondent intended to earn profit from the confusion created with Internet users. In consequence, the Panel finds that the Respondent registered and uses the Domain Name deliberately in order to take advantage of the Complainant’s reputation and to give credibility to its operations.
Furthermore, the Complainant has submitted evidence demonstrating that the Respondent has a history of registering domain names violating the Complainant’s trademark rights. In particular, the Respondent has been involved in such UDRP proceedings as Philip Morris Products S.A. v. Vitalij Solomin,WIPO Case No. D2020-0126, as well as Philip Morris Products S.A. v. Whois privacy protection service, Internet Invest, Ltd. dba Imena.ua / Vitalij Solomin, Private person 68729,WIPO Case No. D2021-0841. The panels decided in those cases that the domain names were registered in bad faith and ordered their transfer to the Complainant. Consequently, the Panel finds that there is a documented pattern of the Respondent’s bad faith conduct.
For the reasons discussed above, the Panel finds that the Complainant has proved the requirements under paragraph 4(a)(iii) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Piotr Nowaczyk
Sole Panelist
Date: November 1, 2021