WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Whois privacy protection service, Internet Invest, Ltd. dba Imena.ua / Aleksandr Sidorov

Case No. D2018-1977

1. The Parties

The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.

The Respondent is Whois privacy protection service, Internet Invest, Ltd. dba Imena.ua of Kyiv, Ukraine / Aleksandr Sidorov of Lvov, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <sticks-heets.com> is registered with Internet Invest, Ltd. dba Imena.ua (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2018. On August 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 2018, 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 the same date providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date the Center sent an email communication in English and Russian to the both Parties in regard to the language of the proceedings, by which it invited the Respondent to submit its comments on this issue by September 9, 2018. The Complainant filed an amendment to the Complaint on September 6, 2018 and requested English to be the language of the proceedings. The Respondent did not comment on the language of the proceedings within the period of time specified by the Center.

The Center verified that the Complaint together with the amendment to the 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, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2018.

The Center appointed Assen Alexiev as the sole panelist in this matter on October 23, 2018. 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 affiliated to Philip Morris International Inc. (“PMI”). PMI is an international tobacco company, with products sold in about 180 countries. PMI’s brand portfolio contains brands like MARLBORO. PMI is transforming its business from combustible cigarettes to smoke-free products, and has developed a number of such products, one of which is IQOS - a heating device into which specially designed tobacco products sold by PMI under the brands HEETS and HEATSTICKS are inserted and heated to generate a nicotine-containing aerosol. The IQOS products were first launched in Japan in 2014, and today they are available in around 40 markets globally.

The Complainant owns the following trademark registrations for its smoke-free products:

- the international trademark HEATSTICKS with registration No.1217386, registered on July 21, 2014 for goods in International Class 34 for multiple jurisdictions, including Ukraine (the “HEATSTICKS trademark”); and

- the international trademark HEETS with registration No.1326410, registered on July 19, 2016 for goods in International Classes 9, 11 and 34 for multiple jurisdictions, including Ukraine; and

- the international trademark HEETS with registration No. 1328679, registered on July 20, 2016 for goods in International Classes 9, 11 and 34 for multiple jurisdictions, including Ukraine (both referred to as the “HEETS trademark”).

The disputed domain name was registered on August 18, 2018. It is linked to an online shop offering the Complainant’s HEETS and IQOS branded products as well as tobacco products of other producers.

5. Parties’ Contentions

A. Complainant

The Complainant submits that its IQOS products have achieved considerable international reputation, and over 5 million smokers worldwide are using these products. The IQOS products are distributed through PMI’s official IQOS stores and websites and through authorized distributors and retailers.

According to the Complainant, the disputed domain name is confusingly similar to the HEATSTICKS trademark and to the HEETS trademark of the Complainant, as it reproduces the HEETS trademark combined with the term “sticks” which forms the second part of the HEATSTICKS trademark.

The Complainant contends that the Respondent lacks rights and legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use the HEATSTICKS trademark and the HEETS trademark or to register domain names incorporating these trademarks. According to the Complainant, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but intends to obtain commercial gain by misleading and diverting Internet users. The Respondent is not an authorized distributor or reseller of the HEETS or IQOS products and does not carry out a bona fide offering of goods. It is promoting not only the Complainant’s products, but also third-party competing tobacco products, and the disputed domain name suggests affiliation with the Complainant and its HEETS and HEATSTICKS trademarks. The Respondent’s website presents the Complainant’s registered IQOS and hummingbird logo together with its registered slogan “This Changes Everything” on the top left-hand side of the website, and also features the Complainant’s official marketing material and product images. The Respondent’s website does not include a disclaimer for the lack of relationship with the Complainant, but provides at the bottom a copyright notice that strengthens the false impression that the website is endorsed by the Complainant.

The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Respondent’s use of the disputed domain name shows that the Respondent knew of the Complainant’s HEETS and HEATSTICKS trademarks when it registered the disputed domain name. The Respondent started offering the Complainant’s HEETS and IQOS products immediately after registering the disputed domain name. “Heets” is a purely imaginative term and has no inherent meaning. The Respondent’s knowledge of the Complaint’s trademark is also shown by the fact that when it registered the disputed domain name in August 2018, the Respondent had already been the respondent in another proceeding between the Parties – the proceeding in Philip Morris Products S.A. v. Aleksandr Sidorov, WIPO Case No. D2018-0966, regarding the domain name <iqos-heets.net>, where the Respondent was found to have acted in bad faith. The website that was previously associated with the domain name <iqos-heets.net> was practically identical to the website at the disputed domain name. The Respondent’s use of the disputed domain name also shows that the Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s HEETS trademark and HEATSTICKS trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”

In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a Response addressing the contention of the Complainant and the evidence submitted by it.

A. Language of the Proceedings

In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, 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 Complainant has submitted its Complaint in the English language, and has requested the proceeding to be held in English with the arguments that the Complainant is not capable of providing the Complaint in the Russian language without unreasonable effort and costs and would unnecessarily delay the proceeding, the Respondent appears to be able to communicate in English because the images featured on its website show that the Respondent is likely to be importing the Complainant’s products from various countries worldwide, and English is the language of the international business. The Center has sent all its communications to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has refrained from doing so, and thus has not objected to the Complainant’s request that the proceedings to be held in English.

In these circumstances, it appears to the Panel that using the English language in this proceeding will be fair and efficient and will not put either of the parties at a disadvantage. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English. At the same time, the Panel will take into account all evidence in the case file available in English or Russian languages.

B. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the HEETS trademark and in the HEATSTICKS trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the generic Top-Level Domain (“gTLD”) “.com” section of the disputed domain name.

The relevant part of the disputed domain name is therefore the section “sticks-heets”, which contains the elements “sticks” and “heets”. The “heets” element is identical to the HEETS trademark, and the element “sticks” is identical to the second part of the HEATSTICKS trademark, while phonetically the combination of the two elements is very similar to the HEATSTICKS trademark with its two parts juxtaposed. In the Panel’s view, the combination of the relevant elements of the disputed domain name may well lead Internet users to associate the disputed domain name with the Complainant and regard it as an online location authorized by the Complainant.

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the HEETS trademark and to the HEATSTICKS trademark in which the Complainant has rights.

C. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent has not been authorized by the Complainant to register and use domain names incorporating the HEETS trademark and the HEATSTICKS trademark, and that the Respondent is not commonly known by the disputed domain name and is not an authorized distributor of the Complainant. According to the Complainant, the Respondent has used the disputed domain name in relation to a website that creates a misleading impression of being an official website of the Complainant, where the Respondent offers the Complainant’s products and competing products of other origin. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not alleged that is has rights and legitimate interests in the disputed domain name and has not disputed the Complainant’s allegations in this proceeding.

The disputed domain name incorporates the HEETS trademark entirely with the addition of the second part of the HEATSTICKS trademark. This makes it likely that Internet users may regard the disputed domain name as designating an online location authorized by the Complainant. This likelihood of confusion is further increased by the Respondent’s use of the disputed domain name for a website that features the HEETS trademark, the Complainant’s registered logos, product images, videos and other marketing materials, without including a disclaimer for the lack of any relationship between the Parties and details for the identity of the entity operating the website, and instead including a copyright notice which can only be related to the Complainant. As contended by the Complainant and not denied by the Respondent, the latter is also offering on its website products of third-party competitors to the Complainant.

On the basis of the above, and in the lack of any explanation by the Respondent of its actions, the Panel accepts that the Respondent, being well aware of the Complainant, is likely to have registered and used the disputed domain name in an attempt to exploit the popularity of the HEETS trademark and the HEATSTICKS trademark to attract the attention of Internet users and to mislead them that the disputed domain name and the associated website represent an official online location of the Complainant or authorized by it, without disclosing the lack of any relationship with or endorsement by the Complainant, and to offer them not only products of the Complainant, but also competing products. In the Panel’s view, such conduct does not appear to be legitimate and cannot be regarded as giving rise to rights and legitimate interests of the Respondent.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line 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.”

The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.

The inclusion of the Complainant’s trademarks in the disputed domain name and its use for a website offering the products of the Complainant shows that the Respondent was well aware of the Complainant, its products and their goodwill when it registered the disputed domain name. This finding is also supported by the fact that the Respondent was the registrant of another domain name targeting the Complainant. The website at the disputed domain name features the Complainant’s logos and slogan and uses the Complainant’s marketing material and product images. Thus, the website creates the impression that it is authorized by the Complainant. This impression is supported by the copyright notice used at the bottom of the Respondent’s website and the absence of a disclaimer for the lack of any relationship between the Parties. Notably, the Respondent’s website also offers competing products. All this has not been denied by the Respondent, and taken together it satisfies the Panel that the Respondent attempts to mislead Internet users that its website is authorized by the Complainant with the objective of attracting them to it and offering them not only the Complainant’s products, but also tobacco products of its competitors.

On the basis of the above, and in view of the considerations of the Panel set out in the section related to rights and legitimate interests, the Panel finds that the Respondent has registered and used the disputed domain name with knowledge of the Complainant and targeting the HEETS trademark and the HEATSTICKS trademark in an attempt to attract traffic to the disputed domain name and to the associated website by confusing Internet users as to the origin of the Respondent’s website and of the products offered on it. On the basis of the above, the Panel accepts that this conduct of the Respondent amounts to bad faith registration and use of the disputed domain name.

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 <sticks-heets.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: November 14, 2018