WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Anton Gromov
Case No. D2019-1868
1. The Parties
The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Anton Gromov, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <sellheets.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2019. On August 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 2019, 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 August 6, 2019, 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 6, 2019.
The Center verified that the Complaint 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 August 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 2, 2019.
The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on September 12, 2019. 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.
After receiving notification from the Center of the Panel appointment on September 12, 2019, the Center received a communication from the Respondent on September 19, 2019.
4. Factual Background
The Complainant is a company affiliated to Philip Morris International Inc. (“PMI”), leading international tobacco company with products sold in more than 180 countries.
The Complainant owns a product called IQOS, which is a precisely controlled heating device into which specially designed tobacco products under the name “HEETS” or “HEATSTICKS” are inserted and heated to generate a flavorful nicotine-containing aerosol.
The Complainant owns several trademark registrations for HEETS in numerous jurisdictions throughout the world.
The disputed domain name was registered on January 13, 2019.
5. Parties’ Contentions
The Complainant argues that the Respondent is offering for sale the Complainant’s IQOS System for a global audience. The Complainant informs that their IQOS System is not currently sold in every country of the world, nevertheless, the Respondent would be purporting to be an official retailer of the Complainant’s IQOS System on a global basis.
The Complainant alleges that the disputed domain name contains their registered trademark in its entirety and simply adds the descriptive term “sell” to the trademark.
The Complainant argues that the Respondent would be using the trademark within the website banner. The Complainant would be also using the registered hummingbird trademark and several of the Complainant’s official product images without Complainant’s authorization.
The Complainant alleges that the Respondent does not show any details regarding the provider of the website nor does it acknowledge the Complainant as the brand owner of the IQOS system, leaving the Internet user under the false impression that the online shop provided under the website is that of the Complainant or connected to the Complainant.
Finally, the Complainant seeks to have the disputed domain name transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions
6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:
(i) the disputed domain name is identical or confusingly similar to the 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;
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant owns various trademark registrations for HEETS throughout the world.
The disputed domain name incorporates the HEETS trademark, with the mere addition of descriptive term “sell”. Also, the mere addition of the generic Top Level Domain (gLTD) “.com” to the disputed domain name does not constitute an element to avoid confusing similarity with the Complainant’s trademark for purposes of the Policy. Its use is purely for Internet technical registration purposes. See The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031.
In view of all of the above, the Panel concludes that the disputed domain name is indeed confusingly similar to the Complainant’s registered trademarks.
Therefore, the Panel concludes that the Complainant has established the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant has not authorized, licensed or permitted the Respondent to use the trademark HEETS and there is no evidence that the Respondent has been or is commonly known by the disputed domain name or is using it in connection with a bona fide offering of goods or services or is making a legitimate noncommercial or fair use of the trademark.
The Panel also agrees that the Respondent is not making a legitimate non-commercial or fair use of the domain name under dispute.
The Panel finds that the likelihood of confusion created by the Respondent at directing Internet users to a website using Complainant’s pictures and products without authorization by the Complainant may not be deemed a “bona fide offering of goods or services” (see e.g. Oki Data Americas, Inc v. ASD, INC., WIPO Case No. D2001-0903).
The Panel finds that the Complainant has established a prima facie case that none of the three circumstances establishing rights or legitimate interests mentioned in paragraph 4(c) of the Policy applies. As stressed by many UDRP panels, in such a case, the burden of production then shifts to the respondent to rebut the complainant’s prima facie case.
By not submitting a Response, the Respondent has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests in the disputed domain names under paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Complainant has established paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Considering the evidence provided by the Complainant, the Panel finds that it is impossible that Respondent did not know of the HEETS trademark, especially in light of the content at the website with the disputed domain name. Thus, it is clear that the Respondent was aware of the Complainant’s trademark when it chose the disputed domain name. Bad faith can be found where Respondent “knew or should have known” of Complainant’s trademark rights and nevertheless registered a domain name in which he had no right or legitimate interest.
The Panel finds that the use of the disputed domain name with intent to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s trademarks shall constitutes evidence of registration and use in bad faith (see e.g. Radio Globo SA v. Vanilla Limited, WIPO Case No. D2006-1557).
Therefore, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has established the third element of the Paragraph 4(a) of the Policy.
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 <sellheets.com> be transferred to the Complainant.
Luiz E. Montaury Pimenta
Date: September 30, 2019