WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Lisa Zagorova (Лиза Загорова)

Case No. D2020-0818

1. The Parties

The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.

The Respondent is Lisa Zagorova (Лиза Загорова), Ukraine.

2. The Domain Names and Registrar

The disputed domain names <oman-heatsticks.com> and <saudi-heatstiks.com> are registered with Hosting Ukraine LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2020. On April 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 8, 2020 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 a communication regarding the language of proceeding in English and in Russian to the Parties and invited the Complainant to respond by April 11, 2020 and the Respondent to comment on the Complainant’s response by April 13, 2020. On April 9, 2020, the Complainant filed an amended Complaint and a request for English to be the language of the proceeding. The Respondent did not comment 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, and the proceedings commenced on April 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 13, 2020.

The Center appointed Assen Alexiev as the sole panelist in this matter on May 25, 2020. 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., which is a leading international tobacco company with products sold in about 180 countries. The Complainant’s group of companies has developed the Iqos system – a precisely controlled heating device into which specially designed tobacco products under the brand names HEETS and HEATSTICKS are inserted and heated to generate a nicotine-containing aerosol. The Iqos system was first launched in Japan in 2014 and has 18.3% share of the market in this country. The Iqos system is now available in key cities in 52 countries through official Iqos stores and websites and selected authorized distributors and retailers and has about 9.5 million users.

The Complainant owns the following trademark registrations:

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

- the International trademark HEETS with registration No.1328679, registered on July 20, 2016 for goods in International Classes 9, 11, and 34 (the “HEETS trademark”).

The disputed domain name <oman-heatsticks.com> was registered on February 6, 2020, and the disputed domain name <saudi-heatstiks.com> was registered on January 30, 2020. They resolve to English language websites that sell the Complainant’s Iqos system. The website at the disputed domain name <oman-heatsticks.com> indicates all prices in Omani Rial (OMR) currency and offers delivery in Oman, while the website at the disputed domain name <saudi-heatstiks.com> indicates all prices in Saudi Riyal (SAR) currency and offers delivery in Saudi Arabia.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain names are confusingly similar to the HEATSTICKS trademark in which the Complainant has rights, as they include the trademark or an obvious intentional misspelling of it together with the geographic terms “oman” and “saudi” respectively.

The Complainant submits that the Respondent lacks any rights or legitimate interests in the disputed domain names, as the Complainant has not licensed or otherwise permitted the Respondent to use the HEATSTICKS trademark or to register a domain name incorporating it. According to the Complainant, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, but intends to obtain an unfair commercial gain by misleadingly diverting consumers. The Respondent is not an authorized distributor or reseller of the Iqos system, and the websites at the disputed domain names do not meet the requirements for a bona fide offering of goods. The disputed domain names suggest an affiliation with the Complainant and its HEATSTICKS trademark, and the associated websites purport to be official retailers of the Complainant’s HEETS tobacco products in the territories of Oman and Saudi Arabia by incorporating the HEATSTICKS trademark together with the geographical indications “oman”; and “saudi” in the disputed domain names and by prominently using the Complainant’s HEETS trademark within the websites’ banners and a number of the Complainant’s official product images without the Complainant’s authorization. The websites include no information regarding the identity of their provider, which is only identified as “Iqos Heets in Oman” or as “Iqos Heets in Saudi Arabia”. The website at the disputed domain name <saudi-heatstiks.com> contains an unremarkable disclaimer at the bottom of the website, after the offers for visitors to the website to make purchases from it, so it is likely that users will order products in the online store without scrolling all the way to the end of the page and without recognizing the disclaimer. The disclaimer makes no mention of the HEATSTICKS, HEETS and IQOS trademarks, who owns these trademarks and the relationship or lack thereof between the provider of the website and the trademarks. According to the Complainant, the presence of this disclaimer confirms that the Respondent was aware of the Complainant’s trademarks when it registered the disputed domain names.

The Complainant contends that the disputed domain names were registered and are being used in bad faith. The Respondent’s use of the disputed domain names shows that the Respondent knew of the Complainant’s HEATSTICKS trademark when registering them, and their registrations were made with the intention of invoking a misleading association with the Complainant, as the Respondent started offering the Complainant’s Iqos system immediately after registering the disputed domain names through websites that suggest an affiliation to the Complainant and use the Complainant’s trademarks and official product images.

The Complainant also notes that the Respondent is using a privacy protection service to hide its true identity.

B. Respondent

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

6. Discussion and Findings

6.1. Procedural Issue: Language of the Proceeding

According to the information provided by the Registrar, the language of the Registration Agreement for the disputed domain names 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 requests that the language of the proceedings be English, stating that the circumstances of the case show that the Respondent has knowledge of the English language, as the websites under the disputed domain names are in English, while the Complainant is not capable of providing the Complaint in the language of the registration agreement without unreasonable effort and costs.

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 not submitted a Response or any objections to the Complainant’s request that the proceedings be held in English. As noted by the Complainant, the whole content of the websites at the disputed domain names is in English.

The above satisfies the Panel that the Respondent can communicate in English, and that the Respondent would not be disadvantaged if the language of the proceeding is English, and is satisfied that using the English language in this proceeding would be fair and efficient. 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.

6.2. Substantive Issues

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

(i) the disputed domain names are 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 names; and

(iii) the Respondent has registered and is using the disputed domain names 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 …”

The Respondent however did not submit a Response in this proceeding.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights 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). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD sections of the disputed domain names.

The relevant part of the disputed domain name <oman-heatsticks.com> for purposes of the first element is therefore the sequence “oman-heatsticks”. It consists of the elements “oman” and “heatsticks”, separated by a hyphen. The “oman” element is identical to the geographic term “Oman”, while the “heatsticks” element is identical to the HEATSTICKS trademark. As discussed in section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of geographical terms would not prevent a finding of confusing similarity under the first element.

The relevant part of the disputed domain name <saudi-heatstiks.com> for purposes of the first element is the sequence “saudi-heatstiks”, which consists of the elements “saudi” and “heatsticks”, separated by a hyphen. The “saudi” element is identical to the geographic term “Saudi”, referring to Saudi Arabia, while the “heatstiks” element is almost identical to the HEATSTICKS trademark, as the only differences between them is the omission of the letter “c” in the disputed domain name, which does not alter the pronunciation and overall appearance of the disputed domain name, in which the HEATSTICKS trademark is clearly recognizable. As discussed in section 1.9 of the WIPO Overview 3.0, a domain name which consists of an obvious misspelling of a trademark is considered by UDRP panels to be confusingly similar to the relevant mark for purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark.

In view of the above, the Panel finds that the disputed domain names are confusingly similar to the HEATSTICKS trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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 3.0.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names, stating that the Respondent has not been authorized by the Complainant to use the HEATSTICKS trademark or to distribute the IQOS products, and that the Respondent is not carrying out a bona fide use of the disputed domain names. According to the Complainant, the Respondent attempts to mislead and attract Internet users by using the disputed domain names for websites that offer the Complainant’s IQOS products for sale and display the Complainant’s HEETS trademark and official product images in the websites without authorization by the Complainant. The Complainant notes that the disclaimer on the website at the disputed domain name <saudi-heatstiks.com> does not prevent the confusion of Internet users, as it is located at the bottom of the website below the products offerings, so it is likely that users will order products in the online store without scrolling all the way to end of the page and without recognizing the disclaimer. 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 submitted a Response and has not alleged that it has rights or legitimate interests in the disputed domain names and has not disputed the Complainant’s allegations in this proceeding.

The disputed domain names are confusingly similar to the HEATSTICKS trademark and Internet users may regard them as referring to official locations where the Complainant’s IQOS products are offered for sale for the territories of Oman and Saudi Arabia. They resolve to websites that offer the Complainant’s IQOS products and display the HEETS trademark, as well as official product images of the Complainant’s IQOS products without identifying the supplier of the offered goods and without properly disclosing the lack of relationship between the Parties. As summarized in section 2.8.1 of WIPO Overview 3.0, panels under the Policy have recognized that resellers and distributors using a domain name containing the complainant’s trademark to undertake sales of the complainant’s goods may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name, but only if they comply with certain cumulative requirements, among which are the requirements that the reseller’s or distributor’s website must accurately and prominently disclose its relationship with the trademark holder. This requirement has not been complied with in the present case.The websites at the disputed domain names contain the statements “We work directly with the manufacturer, so all products are certified and always in stock”, “We work directly with the manufacturer, which allows us to sell products without additional margins”, and “The company cooperates with the manufacturer directly, without intermediaries, which is a guarantee of profitable transactions, as well as the excellent quality of original goods”. The website at the disputed domain name <oman-heatsticks.com> contains no disclaimer for the lack of relationship between the Parties, while the disclaimer at the website at the disputed domain name <saudi-heatstiks.com> is located at the bottom of the website, and as noted by the Complainant, Internet users may see it only after having arrived at the website and having seen the commercial offers on it and the statements cited above, which greatly diminishes the effect of the disclaimer. The effect of the disclaimer is further diminished by the fact that the provider of the goods offered on the associated website is identified as “Iqos Heets in Saudi Arabia”, thus referring to the Complainant. In addition, the nature of the disputed domain names carries a risk of implied affiliation, meaning Internet users may be confused as to the origin of the websites even before accessing them. See section 2.5.1 of the WIPO Overview 3.0.

In view of the above and in the lack of any denial by the Respondent of it, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant’s HEATSTICKS trademark, has registered and used the disputed domain names in an attempt to exploit the goodwill of this trademark to attract Internet users to the Respondent’s websites which offer the Complainant’s products without properly disclosing the lack of relationship between the Parties and without authorization of this conduct by the Complainant. To the Panel, such conduct does not appear to be legitimate and giving rise to rights and legitimate interests of the Respondent in the disputed domain names.

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

C. 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 website or other online 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 disputed domain names are confusingly similar to the HEATSTICKS trademark and include geographical references to Oman and Saudi Arabia. The Respondent does not deny that they are linked to websites targeting the markets of these two countries that offer the Complainant’s IQOS products and display the HEETS trademark and official product images of the Complainant’s IQOS products without identifying the supplier of the offered goods and without properly disclosing the lack of relationship between the Parties, thus creating a false impression that the websites at the disputed domain names are affiliated to the Complainant.

In view of this and in the lack of any evidence to the contrary, the Panel finds that is more likely than not that by registering and using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s HEATSTICKS trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’ websites or of the products offered on them.

Therefore, the Panel finds that the disputed domain names were registered and have been used in bad faith.

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 names <oman-heatsticks.com> and <saudi-heatstiks.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: June 11, 2020