WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Whois privacy protection service, Internet Invest, Ltd. dba Imena.ua / Vitalij Solomin, Private person 68729

Case No. D2021-0841

1. The Parties

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

The Respondent is Whois privacy protection service, Internet Invest, Ltd. dba Imena.ua, Ukraine / Vitalij Solomin, Private person 68729, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <stickhets.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 March 22, 2021. On March 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 23, 2021, 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 March 24, 2021, 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 the proceeding in English and in Russian to the Parties and invited the Complainant to respond by March 27, 2021 and the Respondent to respond by March 29, 2021. The Complainant filed an amendment to the Complaint and a request for English to be the language of the proceeding on March 24, 2021. The Respondent did not comment on the language of the proceeding.

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 April 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 29, 2021.

The Center appointed Assen Alexiev as the sole panelist in this matter on May 10, 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 affiliated to Philip Morris International Inc., which is an international tobacco company with products sold in about 180 countries. The Complainant’s group of companies have developed the IQOS system – a heating device into which specially designed tobacco products under the trademarks 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 20% share of the market in this country. The IQOS system is now available in 64 markets through official IQOS stores and websites and selected authorized distributors and retailers and has about 17.6 million users.

The Complainant is the owner of the following trademark registrations of the sign HEATSTICKS (the “HEATSTICKS trademark”):

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

- the United States of America trademark HEATSTICKS with registration No. 4758618, registered on June 23, 2015 for goods in International Class 34.

The Complainant also owns the trademark registrations of the sign HEETS, for example, the International trademark HEETS with registration no. 1326410, registered on July 19, 2016 for goods in International Classes 9, 11, and 34.

The disputed domain name was registered on April 29, 2020. It redirects to an online shop that purportedly offers the Complainant’s HEETS tobacco sticks for the IQOS system as well as Fiit tobacco sticks.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to its HEATSTICKS trademark, because it consists of the term “stickhets”, thus adopting its indicative parts, whose combination can be perceived as a reference to the HEATSTICKS trademark. The Complainant also submits that the disputed domain name is confusingly similar to its HEETS trademark because it clearly adopts the indicative part of the HEETS trademark.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because the Complainant has not permitted the Respondent to use any of its trademarks or to register domain names incorporating the HEATSTICKS and HEETS trademarks, and the Respondent is not an authorized distributor or reseller of the IQOS system or of HEETS tobacco sticks. The Complainant points out that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but attempts to obtain an unfair commercial gain by misleadingly diverting consumers to the website at the disputed domain name, and its conduct not meet the requirements for a bona fide offering of goods. The Complainant submits in this regard that the disputed domain name is an adaptation of the HEATSTICKS and HEETs trademarks and the associated website prominently uses a logo combining the Complainant’s trademark and its “IQOS THIS CHANGES EVERYTHING” slogan at the top left of the website, where consumers usually expect to find the name of the online shop or the name of the provider of the website. The website contains a link indicated as “License”, which resolves to a website where the provider of the website at the disputed domain name is indicated as “LIMITED LIABILITY COMPANY STICKHEETS COM”, and does not clarify the relationship of this entity to the Complainant and its trademarks. At the same time, the website prominently uses the Complainant’s copyright protected official marketing materials and logos without authorization, and includes a copyright notice falsely claiming copyright in the website material and indicating its provider as “HEETS wholesale”. According to the Complainant, all this leaves the visitors to the website under the false impression that the Respondent’s online shop is endorsed by the Complainant. The Complainant states that it cannot confirm whether the products offered on the website at the disputed domain name are genuine, and points out that the website offers delivery to the Russian Federation, which is illegal, because the sales of heated tobacco sticks online have been legally prohibited in this country as of January 2021.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. According to it, the Respondent knew of the Complainant’s HEATSTICKS and HEETS trademarks when registering the disputed domain name, because it started offering the Complainant’s products immediately after registering the disputed domain name and indicated the website provider as “HEETS wholesale” in the copyright notice. Therefore, the Respondent chose the disputed domain name targeting the HEATSTICKS and HEETS trademarks with the intention of invoking a misleading association with the Complainant.

According to the Complainant, the Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s HEATSTICKS and HEETS trademarks as to the source, sponsorship, affiliation, or endorsement of its website. By adapting the Complainant’s registered trademarks in the disputed domain name, the Respondent’s website suggests that it is endorsed by the Complainant, which is further strengthened by the use of the Complainant’s official marketing material and logos and claiming copyright in such material by indicating the shop provider as “HEETS wholesale” and as “LIMITED LIABILITY COMPANY STICKHEETS COM” under the “License” link positioned in the header of the Respondent’s website.

The Complainant adds that the illegitimacy of the Respondent’s use of the disputed domain name is also shown by the fact that the offering of heated tobacco sticks online in the Russian Federation is an illegal activity, and the Respondent creates the false impression that the Complainant supports such illegal activities in the Russian Federation.

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 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 requests that the language of the proceedings be English and maintains that the Respondent has knowledge of this language, as the website at the disputed domain name is an online shop that offers products with prices in USD and promotes their delivery to numerous countries, thus addressing an international public, the communication with which will typically be in English. The Complainant also notes that, being a Swiss entity it has no knowledge of Russian, so if it is required to translate the Complaint and all supporting documents into Russian, that would cause an unnecessary burden and would delay the proceeding.

The Center has sent the relevant 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 website at the disputed domain name indicates all prices in USD, and offers product delivery to various countries. It also has a sign for an English version on the top left hand side of the website.

The above supports a conclusion that the Respondent is likely to be able to communicate in English and would not be disadvantaged if the language of the proceeding is English, and that using this 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 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 disputed domain name has been registered and is being used 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 and HEETS trademarks.

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 section of the disputed domain name.

The relevant part of the disputed domain name for purposes of the first element is therefore the sequence “stickhets”. It is a combination of “stick” and “hets” that appears as a misspelled version of the HEATSTICKS trademark, whose elements remain recognizable, although put in reverse order; “hets” is also a misspelled version of the HEETS trademark. As discussed in section 1.7 of the WIPO Overview 3.0, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing; and in section 1.8 of the WIPO Overview 3.0, in cases where the relevant trademark is recognizable within the 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. As further 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, as the domain name contains sufficiently recognizable aspects of the relevant mark. Moreover, the content of the website at the disputed domain name serves to confirm a finding of confusing similarity as it appears prima facie that the Respondent seeks to target the Complainant’s trademarks through the disputed domain name (see section 1.15 of the WIPO Overview 3.0).

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the HEATSTICKS and HEETs trademarks 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 and HEETS trademarks or to distribute the IQOS products, and that the Respondent is not carrying out a bona fide use of the disputed domain name. According to the Complainant, the Respondent attempts to mislead and attract Internet users by using the disputed domain name for a website that purportedly offers the Complainant’s products for sale and displays the Complainant’s trademarks and the Complainant’s copyright-protected official materials on the website without authorization by the Complainant, while falsely claiming copyright in the content of the website. 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.

As summarized in section 2.8.1 of the WIPO Overview 3.0, panels under the Policy have recognized that resellers or 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, as long as they comply with certain cumulative requirements, among which is the requirement 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 disputed domain name is confusingly similar to the HEATSTICKS and HEETS trademarks, and resolves to a website that purportedly offers the Complainant’s products for sale and displays its trademarks and slogan, as well as product images of the Complainant’s products while claiming copyright in the content of the website without disclosing the lack of affiliation to the Complainant.

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 and HEETS trademarks, has registered and used the disputed domain name in an attempt to exploit the goodwill of these trademarks to attract Internet users to the Respondent’s website which purportedly offers the Complainant’s products for sale without properly disclosing the lack of relationship between the Parties. To the Panel, such conduct does not give rise to rights or legitimate interests of the Respondent in the disputed domain name.

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

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 name is confusingly similar to the HEATSTICKS and HEETS trademarks, and is linked to a website that purportedly offers the Complainant’s products for sale and displays its trademarks and slogan and product images of the Complainant’s products, claiming copyright in the website without disclosing the lack of relationship between the Parties, thus creating a false impression that the website at the disputed domain name is 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 name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s HEATSTICKS and HEETS trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Therefore, the Panel finds that the disputed domain name was registered and has 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 name <stickhets.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: May 24, 2021