WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Dobrinya Vasiliev

Case No. D2019-0659

1. The Parties

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

Respondent is Dobrinya Vasiliev of Nizhny Novgorod, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name is <heetsdelivery.com> which is registered with Wix.com Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2019. On March 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 28, 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 those in the Complaint. The Center sent an email communication to Complainant on March 29, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 4, 2019.¹

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 Respondent of the Complaint, and the proceedings commenced on April 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 1, 2019.

The Center appointed Gerardo Saavedra as the sole panelist in this matter on May 8, 2019. This Panel finds that it was properly constituted. This 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

Complainant is a Swiss company and a subsidiary of Philip Morris International, Inc. (jointly “PMI”), a leading international tobacco company.

Complainant has rights over: the HEETS trademark for which it holds international registration No. 1326410, registered on July 19, 2016 in classes 9, 11 and 34; the HEETS figurative trademark for which it holds international registration No. 1328679, registered on July 20, 2016 in classes 9, 11 and 34; the IQOS trademark for which it holds international registration No. 1218246, registered on July 10, 2014 in classes 9, 11 and 34; and the IQOS figurative trademark for which it holds international registration No. 1329691, registered on August 10, 2016 in classes 9, 11 and 34 (the “Trademarks”).

The disputed domain name was registered on February 23, 2019. By the time the Complaint was filed, the website associated to the disputed domain name showed, among others, “HEETS DELIVERY Wholesale and retail”, “WORLDWIDE DELIVERY SERVICE”, images of the HEETS figurative trademark followed by characters, an image of a product followed by “Iqos 3.0 $190.00”, an image of a product followed by “Heets Bronze $45.00”, an image of a product followed by “Heets Purple $40.00”, “ABOUT US”, “Our aim is 100% customer satisfaction and don’t hesitate to contact us for any inquires, we will be happy to respond to any questions regarding our products & services. Hope you enjoy shopping with us”, “Best Wholesale Heets and IQOS Delivery”, “Start Shopping”, “©2019 by Heets Delivery”.

5. Parties’ Contentions

A. Complainant

Complainant’s assertions may be summarized as follows.

PMI has developed a number of products, one of these is branded IQOS, which is a controlled heating device into which specially designed tobacco products under the brand names HEETS and HeatSticks are inserted and heated to generate a flavorful nicotine-containing aerosol. The IQOS system also consists of an IQOS pocket charger specially designed to charge the IQOS holder (collectively, the “IQOS Products”). The IQOS Products were first launched by PMI in Japan in 2014, and today they are available in key cities in around 43 markets across the world. As a result of a billionaire investment and extensive international sales and marketing efforts, the IQOS Products have achieved considerable international success and reputation, and already around 6.6 million relevant consumers have converted to the IQOS Products worldwide. To date, the IQOS Products have been almost exclusively distributed through PMI’s official IQOS stores and websites and selected authorized distributors and retailers.

For its new innovative smoke-free products Complainant owns a large portfolio of well-known trademarks, including the Trademarks, registered in numerous jurisdictions.

The disputed domain name is linked to an online shop at “www.heetsdelivery.com” (the “Website”) allegedly offering Complainant’s HEETS and/or IQOS branded products. Although the Website is in English, the fact that the Website’s heading shows ““HEETS DELIVERY – WORLDWIDE DELIVERY SERVICE”, clearly indicates that the Website is directed to all parts of the world. The Website is clearly purporting to be an official online retailer of Complainant’s products in all parts of the world by using Complainant’s HEETS trademark in the disputed domain name together with the non-distinctive word “delivery”.

The disputed domain name reproduces the HEETS trademark in its entirety, in addition to the descriptive word “delivery”. The addition of merely generic, descriptive or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity. Thus, the disputed domain name is confusingly similar to Complainant’s trademark.

Respondent lacks any rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register a domain name incorporating its HEETS trademark (or a domain name which will be associated with this trademark). Respondent is not known or in any way related to Complainant or any PMI affiliate, is not an authorized distributor or reseller of the HEETS and IQOS products, and is not authorized to use the HEETS and/or IQOS trademarks.

Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Any Internet user when visiting a website provided under the disputed domain name will reasonably expect to find a website commercially linked to the owner of the HEETS trademark. Such association is exacerbated by the use of Complainant’s official product images without Complainant’s authorization. Respondent’s behaviour shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademarks owned by Complainant.

The Website shows “HEETS DELIVERY” at the top of the Website, being a location where Internet users usually expect to find the name of the online shop and/or the name of the provider of the website. Any user being confronted with the disputed domain name and the Website will expect to find an official retailer of Complainant’s HEETS and/or IQOS branded products on the Website. The Website also uses a number of Complainant’s official product images without Complainant’s authorization, while at the same time shows a copyright notice at its bottom claiming copyright in the material presented therein and thereby strengthening the impression of an affiliation with Complainant.

The Website does not show any details regarding the provider of the Website nor does it acknowledge Complainant as the real brand owner of the HEETS and/or IQOS products, leaving the Internet user under the false impression that the online shop provided under the Website is Complainant’s or it is connected to Complainant or one of its official distributors, which it is not.

A reseller or distributor can be making a bona fide offering of goods or services and thus have a legitimate interest in the domain name at issue only if certain requirements are met.² The Website does not meet the requirements set out by numerous UDRP decisions for a bona fide offering of goods. It is a common principle in all such cases that the use of a domain name cannot be fair if it suggests affiliation with the trademark owner. The disputed domain name in itself suggests at least an affiliation with Complainant and its HEETS trademark, as the disputed domain name wholly reproduces Complainant’s HEETS trademark together with the non-distinctive term “delivery”. As the HEETS and IQOS products are primarily distributed through official stores, Internet users are clearly misled regarding the relationship between the Website and Complainant.

The Website includes no information regarding the identity of the provider of the Website. The Website, prominently and without authorization, shows the HEETS trademark within the designation “HEETS DELIVERY” appearing at the top left of the Website, which serves to perpetuate the false impression of a commercial relationship between the Website and Complainant. The Website further uses Complainant’s official product images without authorization, while at the same time falsely claiming copyright in this material. This false claim of rights in Complainant’s official copyright protected material further supports the false impression that the Website is endorsed by Complainant. Such use of the disputed domain name cannot be considered a bona fide offering of goods and does not establish a legitimate interest on behalf of Respondent.

It is evident that Respondent knew of Complainant’s HEETS trademark when registering the disputed domain name since Respondent started offering Complainant’s HEETS and/or IQOS branded products immediately after registering the disputed domain name. The term “heets” is purely imaginative and unique to Complainant. The term “heets” is not commonly used to refer to tobacco products. It is therefore beyond the realm of reasonable coincidence that Respondent chose the disputed domain name without the intention of invoking a misleading association with Complainant.

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 Complainant’s registered HEETS trademark as to the source, sponsorship, affiliation, or endorsement of the Website or of a product or service on the Website, which constitutes registration and use in bad faith. By reproducing Complainant’s registered trademark in the disputed domain name and the title of the Website, the Website clearly suggests Complainant or an affiliated dealer as the source of the Website, which it is not. This suggestion is supported by Respondent’s use of Complainant’s official product images accompanied by a copyright notice claiming the copyright for the Website.

The fact that Respondent is using a privacy protection service to hide its true identity may in itself constitute a factor indicating bad faith.

Complainant requests that the disputed domain name be transferred to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

The lack of response from Respondent does not automatically result in a favorable decision for Complainant.³ The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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.

A. Identical or Confusingly Similar

It is undisputed that Complainant has rights over the HEETS trademark.

Since the addition of a generic Top-Level Domain suffix after a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a trademark.

The disputed domain name identically reflects the HEETS trademark, albeit followed by the suffix “delivery”. It is clear to this Panel that “heets” is recognizable in the disputed domain name, and that the addition of such a term in the disputed domain name does not avoid its confusing similarity with said trademark. See sections 1.7 and 1.8 of WIPO Overview 3.0.

Thus this Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Complainant asserts that it has not authorized Respondent to use the Trademarks or to register a domain name incorporating its HEETS trademark, that Respondent is not known or in any way related to Complainant or any PMI affiliate, that Respondent is not an authorized distributor or reseller of the HEETS and IQOS products, and that the Website shows Complainant’s official product images without authorization, while at the same time falsely claiming copyright in that material which suggests that Complainant or an affiliated dealer is the source of, or endorse, the Website.

Complainant provided screenshots of the Website (see section 4 above), which on their face corroborate Complainant’s assertions. From those screenshots, it appears that the Website does not show any disclaimer as regards Complainant thus leading consumers to believe that the Website reached from the disputed domain name may be owned by, or at least somehow associated with, Complainant. All that demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.

This Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name (see Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467; and section 2.1 of the WIPO Overview 3.0). In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name by Respondent.

Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith, which Respondent chose not to rebut.

The evidence in the file shows that Respondent deliberately targeted Complainant’s HEETS trademark at the time it obtained the disputed domain name. Taking into consideration that Complainant’s registration and use of the HEETS trademark preceded the creation of the disputed domain name, and the content of the Website, this Panel is of the view that Respondent should have been aware of the existence of the HEETS trademark at the time it obtained the registration of the disputed domain name.

The Website is used to sell allegedly Complainant’s HEETS and IQOS products, showing images of such products bearing the Trademarks. There appears to be no disclaimer disassociating the Website from Complainant, which is indicative of bad faith (see Thomas Wuttke v. Sharing, WIPO Case No. D2011-1809). It seems to this Panel that in using the disputed domain name, Respondent has sought to create a likelihood of confusion with Complainant and the Trademarks as to the sponsorship, source, affiliation, or endorsement of the Website and products offered therein, when in fact there is no such connection.

Thus the overall evidence shows that Respondent has registered and used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Website.

Further, the fact that Respondent has hidden its identity and contact information through a privacy or proxy service has been a further indicative of bad faith under several UDRP decisions (see section 3.6 of the WIPO Overview 3.0).

In this Panel’s view, the lack of response is also indicative that Respondent lacks arguments and evidence to support its holding of the disputed domain name.

In light of the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <heetsdelivery.com> be transferred to Complainant.

Gerardo Saavedra
Sole Panelist
Date: May 22, 2019

¹ The original Complaint was filed against Wix.Com Inc., which appeared as registrant in the corresponding WhoIs report. The amended Complaint was filed against Respondent, as per the information disclosed by the Registrar.

² Complainant refers to the principles set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, further developed in several UDRP cases.

³ See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence.” See also section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).