WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Anton Gromov and Anton Grachev

Case No. D2019-3121

1. The Parties

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

The Respondents are Anton Gromov and Anton Grachev, Russian Federation.

2. The Domain Names and Registrars

The disputed domain name <heets4you.com> is registered with GoDaddy.com, LLC. The disputed domain name <iqosandheets.com> is registered with Registrar of Domain Name REG.RU LLC. Hereafter collectively referred to as the “Registrars”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2019. On December 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 19, 2019, the Registrars transmitted by email to the Center their verification response disclosing registrants 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 December 19, 2019 and December 19, 2019, providing the registrants and contact information disclosed by the Registrars, and inviting the Complainant to submit amendment to the Complaint. The Complainant filed amended Complaints on December 20, 2019 and January 3, 2020.

On December 19, 2019, the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. On December 20, 2019, the Complainant confirmed its request that English be the language of the proceedings. The Respondents have not provided any comment regarding the language of the proceedings. The Center received various email communications from the Respondents between December 19, 2019 and December 20, 2019.

The Center verified that the Complaint together with the amended Complaints 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 Respondents of the Complaint, and the proceedings commenced on January 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2020. The Respondents did not submit a formal Response. Accordingly, on February 5, 2020, the Center informed the Parties that it will proceed to panel appointment.

The Center appointed Taras Kyslyy, as the sole panelist in this matter on February 11, 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 a company which is part of the group of companies affiliated to Philip Morris International Inc., an international tobacco company.

The Complainant inter alia owns HEETS International trademark registrations as follows:

- No. 1328679, registered on July 20, 2016; and
- No. 1326410, registered on July 19, 2016.

The Complainant inter alia also owns IQOS International trademark registrations as follows:

- No. 1218246, registered on July 10, 2014; and
- No. 1329691, registered on August 10, 2016.

The disputed domain names were registered on November 3, 2019 and November 21, 2019 and were used for similarly designed websites selling tobacco smoking devices and accessories branded with the Complainant’s trademarks. The websites were in English. At the time of review of the present case the disputed domain names resolve to inactive websites.

5. Parties’ Contentions

A. Complainant

The disputed domain names are identical or confusingly similar to the Complainant’s trademarks. The disputed domain names identically adopt the Complainant’s HEETS or IQOS trademarks. The applicable Top-Level-Domain (“TLD”) is viewed as a standard registration requirement and as such is disregarded under the confusing similarity test. 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. The disputed domain name <iqosandheets.com> reproduces the IQOS and HEETS trademarks in their entirety, in addition to the non-distinctive word “and”, and the disputed domain name <heets4you.com> reproduces the HEETS trademark in its entirety, in addition to the non-distinctive number “4” and word “you”.

The Respondents have no rights or legitimate interests in the disputed domain names. The Complainant has not licensed or otherwise permitted the Respondents to use any of its trademarks or to register a domain name incorporating its HEETS and/or IQOS trademark (or a domain name which will be associated with this trademark). The Respondents are not making a legitimate noncommercial or fair use of the disputed domain names. On the contrary, the Respondents’ behavior shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademarks owned by the Complainant.

The disputed domain names were registered and are being used in bad faith. It is evident from the Respondents’ use of the disputed domain names that the Respondents knew of the Complainant’s HEETS and/or IQOS trademarks when registering the disputed domain names. The Respondents registered and used the disputed domain names with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s registered HEETS and/or IQOS trademarks as to the source, sponsorship, affiliation, or endorsement of its websites or location or of a product or service on its websites or location. The illegitimacy of the Respondents’ use of the disputed domain names is further amplified by the fact that the Complainant does not currently offer for sale its HEETS products or IQOS 3.0 and IQOS Multi devices in the United States of America (“United States”), and the website provided under the disputed domain names creates the false impression that the Complainant has officially introduced its IQOS 3.0 and IQOS Multi devices into the United States market – which it has not. Also privacy service was used to register the disputed domain names.

B. Respondent

The Respondents did not reply to the Complainant’s contentions, the only communications received by the Respondents were about procedural issues.

6. Discussion and Findings

A. Consolidation of Respondents

The Complainant requests the Panel hear the present dispute – brought against two respondents – as a consolidated, “unitary” complaint.

Paragraph 10(e) of the Rules states that a “[p]anel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.” Paragraph 10(c) of the Rules provides, in relevant part, that “the [p]anel shall ensure that the administrative proceeding takes place with due expedition.”

Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) summarizes the consensus view of UDRP panels on the consolidation of multiple respondents, in part, as follows: “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”

The Complainant asserts, among other things, that the Respondents should be treated as one respondent in this proceeding, as the Respondents appear to be the same person controlling connected websites with almost identical design and same contact details, all referring to the same company. The Panel accepts these arguments in favor of consolidation and grants the request to consolidate. Going forward, the Panel will refer to the Respondents in singular form – the “Respondent”.

B. Language of Proceedings

The Complaint was filed in English. The language of the Registration Agreement for the disputed domain name <iqosandheets.com> is Russian. Paragraph 11(a) of the Rules provides that “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 Panel may also order that any documents submitted in a language other than that of the proceeding be translated.

However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).

In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties.

According to section 4.5.1 of the WIPO Overview 3.0 previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.

The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that the Respondent must be familiar with the English language since (i) the disputed domain name is comprised of Latin characters, (ii) the disputed domain name includes English words, (iii) the privacy registration service used by the Respondent conducts its business in English. The Complainant also believes that the language of the proceedings shall be English, otherwise due to additional costs and undue delay the Complainant would be unfairly disadvantaged by being forced to translate the Complaint to Russian.

The Panel further notes that no objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent was invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known its preference, but did not do so. On the contrary the Respondent had email communication with the Center both in Russian and English showing it can understand the language of the Complaint. The Panel also notes that the content of the website under the disputed domain name was in English.

The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian.

Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.

C. Identical or Confusingly Similar

The TLD “.com” in the disputed domain names is viewed as a standard registration requirement and is disregarded for the purposes of the confusing similarity test (see, e.g., Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).

According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.

According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed 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.

The disputed domain name <iqosandheets.com> reproduces the IQOS and HEETS trademarks in their entirety, in addition to the non-distinctive word “and”, and the disputed domain name <heets4you.com> reproduces the HEETS trademark in its entirety, in addition to the nondistinctive number “4” and word “you”.

Considering the above the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.

D. Rights or Legitimate Interests

The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain names.

The Complainant did not license or otherwise agree on the use of its prior registered trademarks by the Respondent (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875).

The Respondent is not commonly known by the disputed domain names, which could demonstrate its rights or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).

According to section 2.8.1 of the WIPO Overview 3.0 resellers or distributors using a domain name containing a complainant’s trademark to undertake sales related to the complainant’s goods may be making a bona fide offering of goods and thus have a legitimate interest in such domain name. Outlined in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the “Oki Data Test”), the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i) the respondent must actually be offering the goods at issue;
(ii) the respondent must use the site to sell only the trademarked goods;
(iii) the site must accurately and prominently disclose the registrant’s relationship with trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names reflecting the trademark.

The Panel finds that the Respondent failed to satisfy the third of the above requirements by not disclosing its actual relationship or lack thereof with the Complainant, and thus failed to pass the Oki Data Test. The Respondent’s use of the disputed domain names misleads consumers into thinking that the websites are operated by or affiliated with the Complainant. As such, the Respondent’s use of the disputed domain names cannot be considered bona fide.

Furthermore, the Respondent provided no evidence that it otherwise holds rights or legitimate interests in the disputed domain names.

Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain names. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

E. Registered and Used in Bad Faith

The Respondent’s use of the disputed domain names to purport to sell the Complainant’s products applying various Complainant’s trademarks shows that at the time of the registration of the disputed domain names the Respondent clearly knew and targeted the Complainant’s prior registered trademarks, which confirms its bad faith (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).

According to paragraph 4(b)(iv) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “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”. In this case, the disputed domain names resolved to websites featuring the Complainant’s trademarks and making false impression of being the Complainant’s website to intentionally attract Internet users by creating likelihood of confusion with the Complainant’s trademarks as to the source of the websites and its products. The Panel finds the above confirms the disputed domain names were registered and used in bad faith.

Considering the above the Panel finds the disputed domain names were registered and are being used in bad faith, therefore, the Complainant has established its case under 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, the Panel orders that the disputed domain names <heets4you.com> and <iqosandheets.com> be transferred to the Complainant.

Taras Kyslyy
Sole Panelist
Date: February 19, 2020