WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Шматков Игорь Олегович / Shmatkov Igor and Vladislav Logovsky

Case No. D2020-0180

1. The Parties

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

The Respondent is Шматков Игорь Олегович / Shmatkov Igor, Ukraine and Vladislav Logovsky, Ukraine.

2. The Domain Names and Registrars

The disputed domain name <amber-heets.xyz> is registered with Hosting Ukraine LLC, and the disputed domain name <getheets.com> is registered with Registrar of Domain Names REG.RU LLC (the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2020. On January 24, 2020, the Center transmitted by email to the Registrars request for registrar verification in connection with the disputed domain names. On January 27, 2020, the Registrars transmitted by email to the Center their verification responses 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 January 27, 2020, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a consolidation request on February 13, 2020.

On January 27, 2020, the Center transmitted an email in English and Russian to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on January 28, 2020. The Respondent did not comment on the language of the proceeding.

The Center verified that 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 February 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 10, 2020.

The Center appointed Assen Alexiev as the sole panelist in this matter on March 20, 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 flavorful 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 around 51 countries through official IQOS stores and websites and selected authorized distributors and retailers and has about 8 million users.

The Complainant owns the following trademark registrations of the mark HEETS (the “HEETS trademark”):

- the United Arab Emirates trademark HEETS with registration No. 256864, registered on December 25, 2017 for goods in International Class 34;

- the United Arab Emirates trademark HEETS (stylized) with registration No. 256867, registered on December 25, 2017 for goods in International Class 34; and

- the United Arab Emirates trademark HEETS AMBER LABEL with registration No. 257770, registered on April 22, 2018 for goods in International Class 34.

The disputed domain name <amber-heets.xyz> was registered on December 3, 2019, and the disputed domain name <getheets.com> was registered on September 30, 2019. Each of them is linked to an English-language online website offering the Complainant’s HEETS products for delivery in the United Arab Emirates with prices indicated in United Arab Emirates dirhams.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain names are linked to online shops selling and offering the Complainant’s HEETS tobacco products. These online shops create the impression that they are maintained by official online retailers of the Complainant for the United Arab Emirates, because they prominently use the Complainant’s HEETS trademark in the banners of the websites and use a number of the Complainant’s official product images of the HEETS tobacco products without the Complainant’s authorization, but do not provide any details regarding the providers of the websites and do not acknowledge the Complainant as the brand owner of the IQOS System and of the HEETS tobacco products.

According to the Complainant, the disputed domain names are identical or confusingly similar to the HEETS trademark in which the Complainant has rights, because they incorporate as their dominant and recognizable feature the Complainant’s HEETS trademark in combination with non-distinctive and descriptive words.

The Complainant submits that the Respondent does not have rights or legitimate interests in the disputed domain names, as the Complainant has not permitted the Respondent to use any of its trademarks or to register a domain name incorporating its HEETS trademark, and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. On the contrary, the Respondent intends to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the HEETS trademarks of the Complainant, and its conduct does not meet the requirements for a bona fide offering of goods. The Complainant points out in this respect that the disputed domain names and the associated websites falsely suggest an affiliation with the Complainant and its HEETS trademark, because they reproduce this trademark in the disputed domain names and prominently feature it in the banners of the websites along with the Complainant’s official product images without authorization and without including information regarding the identity of the providers of the websites at the disputed domain names, which is only identified as “HEETS IN UAE”. The online shop linked to the disputed domain name <getheets.com> contains an unremarkable disclaimer at the bottom of the website, stating that the website is not affiliated with the Complainant. This disclaimer may only be seen by visitors to the website after they have made a commercial decision to purchase the products offered for sale on the website, and does not mention of the HEETS trademark and its owner and the lack of relationship between the provider of the website and the HEETS trademark.

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 it knew of the Complainant’s HEETS trademark when registering the disputed domain names, as the Respondent started offering the Complainant’s HEETS products immediately after registering the disputed domain names. According to the Complainant, the Respondent’s use of the disputed domain names also makes it evident that the Respondent registered and used the disputed domain names with the intention to attract, for commercial gain, internet users to its websites by creating a likelihood of confusion with the Complainant’s HEETS trademark as to the affiliation of its websites and of the products offered on its websites.

The Complainant also points to the fact that 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 issues

A. Consolidation of the disputes

The Complainant requests the Panel to consolidate the disputes in relation to the two disputed domain names. It points out that the two disputed domain names are under common control, because the design and content of the websites associated with them are highly similar, and each of these websites detail their provider as “HEETS IN UAE”, and the messages appearing in the chatbots available on these websites are identical. The Complainant also points out that the website associated with the disputed domain name <amber‑heets.xyz> links to the website associated with the disputed domain name <getheets.com>.

As discussed in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), 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 Panel is satisfied that these requirements are met in the present case. The arguments brought forward by the Complainant for the existence of common control over the two disputed domain names are supported by the evidence in the case file and have not been denied by the Respondent, and the latter has not objected to the consolidation either. The Panel is not aware of any reason why the consolidation would not be fair and equitable to all parties and would not lead to procedural efficiency.

Therefore, in exercise of its powers under paragraph 10(e) of the Rules, the Panel allows the consolidation of the disputes in respect of the two disputed domain names. The registrants of the two disputed domain names will be jointly referred to in this decision as the “Respondent”.

B. Language of the proceeding

In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrars, the language of the registration agreements 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 submitted its Complaint in the English language, and requests the proceeding to be held in English. The Complainant argues that the translation of the Complaint into Russian would unreasonably burden the Complainant and delay the proceedings. It points out that the website at the disputed domain name is entirely in English. The Center has sent all its messages 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 any observations on the issue and has thus not objected to the Complainant’s request that the proceedings be held in English.

As noted by the Complainant, the whole content of the website at the disputed domain name, including its contact form, is entirely in English. This satisfies the Panel that the Respondent can communicate in English.

Taking the above into account, the Panel accepts 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.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the HEETS 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 3.0. The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” and the “.xyz” gTLDs of the disputed domain names.

The relevant part of the disputed domain name <amber‑heets.xyz> is therefore the sequence “amber‑heets”, which consists of the dictionary word “amber” and the element “heets”, which is identical to the HEETS trademark, and this trademark is clearly recognizable in the disputed domain name. Similarly, the relevant part of disputed domain name <getheets.com> is the sequence “getheets”, which consists of the dictionary word “get” and the element “heets”, identical to the HEETS trademark, and this trademark is clearly recognizable in this disputed domain name as well. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element. See section 1.8 of WIPO Overview 3.0.

In view of the above, the Panel finds that the disputed domain names are confusingly similar to the HEETS 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 HEETS trademark and that the Respondent is not carrying out a bona fide use of the disputed domain names. According to the Complainant, the Respondent uses the disputed domain names for websites that offer the Complainant’s HEETS products for sale, displays the Complainant’s HEETS trademark and marketing materials without authorization by the Complainant and without disclosing the lack of relationship between the Respondent and the Complainant as owner of the HEETS trademark. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

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 WIPO Overview 3.0, UDRP panels acting 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, one of which is 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 names are confusingly similar to the HEETS trademark and Internet users may regard them as referring to locations authorized by the Complainant where its HEETS products are offered for sale. The disputed domain names resolve to websites that offer the Complainant’s HEETS products, display the HEETS trademark and marketing materials without identifying the supplier of the offered goods and without properly disclosing the lack of relationship between the Parties. The website at the disputed domain name <amber-heets.xyz> does not include any disclaimer of the lack of relationship between the website owner and the Complainant. The website at the disputed domain name <getheets.com> includes a disclaimer, but it does not mention that the HEETS trademark and the copyright in the marketing materials on the website belong to the Complainant and that the website owner does not have a relationship with the owner of this trademark. The disclaimer is also in very small letters and is located at the bottom of the website, while the most prominent texts on the website are “IQOS HEETS IN UAE”, “GET HEETS IN UAE” and “IQOS heets Dubai: free delivery”, as well as details, prices and marketing materials about the various HEETS products offered on the website. In the Panel’s view, this design and content of the website does not properly disclose the lack of relationship between the Parties.

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 HEETS trademark, has registered and used the disputed domain names in an attempt to exploit the trademark’s goodwill to attract Internet users to the Respondent’s websites which offer the Complainant’s products without a proper disclosure of 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 or 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.”

As discussed above, the disputed domain names fully incorporate the HEETS trademark, which has been registered more than two years prior to the registration of the disputed domain names, in combination with dictionary words. The Respondent does not deny that it has linked them to websites that offer the Complainant’s HEETS products and prominently display the HEETS trademark and the Complainant’s marketing materials for its HEETS products without identifying the supplier of the offered goods and without properly disclosing the lack of relationship between the Parties. The Respondent also does not deny that it lacks authorization from the Complainant.

Taking the above into account, the Panel accepts that it is more likely than not that the Respondent has registered the disputed domain names with knowledge of the Complainant and targeting the HEETS trademark in an attempt to attract traffic to the disputed domain names by confusing Internet users that they are reaching official online locations where the Complainant’s HEETS products are offered for sale and then offer them these products for commercial gain. In view of this, the Panel accepts that by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the websites at the disputed domain names, by creating a likelihood of confusion with the Complainant’s HEETS trademark, which supports a finding of bad faith conduct under Paragraph 4(b)(iv) of the Policy.

It should also be noted that, as evident from the case file, the Respondent has provided false contact details for the purposes of the registration of the disputed domain names, which is an additional circumstance supporting the finding that the Respondent has acted in bad faith.

Therefore, the Panel finds that the disputed domain names have been registered and 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 <amber-heets.xyz> and <getheets.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: April 3, 2020