The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondents are Iliya Lushchyk, Ukraine / Davit Papyan, Armenia.
The disputed domain names <heetsonelove.com> and <heetsweb.com> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2020. On August 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 18, 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 August 21, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 24, 2020.
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 August 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2020. The Respondent did not submit any response. However, the Respondent, Davit Papyan, sent an informal email communication on August 21, 2020, prior to the commencement of the proceeding.
Accordingly, the Center notified the Parties about the commencement of Panel appointment on September 18, 2020.
The Center appointed Adam Taylor as the sole panelist in this matter on September 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.
The Complainant is part of the group of tobacco companies affiliated with Philip Morris International, Inc.
Amongst other things, the group produces tobacco products called “Heets” that are designed to be inserted into another of the Complainant’s products, “IQOS”, a heating device which the Complainant describes as a “Reduced Risk Product”.
The Complainant owns many registered trade marks for HEETS, including International Registration No. 1326410, registered on July 19, 2016, in classes 9, 11, and 34.
The disputed domain names were registered on April 26, 2020 (<heetsweb.com>) and July 14, 2020 (<heetsonelove.com>).
As of August 12, 2020, both disputed domain names were being used for websites headed “Heets Store” (<heetsonelove.com>) and “Heetsweb” (<heetsweb.com>) respectively and offering for sale products branded “Heets” that purported to be those of the Complainant. The latter website also includes competitor products. Both websites utilised the Complainant’s official photographs of its products.
The website at (<heetsonelove.com>) contained a disclaimer stating that “Heets” was a trade mark of the Complainant’s group, with which the site was not affiliated.
The following is a summary of the Complainant’s contentions.
The disputed domain names are confusingly similar to the Complainant’s trade mark, which they reproduce in its entirety. The addition of descriptive words is insufficient to avoid a finding of confusing similarity.
The Respondents lack rights or legitimate interests in the disputed domain names.
The Respondents are not making legitimate noncommercial or fair use of the disputed domain names.
The Respondents are not making a bona fide offering of goods or services. They are not authorised distributors or resellers of the Complainant’s products. Nor do they qualify as legitimate resellers under UDRP principles as they are selling competing goods and the disputed domain names and websites suggest an affiliation with the Complainant. The disclaimer on the website at the disputed domain name <heetsonelove.com> is not sufficiently clear or prominent. Furthermore, it serves to confirm the Respondents’ awareness of the Complainant’s trade mark.
The illegitimacy of the disputed domain names is further shown by the fact that both websites offer the Complainant’s products for sale into the United States of America (“United States”), which is illegal as these products are not currently authorised for sale in that jurisdiction. The websites give the false impression that the Complainant has officially launched its products in the United States.
The disputed domain names were registered and are being used in bad faith.
The Respondents were plainly aware of the Complainant’s trade mark when registering the disputed domain names. They did so with intention of creating a likelihood of confusion under paragraph 4(b)(iv) of the Policy, including by reproducing the Complainant’s trade mark in the disputed domain names and in the website titles; by unauthorised use of the Complainant’s official product images in conjunction with a copyright notice (in the case of the website at <heetsweb.com>); by offering competing products; and by unlawfully offering the Complainant’s products for sale into the United States.
The Respondents did not reply to the Complainant’s contentions. However, the Respondent, Davit Papyan, sent an informal email communication on August 21, 2020, prior to the commencement of the proceeding.
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
- the disputed domain names have been registered and are being used in bad faith.
The principles governing the question of whether a complaint may be brought against multiple respondents are set out in section 4.11 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel is satisfied that the disputed domain names and corresponding websites are subject to common control on the grounds that the website at the disputed domain name <heetsonelove.com> uses the same “terms” as those on the website at the disputed domain name <heetsweb.com> including reference to the latter disputed domain name and that the respective websites offer a similar service and include some identical content.
Furthermore, while the Center has received an email from one of the Respondents denying knowledge of the other, neither Respondent has filed a Response objecting to consolidation.
The Panel considers that, in the circumstances, consolidation is fair and equitable to all parties, and also procedurally efficient.
For convenience, the Panel refers below to the Respondents as “the Respondent” except where it is necessary to refer to them separately.
The Complainant has established rights in the mark HEETS by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive use of that name.
Section 1.8 of WIPO Overview 3.0 makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, the Complainant’s distinctive trade mark is readily recognisable within each disputed domain name and, accordingly, the addition of the descriptive terms “one love” and “web” respectively is insufficient to avert a finding of confusing similarity.
For the above reasons, the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the Respondent purports to resell the Complainant’s own goods. The consensus view of UDRP panels – as expressed in section 2.8 of WIPO Overview 3.0 – is that to establish a bona fide offering of goods or services in such circumstances, the respondent must comply with certain requirements (known as the “Oki Data test”) including, inter alia:
1. use of the site to sell only the trademarked goods or services; and
2. the site’s accurately and prominently disclosing the Respondent’s relationship with the trade mark holder.
In the Panel’s view, the website at the disputed domain name <heetsweb.com> fails to comply with the first requirement listed above as it offers for sale products which compete with those of the Complainant.
Both websites fail to comply with the second requirement listed above as they are prominently branded with the names “Heets Store” (<heetsonelove.com>) and “Heetsweb” (<heetsweb.com>), which imply a connection with the Complainant. The Panel considers that in these circumstances the disclaimer on the website at <heetsonelove.com> does not constitute an accurate and prominent disclosure of the (lack of) relationship between the Respondent and the Complainant.
Accordingly, the Panel considers that the Respondents’ use of the disputed domain names cannot be said to be bona fide.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
It is obvious that the Respondent registered the disputed domain names with the Complainant’s distinctive and well-known trade mark in mind as both have been used for websites purporting to offer the Complainant’s own products for sale.
In the Panel’s view, the Respondent set out to create a likelihood of confusion with the Complainant’s mark for the purposes of paragraph 4(b)(iv) of the Policy including by selecting domain names dominated by the Complainant’s distinctive mark, branding the websites with a name corresponding to the mark, using the Complainant’s official product photographs (without permission) and, in the case of <heetsweb.com> by offering competing products for sale.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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, <heetsonelove.com> and <heetsweb.com>, be transferred to the Complainant.
Date: October 9, 2020
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