WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Anatoliy Harin, heets-shop.online

Case No. D2020-2400

1. The Parties

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

Respondent is Anatoliy Harin, heets-shop.online, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <heets-shop.online> (the “Disputed Domain Name”) is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2020. On September 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 17, 2020, 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 Complainant on October 25, 2020, 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 September 29, 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 Respondent of the Complaint, and the proceedings commenced on September 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 21, 2020.

The Center appointed Richard W. Page as the sole panelist in this matter on October 29, 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

Complainant is a company, which is part of the group of companies affiliated with Philip Morris International Inc. (jointly referred to as “PMI”). PMI is a leading international tobacco company, with products sold in approximately 180 countries. PMI’s brand portfolio contains brands like MARLBORO.

PMI is known for innovating across its brand portfolio. In the course of transforming its business for combustible cigarettes to Reduced Risk Products (or “RRPs” which PMI defines as products that present, are likely to present, or have the potential to present less risk of harm to smokers who switch to those products versus continued smoking). PMI has developed a number of RRP products. One of these RRPs developed and sold by PMI is called IQOS. IQOS is a precisely controlled heating device into which special designed tobacco products under brand names “HEETS” or “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 (collective referred to as the IQOS System). The IQOS System was first launched by PMI in Nagoya, Japan in 2014 and has obtained a 18.3% share of the market in Japan. Today the IQOS System is available in cities around 57 markets across the world. As a result of a USD 6 billion investment and extensive international sales (in accordance with local laws), the IQOS System has achieved considerable international success and reputation and over 11 million relevant consumers have converted to the IQOS System worldwide. To date, the IQOS System has been almost exclusively distributed through PMI’s official IQOS stores and websites and through selected authorized distributors and retailers.

For its new innovative smoke-free products, Complainant owns a large portfolio of well-known trademarks for HEET and IQOS, including without limitation: International Registration No. 1328679 for HEETS, registered July 20, 2016, and International Registration No. 1326410 for HEETS, registered July 19, 2016 (collectively the “HEETS Mark”). Complainant is the registered owner of the HEETS Mark in numerous jurisdictions, including without limitation Ukraine and Russia.

The Disputed Domain Name was registered on July 30, 2020. The Disputed Domain Name resolves to a website (the “Website”), which offers for sale products of Complainant and Complainant’s competitors.

5. Parties’ Contentions

A. Complainant

Complainant contends that it is the owner of numerous worldwide registrations for the HEETS Mark and that the Disputed Domain Name is confusingly similar to the HEETS Mark, pursuant to paragraph 4(a)(i) of the Policy.

Complainant further contends that the Website is purporting to be an official online retailer of Complainant’s IQOS System in Ukraine by using Complaint’s HEETS Mark in the Disputed Domain Name together with the non-distinctive and descriptive word “shop”. The addition of the word “shop” is generic and descriptive and does not distinguish the Disputed Domain Name from the HEETS Mark. The confusion is exacerbated by the use of Complainant’s official product images in conjunction with the Disputed Domain Name without Complainant’s authorization. Importantly, the provider of the Website is using the HEETS Mark in the Disputed Domain Name in circumstances where the provider of the Website is not known to Complainant nor is it authorized to use the HEETS Mark.

Complainant further contends that the HEETS Mark is recognizable in the Disputed Domain Name, see section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant further contends that the generic Top-Level Domain (“gTLD”) “.online” is not considered distinctive, see section 1.11 of the WIPO Overview 3.0.

Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

Complainant further alleges that Respondent is not known by or in any way related to Complainant or any PMI affiliate. Respondent is not authorized to use the HEETS Mark.

Complainant further alleges that the Disputed Domain Name is linked to an online shop at the Website, which is selling and offering Complainant’s IQOS System as well as competing third party products of other commercial origin. The Website is provided primarily in Russian with some English content. The fact that the Website is indicating all prices in Ukrainian hryvnia currency, as well as presenting a Ukrainian address written in Cyrillic script, indicates that the Website is directed at Ukraine.

Complainant further alleges that the Website is prominently using the HEETS Mark at the top of the Website. The Website is also using a number of Complainant’s official product images (with English descriptions) without authorization, while at the same time providing a copyright notice at the bottom of the Website claiming copyright in the material presented and thereby strengthening the false impression of an affiliation with Complainant.

Complainant argues that 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 IQOS System, leaving the Internet user under the false impression that the online shop provided under the Website is that of Complainant and that it is connected to that of Complainant or one of its official distributors, which it is not.

Complainant further argues that it has shown a prima facie case for Respondent’s lack of rights or legitimate interests in the Disputed Domain Name. Complainant has not licensed or otherwise permitted Respondent to use its trademarks or to register a domain name incorporation its HEETS Mark (or a domain name associated with this trademark).

Complainant contends that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, Respondent’s behavior shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly divert consumers or to tarnish the HEETS Mark. Firstly, Respondent is not authorized to sell IQOS Systems. Secondly, the Website offers competing products for commercial gain. Thirdly, the Website use of the Disputed Domain Name does not meet the requirements set out by UDRP panel decisions for a bona fide offering of goods or services.

Complainant further contends that a reseller or distributor can be making a bona fide offering of good or services and only if certain requirements are met. The leading case is Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Which states the following criteria: Respondent must actually be offering the goods or services at issue; Respondent must only sell the trademarked goods; Respondent must disclose Respondent’s relationship to the trademark owner; and Respondent must not try to “corner the market” of relevant domain names.

Complainant further contends that Respondent has registered and is using the Disputed Domain Name in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

Complainant alleges that Respondent had actual knowledge of the HEETS Mark when registering the Disputed Domain Name. Respondent started offering Complainant’s IQOS System immediately after registering the Disputed Domain Name. Furthermore, the term HEETS is purely an imaginative term and unique to Complainant. The term HEETS is not commonly used to refer to tobacco products. It is beyond the realm of reasonable coincidence that Respondent chose the Disputed Domain Name, without the intention of invoking misleading association with Complainant.

Complaint also alleges that Respondent registered and used the Dispute Domain Name with the intention to attract for commercial gain Internet users to the Website by creating a likelihood of confusion with the HEETS Mark.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

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

Respondent is not obliged to participate in this proceeding, but if it fails to do so, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview 3.0.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the HEETS Mark in which Complainant has rights; and

ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant contends that it has numerous registrations of the HEETS Mark and that the Disputed Domain Name is confusingly similar to the HEETS Mark, pursuant to paragraph 4(a)(i) of the Policy.

Section 1.2.1 of the WIPO Overview 3.0 states that registration of the HEETS Mark is prima facie evidence of Complainant having enforceable rights in the HEETS Mark.

Complainant has shown evidence of numerous registrations of the HEETS Mark and Respondent has not contested this evidence. Therefore, the Panel finds that Complainant has enforceable rights in the HEETS Mark for purposes of this proceeding.

Complainant further contends that the Disputed Domain Name is confusingly similar to the HEETS Mark pursuant to the Policy paragraph 4(a)(i).

Complainant further contends that the Disputed Domain Name contains the entirety of the HEETS Mark with only the descriptive word “shop” and the gTLD “.online” and that these elements are not distinctive.

Section 1.7 of the WIPO Overview 3.0 says that inclusion of the entire trademark in a domain name will be considered confusingly similar. Also see section 1.8 of the WIPO Overview 3.0, which instructs that the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) does not prevent a finding of confusing similarity. Also see section 1.11.1 of the WIPO Overview 3.0 which instructs that gTLDs such as (“.online”) may be disregarded for purposes of assessing confusing similarity.

The Panel finds that the Disputed Domain Name is confusingly similar to the HEETS Mark and Complainant has satisfied the elements of paragraph 4(a)(iii) of the Policy.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the HEETS Mark.

Complainant argues that it has not licensed or otherwise permitted Respondent to use its trademarks or to register a domain name incorporation its HEETS Mark (or a domain name associated with this trademark).

Complainant further argues that a reseller or distributor can be making a bona fide offering of good or services and only if certain requirements are met. The leading case is Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Which states the following criteria: Respondent must actually be offering the goods or services at issue; Respondent must only sell the trademarked goods; Respondent must disclose Respondent’s relationship to the trademark owner; and Respondent must not try to “corner the market” of relevant domain names.

The Panel finds that there is no evidence in the file that Respondent is commonly known by the Disputed Domain Name.

Complainant further argues that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, Respondent’s behavior shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly divert consumers or to tarnish the HEETS Mark. Firstly, Respondent is not authorized to sell IQOS Systems. Secondly, the Website offers competing products for commercial gain. Thirdly, the Website use of the Disputed Domain Name does not meet the requirements set out by panel decisions for a bona fide offering of goods or services.

The Panel finds that Complainant has made a showing that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Respondent has not contested these allegations.

Therefore, the Panel finds that Complainant has satisfied the elements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:

(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the HEETS Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the HEETS Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed 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 HEETS Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.

The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. See, Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

Complainant alleges that Respondent had actual knowledge of the HEETS Mark when registering the Disputed Domain Name. Respondent started offering Complainant’s IQOS System immediately after registering the Disputed Domain Name. Furthermore, the term HEETS is purely an imaginative term and unique to Complainant. The term HEETS is not commonly used to refer to tobacco products. It is beyond the realm of reasonable coincidence that Respondent chose the Disputed Domain Name, without the intention of invoking misleading association with Complainant.

Complainant also alleges that registered and used the Dispute Domain Name with the intention to attract for commercial gain Internet users to the Website by creating a likelihood of confusion with the HEETS Mark. The confusion is exacerbated by the use of Complainant’s official product images in conjunction with the Disputed Domain Name without Complainant’s authorization. Importantly, the provider of the Website is using the HEETS Mark in the Disputed Domain Name in circumstances where the provider of the Website is not known to Complainant nor is it authorized to use the HEETS Mark.

In discussing the lack of rights or legitimate interest above, the Panel concluded that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name and that there has been no bona fide offering of goods or services.

The Panel finds that Complainant has established the elements of paragraph 4(b)(iv) of the Policy and shown actual knowledge of the HEETS Mark when Respondent registered and used the Disputed Domain Name.

Therefore, Complainant has established the elements of 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 Name <heets-shop.online> be transferred to Complainant.

Richard W. Page
Sole Panelist
Date: November 5, 2020