WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Timur Dzadzamiya

Case No. D2021-0067

1. The Parties

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

The Respondent is Timur Dzadzamiya, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <heets.info> (the “Domain Name”) is registered with the Registrar of Domain Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2021. On January 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 12, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 12, 2021 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 January 14, 2021. On January 12, 2021, the Center sent email communications in English and Russian regarding the language of the proceeding. The same day the Respondent responded with the following email in English: “It’s some kind of mistake. I have not written any complaint. What is the problem?” The Complainant requested English to be the language of the proceeding on January 14, 2021.

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 in both English and Russian, and the proceedings commenced on January 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2021. Apart from brief emails received from the Respondent on January 12, and 14, 2021, no formal Response was filed with the Center.

The Center appointed Olga Zalomiy as the sole panelist in this matter on March 10, 2021. 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 tobacco company, which is part of the group of companies affiliated with Philip Morris International Inc., an international tobacco company (“PMI”). The Complainant is the owner of the IQOS and HEETS trademarks worldwide, such as:

- International Registration No. 1326410 for the HEETS mark, registered on July 19, 2016 designating Ukraine, among other countries;

- International Registration No. 1218246 for the IQOS mark, registered on July 10, 2014 designating Ukraine, among other countries.

The Respondent registered the Domain Name <heets.info> on May 8, 2020. The Domain Name resolves to a website in the Russian language offering for sale in Donetsk, Ukraine purported HEETS products and IQOS systems. The website at the Domain Name does not provide any information about its owner, which is identified only as “IQOS HEETS ДОНЕЦК1 “. The website also displays a copyright notice: “2018-2020© “IQOS Heets Донецк”2 .

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it is a company, which is part of PMI. The Complainant states that PMI is an international tobacco company, with products sold in approximately 180 countries.

The Complainant alleges that the Domain Name is identical or confusingly similar to the Complainant’s HEETS trademark. The Complainant claims that the Domain Name incorporates the Complainant’s HEETS trademark in its entirety. The Complainant states that the generic Top-Level Domain (“gTLD”) “.info” in the Domain Name is viewed as a standard registration requirement, which is disregarded under the confusing similarity test. The Complainant alleges that the use of the gTLD “.info” in connection with its trademark in the Domain Name creates an impression that the Domain Name is commercially linked to the Complainant.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect to the Domain Name because of the following reasons:

1) The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its HEETS trademark;

2) The Respondent is not making a legitimate noncommercial or fair use of the Domain Name, because the website provided under the Domain Name does not meet the requirements for a bona fide offering of goods, because: (a) the Respondent is neither an authorized distributor or reseller of the IQOS system; (b) the website provided under the Domain Name does not meet the requirements set out by numerous panel decisions for a bona fide offering of goods because (i) the composition of the Domain Name suggests an affiliation with the Complainant and its HEETS mark; (ii) the owner / administrator of the website, prominently and without authorization presents the Complainant’s registered HEETS and IQOS trademarks, appearing at the top left corner of the website, which may confuse Internet users in believing that the website is affiliated with the Complainant; (iii) the website claims copyright in the Complainant’s copyrighted material appearing on the website; (iv) the website provides no information regarding the identity of the provider of the website, which is only identified as “IQOS HEETS ДОНЕЦК”. The Complainant claims that because its IQOS System is primarily distributed through official/endorsed stores, consumers will mistakenly believe that the website under the Domain Name belongs to an official/endorsed distributor.
The Complainant states that the Respondent’s registration and use of the Domain Name constitutes bad faith because the Respondent knew of the Complainant’s HEETS trademark at the time of the Domain Name registration. The Complainant contends that the Respondent chose the Domain Name intending to invoke a misleading association with the Complainant because the term “heets” is imaginative and unique to the Complainant. The Complainant claims that the Respondent registered and is using the Domain Name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s registered HEETS trademark as to the source, sponsorship, affiliation, or endorsement of its website or its services. The Complainant submits that by reproducing the Complainant’s trademark in the Domain Name and by using the Complainant’s product images, the Respondent’s website suggests the affiliation between the Complainant and the Respondent. This conclusion is supported by the Respondent’s use of the Complainant’s official product images, accompanied by a copyright notice claiming the copyright for the website and its contents. The Complainant states that the Respondent’s use of a privacy protection service to hide its true identity may in itself constitute a factor indicating bad faith.

B. Respondent

On January 12, 2021, the Respondent sent the following email: “It’s some kind of mistake. I have not written any complaint. What is the problem?”. On January 14, 2021, the Respondent sent the following email to the Center: “Good day! I am writing about the www.heets.info domain. Do you want to buy my site?” Two minutes later the Respondent sent an identical email to the Center with a copy to the Complainant’s attorney.

6.1. Procedural Issue – Language of the Proceeding

Under paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the registration agreement, unless the parties agree to use a different language, or the registration agreement provides otherwise. The Panel has the right to determine the language of the administrative proceeding based on the circumstances of the case.

Because the language of the Registration Agreement for the Domain Name is Russian, the default language of the administrative proceeding would be Russian. However, the Complainant requested that English be the language of the administrative proceeding because of the following reasons: (i) there is evidence that the Respondent understands English because the Domain Name is in Latin script and not in Cyrillic script; (ii) the Complainant is a Swiss entity with no knowledge of Russian; iii) English is the language of global commerce and the language in which the Respondent is doing business.

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 were the same as that of the complainant’s mark, […] (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint”3 .

The Panel grants the Complainant’s request that English be the language of this proceeding because of the following circumstances: (i) it is likely that the Respondent understands English because the Respondent sent three emails in English to the Complainant and the Center showing good command of English and the language/script of the Domain Name is Latin and not Cyrillic; (ii) the Complainant, being a Swiss company, would have to incur significant additional cost in the proceeding, if it were required to proceed in the Russian language and (iii) the Respondent did not object for English to be the language of the proceeding.

For the reasons stated, the Panel grants the Complainant’s request that English be the language of this proceeding.

6.2. Substantive issues

Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark to which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect to the Domain Name; and

(iii) the Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must prove that the Domain Name is identical or confusingly similar to the trademark or service mark to which the Complainant has rights.

The submitted evidence shows that the Complainant owns several trademark registrations for the HEETS trademark. Pursuant to section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), this satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.

The test for confusing similarity “involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”.4 It is well-established, that the applicable gTLD should be disregarded under the confusingly similarity test as a standard registration requirement5 .

Here, the Domain Name consists of the Complainant’s HEETS trademark and the gTLD “.info”. Because the Complainant’s HEETS trademark is recognizable within the Domain Name and because the gTLD “.info” is disregarded under the confusing similarity test, the Domain Name is identical to the Complainant’s HEETS trademark.

The Panel finds that the Complainant has satisfied the first element of the UDRP.

B. Rights or Legitimate Interests

To satisfy the second UDRP element, a complainant must make a prima facie case in respect to the lack of rights or legitimate interests of the respondent6 .

Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on the evidence, shall demonstrate a respondent’s rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(ii) of the UDRP:

(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The evidence on file shows that the Complainant has not licensed or permitted the Respondent to use the Complainant’s HEETS trademark in domain names, or for any other purpose. The Respondent is not an authorized distributor of IQOS systems. Nor has the Respondent been commonly known by the Domain Name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name. Finally, the Respondent’s January 14, 2021 offer to sell the Domain Name also indicates that the Respondent has no rights or legitimate interests in the Domain Name.

Previous UDRP panels have recognized that resellers or distributors using domain names containing the complainant’s trademark to undertake sales of the complainant’s goods may be making a bona fide offering of goods and thus have a right or legitimate interest in such domain names in some situations.

Outlined in the Oki Data case, the following cumulative requirements must be satisfied for the respondent to make a bona fide offering of goods and services:

“(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to corner the market in domain names that reflect the trademark.”7

The Panel finds the Respondent’s use of the Domain Name is not a bona fide offering of goods and services given that the website at the Domain Name suggests affiliation between the Complainant and the Respondent, and does disclose prominently the relationship between the Complainant and the Respondent. The website indicates “IQOS HEETS ДОНЕЦК”.

The Panel further notes that the Complainant’s IQOS System is primarily distributed through official / endorsed stores, it is likely that relevant consumers may be misled into believing that the Respondent is an official distributor of the Complainant. This belief is strengthened by information about the IQOS system displayed on the website, which states that IQOS technology belongs to the Complainant, but mentions nothing about the Respondent.

For the reasons stated, the Panel finds that the Complainant has made a prima facie case in respect to the lack of rights or legitimate interests of the Respondent in the Domain Name. Once a complainant makes a prima facie case, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Domain Name. The Respondent has failed to do so.

Thus, the Panel concludes that the Complainant has satisfied the second element of the UDRP.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name was registered and is being used in bad faith.

The UDRP establishes that, for the purposes of paragraph 4(a)(iii), “bad faith” registration and use of a domain name can be established by a showing of circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location, or of a product or service on the respondent’s website or location8 .

Prior UDRP panels have found “the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: … (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name” .

The Panel concludes, on the evidence submitted by the Complainant, that the Respondent has registered and is using the Domain Name in bad faith.

Given the reputation of the Complainant’s HEETS trademark, the Respondent’s use of the Domain Name incorporating the Complainant’s trademark, to resolves to a website that sells goods under the Complainant’s HEETS and IQOS trademarks and provides information about the Complainant and its technologies, the Respondent could not plausibly assert that he did not register the Domain Name to trade on the goodwill of the Complainant’s trademark.

Further, the evidence shows that the Respondent’s website at the Domain Name is designed to look like websites of an official or authorized reseller of the Complainant’s products. While the website contains no information about their owner, it identifies only as “IQOS HEETS ДОНЕЦК”.

Finally, the Respondent offer to sell the Domain Name to the Complainant is also evidence of bad faith as descried under paragraph 4(b)(i) of the Policy.

The Panel concludes that the Respondent registered and is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website or location, or of a product or service on the Respondent’s website or location.

Based on the evidence presented, the Panel finds that the Domain Name was registered and is being used in bad faith. Therefore, the Complainant has satisfied the third element of the UDRP.

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 Domain Name <heets.info> be transferred to the Complainant.

Olga Zalomiy
Sole Panelist
Date: March 22, 2021

1 This means Donetsk, a city in Ukraine, in Russian language.

2 Id.

3 Section 4.5.1 of the WIPO Overview 3.0.

4 Section 1.7, WIPO Overview 3.0.

5 Section 1.11.1, WIPO Overview 3.0.

6 Section 2.1, WIPO Overview 3.0.

7 Section 2.8, WIPO Overview 3.0.

8 See, Policy, paragraph 4(b)(iv).