WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Anton Gromov, sticksforheat

Case No. D2019-2701

1. The Parties

The Complainant is Philip Morris Products S.A., Switzerland, represented by Boehmert & Boehmert, Germany.

The Respondent is Anton Gromov, sticksforheat, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <sticksforheat.com> is registered with 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 November 5, 2019. On November 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On November 8, 2019, the Center sent to the Parties the language of the proceedings document and invited the Complainant to respond by November 11, 2019, and the Respondent to submit observations on the Complainant’s response by November 13, 2019. On November 8, 2019, the Complainant requested the proceeding to be held in the English language. On the same date, the Respondent requested the proceeding to be held in Russian.

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 in English and in Russian, and the proceedings commenced on November 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2019. The Respondent requested the four-calendar day extension for the Response under paragraph 5(b) of the Rules. Accordingly, the Center extended the due date for the Response until December 10, 2019. The Response was filed with the Center on December 9, 2019. On December 16, 2019, the Complainant filed a supplementary submission, and on the same date, the Respondent also filed a supplementary submission in response.

The Center appointed Assen Alexiev as the sole panelist in this matter on December 18, 2019. 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.

In respect of the Parties’ supplementary submissions, the Panel notes that the Complainant’s submission deals with issues raised in the Response that could not have been anticipated by the Complainant, and in its response to it the Respondent makes certain statements that are relevant to the dispute. The supplementary submissions have been filed prior to the appointment of the Panel and have not caused any delay in the proceeding. Therefore, the Panel decides to accept and take into account the supplementary submissions of the Parties.

4. Factual Background

The Complainant is affiliated to Philip Morris International Inc., which is the 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 and has approximately 8.8 million users.

The Complainant owns the following trademark registrations:

- the International trademark HEETS with registration No.1326410, registered on July 19, 2016 for goods in International Classes 9, 11 and 34 (the “HEETS trademark”);

- the International trademark HEATSTICKS with registration No.1217386, registered on July 21, 2014 for goods in International Class 34, and the United States trademark HEATSTICKS with registration No.4758618, registered on July 7, 2014 for goods in International Class 34 (jointly referred to as the “HEATSTICKS trademark”); and

- the International trademark IQOS with registration No.1218246, registered on July 10, 2014 for goods in International Classes 9, 11 and 34 (the “IQOS trademark”).

The disputed domain name was registered on September 21, 2019. It is linked to an English-language online website offering the Complainant’s HEETS and IQOS products as well as third-party products.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the HEATSTICKS, HEET and HEETS trademarks of the Complainant, as it consists of the indicative term “heat” and the descriptive indication “sticks for” and thus incorporates the HEATSTICKS trademark. The combination of elements in the disputed domain name makes an association of the disputed domain name with the Complainant’s HEATSTICKS trademark and creates the impression that the term “heat” in the end of the disputed domain name indicates the products that are being offered on the associated website.

According to the Complainant, the Respondent lacks rights and legitimate interests in the disputed domain name, as the Complainant has not licensed the Respondent to use the HEET, HEETS and HEATSTICKS trademarks or to register a domain name that incorporates them. The Complainant also states that the Respondent is not an authorized distributor or reseller of the IQOS system and is not making a legitimate non-commercial or fair use of the disputed domain name, but attempts to unfairly obtain a commercial gain by misleadingly diverting consumers looking for the products of the Complainant. The Respondent is not using its website to sell only the Complainant’s goods, but is also offering competing products. The Respondent’s website includes the heading “HEETS and IQOS Store” and does not disclose the identity of its owner and the lack of relationship between the Parties and, which leaves consumers with the false impression that the website is provided by the Complainant or one of its affiliates or official dealers.

The Respondent’s website also uses many official images of the Complainant’s products without authorization from the Complainant and promotes an Instagram account with a name that incorporates the Complainant’s IQOS and HEETS trademarks and contains the HEETS logo. The Complainant points out that it does not currently offer for sale its HEETS products in the United States given that they have not yet been authorized for sale by the FDA. However, the Respondent’s website creates the false impression that the Complainant’s HEETS products may be sold into the United States.

The Complainant contends that the disputed domain name was registered and is being used in bad faith.

According to it, the Respondent’s use of the disputed domain name shows that the Respondent knew of the Complainant’s HEET, HEETS and HEATSTICKS trademarks when registering the disputed domain name, and registered and used it with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s HEET, HEETS and HEATSTICKS trademarks as to the source, sponsorship, affiliation, or endorsement of its website or of the products offered on its website. The Respondent started offering the Complainant’s HEETS products immediately after registering the disputed domain name and the associated website indicates that it is a “HEETS and IQOS Store”. The words “heet”, “heets” and “heatsticks” are imaginative terms; they are unique to the Complainant and are not commonly used to refer to tobacco products. Further, the Complainant does not currently offer for sale its HEETS and IQOS products in the United States, but the Respondent’s website creates the false impression that the opposite is true.

The Complainant points out that the Respondent has recently been involved in the bad faith registration and use of the domain name <sellheets.com>, ascertained in the decision in Philip Morris Products S.A. v. Anton Gromov, WIPO Case No. D2019-1868, which shows a pattern of bad faith conduct in connection with domain names incorporating the Complainant’s trademarks.

In its supplemental submission, the Complainant contends that the actual use of the disputed domain name is decisive for the assessment of the issues of rights and legitimate interests and bad faith of the Respondent under the Policy. It points out that the Respondent itself acknowledges that its website provides “controversial information that violates the exclusive rights of the Complainant”. The Complainant also notes that the Respondent’s website does not indicate that it is primarily addressing the Russian public, so the Respondent’s arguments regarding the legal situation in this country are of no relevance.

B. Respondent

The Respondent points out that the doctrine of free use of trademarks for descriptive purposes means that a word may in one case be used as a descriptive term, and in another case, it may have distinctiveness in respect of certain goods. Paragraph 33(b)(4) of the United States Lanham Act allows the use of trademarks by third parties for descriptive purposes, so although the HEATSTICKS trademark has been registered by the Complainant in the United States, this sign does not lose its descriptive nature and its use in writing may not be limited by the trademark owner, takin into account the fact that the disputed domain name does not represent the HEATSTICKS trademark, but is being used as the autonomous expression “sticks for heat”. According to the Respondent, the descriptive use is not trademark infringement, as long as it does not individualize certain goods, i.e., it is not being used in the trademark sense, and is being used in good faith and solely for the description of one’s own goods or services. The Respondent cites in this regard two cases that were resolved by courts in the United States. It also maintains that the Complaint is the subject of a separate proceeding and past decisions under the Policy should not be taken into account for the resolution of the present dispute.

In respect of the Complainant’s argument that the Respondent offers the Complainant’s products for sale to customers in the United States although the sale of the IQOS system is not allowed there, the Respondent points out that the Complainant does not submit evidence that the Respondent sells tobacco products in the United States, and that the subject of the present proceeding is the disputed domain name and not the commercial activities of the Respondent.

The Respondent further points out that the disputed domain name is registered with the Registrar, which is a Russian legal entity and is being hosted on Russian territory, while the Complainant has not submitted evidence of trademark registrations for the sign HEATSTICKS in the Russian Federation, so it does not have trademark rights in this jurisdiction. At the same time, the Respondent continues, in Russian Federation anyone is free to use its abilities and assets for entrepreneurial or for other economic activity that is not prohibited by law, while Article 23 of the Civil Code of the Russian Federation allows any physical person to carry out commercial activities without the need to establish a legal entity.

According to the Respondent, the Complaint should be denied, because the arguments of the Complainant relate to the content of the Respondent’s website, and the disputed domain name does not itself infringe the exclusive rights of the Complainant. At the same time, the Respondent finds it possible to take into account the interests of the Complainant and remove from its website any contested information that infringes the exclusive rights of the Complainant, as directed by the Panel.

In its supplementary submission, the Respondent objects to the acceptance of the supplemental filing of the Complainant, and maintains that it does not attempt to represent itself as an official agent of the Complainant’s brand and is ready to make certain concessions, as it has deleted the Instagram account referred to by the Complainant and is ready to also remove the title of its website “HEETS and IQOS Store”.

6. Discussion and Findings

6.1. Procedural issue – Language of the proceedings

In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name 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 and does not have a Russian language version, while the contact form on the website is inviting potential customers to contact the Respondent 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 objects to the Complainant’s request that the proceedings be held in English, and maintains that the language of the proceeding should be Russian.

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. At the same time, the Panel accepts and will take into account all documents in the case file that are in the Russian language.

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 name:

(i) the disputed domain name is 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 name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”

The Panel rejects the Respondent’s statement that past decisions under the Policy should not be taken into account for the resolution of the present dispute. As noted in the introduction to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the UDRP does not operate on a strict doctrine of binding precedent, but it is important for the overall credibility of the UDRP system that filing parties can reasonably anticipate the result of their case. UDRP panels strive for consistency with prior decisions and seek to ensure that the UDRP operates in a fair and predictable manner for all stakeholders. This Panel shares these values and aims, and will take into account the views summarized in the WIPO Overview 3.0 for the resolution of the present dispute.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the HEETS, IQOS and HEATSTICKS trademarks. The Respondent points out that the Complainant has not provided evidence that these trademarks have been registered for the territory of the Russian Federation. However, as summarized in section 1.1.2 of the WIPO Overview 3.0, noting in particular the global nature of the Internet and Domain Name System, the jurisdictions where a complainant’s trademark is valid is not considered relevant to panel assessment under the first element of the UDRP. In view of this, the Panel is satisfied that the Complainant has established that it has rights in a trademark for the purposes of this assessment.

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” gTLD section of the disputed domain name.

The relevant part of the disputed domain name is therefore the sequence “sticksforheat”. It consists of the elements “sticks”, “for” and “heat”. Although the “sticks” and “heat” elements reproduce the elements of the HEATSTICKS trademark in reverse order, this trademark is still clearly recognizable in the disputed domain name, and the addition of the “for” element between them does not prevent a finding of confusing similarity. See section 1.8 of WIPO Overview 3.0.

As discussed in section 1.15 of the WIPO Overview 3.0, the content of the website associated with the domain name is usually disregarded by panels when assessing confusing similarity under the first element, but in some instances, panels have taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name. Having reviewed the content of the Respondent’s website, the Panel finds that in the present case this indeed appears to be so. As discussed in more detail in the following sections of this decision, the name of the Respondent’s website and the goods offered on it shows that this website is indeed focused on the Complainant’s goods, bearing the Complainant’s brands, alongside competing goods, and not on anything that may be associated with an eventual descriptive meaning of the expression “sticks for heat”. This satisfies the Panel that the Respondent is targeting the Complainant’s trademarks with the disputed domain name and the associated website.

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the HEATSTICKS 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 name, stating that the Complainant has not licensed the Respondent to use the HEETS, IQOS and HEATSTICKS trademarks or to register a domain name that incorporates them, that the Respondent is not an authorized distributor or reseller of the IQOS system and is not making a legitimate non-commercial or fair use of the disputed domain name, but attempts to unfairly obtain a commercial gain by misleadingly diverting consumers looking for the tobacco products of the Complainant. The Complainant points out that the Respondent is using its website to sell not only the Complainant’s goods, but also competing products. The Respondent’s website includes the heading “HEETS and IQOS Store”, uses many official images of the Complainant’s products without authorization from the Complainant and promotes an Instagram account with a name that incorporates the Complainant’s IQOS and HEETS trademarks and contains the HEETS logo, while not disclosing the identity of its owner and the lack of relationship between the Parties. The Complainant also points out that the Respondent’s website creates the false impression that the Complainant’s HEETS products may be sold into the United States. The Complainant thus makes a prima facie case that the Respondent does not have rights and legitimate interests in the disputed domain name.

The Respondent maintains that it has a legitimate interest to use the disputed domain name because it does not represent the HEATSTICKS trademark, but the descriptive expression “sticks for heat”, the use of which is not trademark infringement, as long as it does not individualize certain goods and is being used in good faith and solely for the description of one’s own goods or services. The Respondent further points out that the Registrar is a Russian legal entity and the Respondent’s website is being hosted on Russian territory, while the HEATSTICKS trademark is not registered in the Russian Federation. The Respondent also maintains that it does not attempt to represent itself as an official agent of the Complainant’s brand.

As discussed in section 6.2.A above, the disputed domain name is confusingly similar to the HEATSTICKS trademark, and the association with the Complainant is strengthened by the content of the website at the disputed domain name, which indeed offers the Complainant’s HEETS and IQOS products, and by the absence of a disclaimer for the lack of relationship between the Parties. The website bears the title “HEETS and IQOS Store” and uses many images of the Complainant’s products. In addition, the website promotes an Instagram account with a name that incorporates the Complainant’s IQOS and HEETS trademarks and contains the HEETS logo. These circumstances show that the Respondent is targeting the Complainant and its tobacco products with the disputed domain name and with the associated website, rather than using the disputed domain name for the purposes of any descriptive meaning of the words of which it is composed, as alleged by the Respondent. In view of the above, the Respondent’s arguments based on the alleged descriptive nature of the disputed domain name and its allegation that it is not representing itself as an official agent of the Complainant are unconvincing.

The Respondent’s website has only an English language version, while the prices of the products featured on it are indicated in USD and the website offers international shipping. This supports a finding that the Respondent targets potential international customers of the Complainant’s products and not Russian customers. In view of this, the Respondent’s arguments related to the lack of registration of the HEATSTICKS trademark in the Russian Federation have little relevance and do not support its position.

The Respondent states that the Complainant has not proven that the Respondent sells the Complainant’s products to customers in the United States where the IQOS system is not yet allowed to be sold. Nevertheless, the Respondent’s website states “We ship orders worldwide. No customs duties or extra charges. Shipping is free” and specifies that “Usually delivery time takes 14 to 20 business days. Europe - 7-10 business days, USA - 10-14 business days, Australia - 15-20 business days.” This shows that even if it is not already delivering the Complainant’s products in the United States, the Respondent is ready to do so, although this, as pointed out by the Complainant, would be illegal. The Panel also notes the statement “No customs duties”, which in itself makes one ask whether the goods delivered by the Respondent actually pass through legitimate import channels.

The Respondent does not deny that the website at the disputed domain name features third party products that compete with the Complainant’s tobacco products.

All the above satisfies the Panel that the Respondent has registered and is using the disputed domain name in an attempt to unfairly generate commercial gain by attracting Internet users to the disputed domain name and to the associated website through misleading them that they are reaching an online location authorized by the Complainant where its original tobacco products are legitimately offered for sale and delivery, and then offer them not only the Complainant’s products, but also competing products. In the Panel’s view, such use of the disputed domain name does not give rise to rights and legitimate interests of the Respondent in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

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 name is confusingly similar to the HEATSTICKS trademark and resolves to a website that offers the Complainant’s products alongside competing products. The website bears the title “HEETS and IQOS Store” and uses many images of the Complainant’s products, but does not include a disclaimer for the lack of relationship between the Parties. These circumstances show that the Respondent is targeting the Complainant and its tobacco products with the disputed domain name and with the associated website.

Taking the above into account, the Panel accepts that the Respondent has registered and used the disputed domain name with knowledge of the Complainant and targeting the HEATSTICKS trademark. It is more likely than not that by creating a likelihood of confusion with the Complainant’s HEATSTICKS trademark, the Respondent has attempted to unfairly attract traffic to the disputed domain name and confuse Internet users that they are reaching an online location authorized by the Complainant where the Complainant’s tobacco products are offered for sale, and then offer them also third party tobacco products that compete with the Complainant’s products for commercial gain.

Therefore, the Panel finds that the disputed domain name has 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 name <sticksforheat.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: January 16, 2020