WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. 徐毅 (Xu Yi)

Case No. D2021-1197

1. The Parties

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

The Respondent is 徐毅 (Xu Yi), China.

2. The Domain Name and Registrar

The disputed domain name <buyheats.com> is registered with Xin Net Technology Corporation (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 20, 2021, 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 the Complainant on April 23, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Complainant filed an amendment to the Complaint in English.

On April 23, 2021, the Center also transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding and provided further arguments in support. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amendment to 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 May 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2021.

The Center appointed Matthew Kennedy as the sole panelist in this matter on June 17, 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 with products sold in approximately 180 countries. In the course of transforming its business from combustible cigarettes, the Complainant has developed IQOS, a controlled heating device into which specially designed tobacco products under the brand names HEETS or HEATSTICKS are inserted and heated to generate a nicotine-containing aerosol. This product was launched in Japan in 2014 and, to date, has been marketed almost exclusively through the Complainant’s official IQOS stores and websites and selected authorized distributors and retailers. The Complainant owns multiple trademark registrations in multiple jurisdictions, including:

- International trademark registration number 1326410 for HEETS, registered on July 19, 2016, designating multiple jurisdictions, including China, specifying goods in classes 9, 11, and 34, including tobacco sticks and tobacco products for the purpose of being heated;

- International trademark registration number 1217386 for HEATSTICKS, registered on July 21, 2014, designating multiple jurisdictions, specifying goods in class 34; and

- Chinese trademark registration number 15098763 for HEATSTICKS, registered on September 7, 2015, specifying goods in class 34.

The above trademark registrations remain current.

The Respondent is an individual resident in China.

The disputed domain name was registered on January 12, 2021. It resolves to a website in English offering for sale “Darlings” heat-not-burn heatsticks products. Prices are displayed in USD. The website describes Darlings heatsticks as compatible with IQOS and compares their flavors to HEETS and other flavors. The website invites resellers to get in touch for quotations to distribute heatsticks in other countries. The website contains a brief summary of the history of the Complainant’s HEETS products. It does not display any of the Complainant’s logos or semi-figurative marks nor use its marks in a special font. There is no disclaimer as to the relationship, or lack of one, between the operator of the website and the Complainant.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s HEETS and HEATSTICKS trademarks.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the disputed domain name adapting its HEETS and HEATSTICKS trademarks. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. On the contrary, the Respondent’s behavior shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly divert consumers or to tarnish the trademarks owned by the Complainant.

The disputed domain name was registered and is being used in bad faith. The Respondent started offering the website misappropriating the Complainant’s trademarks for competing products immediately after registering the disputed domain name. By adapting the Complainant’s registered trademarks in the disputed domain name, the Respondent clearly suggests that the website and the products offered thereon are somehow endorsed by the Complainant. The practice of typosquatting constitutes evidence of bad faith registration of a domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

Paragraph 11(a) of the Rules provides that “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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the website provided under the disputed domain name is an online shop provided in English and offering products with prices in USD while the Respondent is also providing Terms and Conditions and a Privacy Policy in English. It is clear that the Respondent must be capable of communicating in the English language on a business level whereas the Complainant has no knowledge of the Chinese language.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that in this proceeding the Complaint was filed in English. The website to which the disputed domain name resolves is also in English, from which it is reasonable to infer that the Respondent is able to communicate in that language. Further, despite the Center having sent an email regarding the language of the proceeding and a notice of the Complaint in both Chinese and English, the Respondent did not comment on the issue of language or express any interest in participating otherwise in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay whereas accepting it in English does not create unfairness to either Party.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response filed in Chinese, but none was filed.

6.2 Substantive Issues

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

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the HEETS trademark.

The disputed domain name includes the word “heats”, which is phonetically identical and visually almost identical to the HEETS trademark. The disputed domain name adds the dictionary word “buy”. Given that the trademark remains recognizable (at least phonetically) within the disputed domain name, the Panel does not consider that the addition of this dictionary word prevents a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

The disputed domain name includes a generic Top-Level Domain (“gTLD”) “.com”, which is a technical requirement of domain name registration. A gTLD is normally disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy.

Therefore, the Panel considers that there is a prima facie case of confusing similarity between the disputed domain name and the HEETS mark. The Panel takes note that the website to which the disputed domain name resolves refers repeatedly to the HEETS mark (spelt correctly) and offers for sale a directly competitive product, which supports a finding that the Respondent included the word “heats” in the disputed domain name as a misspelt version of the HEETS trademark. See WIPO Overview 3.0, section 1.15.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] 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) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first and third circumstances set out above, the disputed domain name, which combines the word “buy” with a misspelt version of the HEETS trademark, resolves to a website that offers for sale products that compete directly with the Complainant’s HEETS products. The Complainant submits that it has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the disputed domain name. Accordingly, the Panel does not consider that the disputed domain name is being used in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name within the circumstances of paragraph 4(c)(iii) of the Policy. This finding does not imply any view as to whether the use of the HEETS trademark on the website to which the disputed domain name resolves may be considered nominative fair use.

As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “徐毅 (Xu Yi)”, not the disputed domain name. The contact email address on the website associated with the disputed domain name suggests that the operator is known as the “Hanwa Group”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by paragraph 4(c)(ii) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he or she did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The fourth of these is as follows:

(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted 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] web site or location or of a product or service on [the respondent’s] website or location.

With respect to registration, the disputed domain name was registered in 2021, years after the registration of the Complainant’s HEETS trademark, including in China where the Respondent is resident. The disputed domain name, which was registered only six months ago, resolves to a website that makes repeated references to the Complainant’s HEETS products (spelt correctly). There is little doubt that the Respondent was aware of the HEETS trademark at the time that he or she registered the disputed domain name. The disputed domain name incorporates the HEETS trademark with an obvious spelling error, which seems intended to take advantage of Internet users who mistype that trademark. Therefore, the Panel finds that the Respondent registered the disputed domain name in bad faith.

With respect to use, the disputed domain name combines the word “buy” with a misspelt version of the HEETS trademark, implying that it will resolve to a website where Internet users can buy the Complainant’s HEETS products, when it actually resolves to a website offering for sale products that compete directly with the Complainant’s HEETS products. This is a “bait and switch” sales tactic. Accordingly, the Panel finds that the Respondent is using the disputed domain name intentionally to attract, for commercial gain, Internet users to his or her website 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 of a service on the Respondent’s website, within the terms of paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 <buyheats.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: June 25, 2021