The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is 李健 (Li Jian), 湖南省恰烟电子有限公司 (Hunan Qiayan Electronics Co., Ltd), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 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 May 19, 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 May 20, 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 in English on May 21, 2021. On May 20, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On May 21, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. 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 in Chinese and English of the Complaint, and the proceedings commenced on May 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2021. The Center appointed Matthew Kennedy as the sole panelist in this matter on June 23, 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 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 1261439 for HNB, registered on December 19, 2014, and international trademark registration number 1329691 for IQOS in a particular script, registered on August 10, 2016, both designating multiple jurisdictions, including China, and both specifying goods in classes 9, 11 and 34, including tobacco sticks and heated tobacco products. Both trademark registrations remain current. The Respondent 湖南省恰烟电子有限公司 (Hunan Qiayan Electronics Co., Ltd) is a Chinese company. 李健 (Li Jian) is its contact person. The Respondent is focused on the offline sale of heat not burn and spray products. It has signed agreements in mainland China with agents for multiple brands and it actively promotes the heat not burn concept. The disputed domain name was registered on March 16, 2021. It formerly resolved to a website in Chinese operated by the Respondent offering for sale four different brands of heat not burn tobacco products, which compete directly with those produced by the Complainant. The website included a blog which referred to various heat not burn producers and brands, including the Complainant and IQOS. At the time of this Decision, the disputed domain name no longer resolves to an active website; rather, it is passively held. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s HNB and IQOS marks. The disputed domain name reproduces the HNB and IQOS trademarks in their entirety, in addition to the non-distinctive word “dianziyan”. 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 a domain name incorporating its HNB and IQOS trademarks. The Respondent is not an authorized distributor or reseller of the IQOS system and the Respondent’s website is selling competing tobacco products and/or accessories of other commercial origin. The disputed domain name was registered and is being used in bad faith. By reproducing the Complainant’s registered trademark in the disputed domain name and the title of the Respondent’s website, the website clearly suggests the Complainant or an affiliated dealer of the Complainant as the source of the website, which it is not. This suggestion is further supported by the Respondent’s use of the Complainant’s official product images, accompanied by a notice claiming the copyright for the website and its contents. 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 disputed domain name is in Latin script while the website under the disputed domain name includes a number of English words and/or phrases, suggesting the Respondent understands English; whereas the Complainant, being a Swiss entity, has no knowledge of Chinese. 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. Despite the Center having sent an email regarding the language of the proceeding and the Written 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 HNB and IQOS trademarks. The disputed domain name includes both the HNB and IQOS trademarks. It also includes the word “dianziyan” which is a transliteration of the Chinese word “电子烟” meaning “e-cigarettes”. The trademarks and this additional word are separated by hyphens. Given that the trademarks are clearly recognizable within the disputed domain name, the Panel does not consider that the addition of this transliterated word and hyphens 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 suffix 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 finds that the disputed domain name is confusingly similar to two trademarks 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 incorporates the Complainant’s HNB and IQOS trademarks, formerly resolved to a website offering for sale products that compete directly with the Complainant’s products. The Complainant submits that it has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its HNB and IQOS trademarks. 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. As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “湖南省恰烟电子有限公司”, which may be translated as “Hunan Province Qiayan Electronics Co., Ltd”, not the disputed domain name. 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] web site or location. With respect to registration, the disputed domain name was registered in 2021, years after the registration of the Complainant’s HNB and IQOS trademarks, including in China where the Respondent operates. The disputed domain name combines not one but two of the Complainant’s trademarks, with a transliteration of a word meaning “e-cigarettes”, which demonstrates an awareness of the Complainant’s business. The disputed domain name formerly resolved to a website that referred to the Complainant and its IQOS product and sold directly competitive products. There is little doubt that the Respondent was aware of the Complainant and its trademarks at the time that he or she registered the disputed domain name. Therefore, the Panel finds that the Respondent registered the disputed domain name in bad faith. With respect to use, the disputed domain name incorporates the Complainant’s HNB and IQOS trademarks in combination with a transliteration of a word meaning “e-cigarettes”, and it resolved to a website offering for sale products that compete directly with the Complainant’s 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. The Panel notes that the use of the disputed domain name has recently changed and that it no longer resolves to an active website. This change in use does not alter the Panel’s conclusion; if anything, it may constitute a further indication of bad faith. 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 Matthew Kennedy
Sole Panelist
Date: July 7, 2021
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