WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Registration Private, Domains By Proxy, LLC / Beryl Yang, HEAVEN GIFTS INTERNATIONAL LIMITED

Case No. D2021-1673

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Beryl Yang, HEAVEN GIFTS INTERNATIONAL LIMITED, China.

2. The Domain Name and Registrar

The disputed domain name <tqsheats.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2021. On May 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 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 June 4, 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 amendment to the Complaint on June 4, 2021.

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 June 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2021. On July 9, 2021, the Respondent requested for an extension to submit a Response. The due date to submit a Response was extended to July 15, 2021. The Response was filed with the Center on July 15, 2021.

On July 19, 2021, the Complainant submitted a supplemental filing with the Center. On July 31, the Respondent submitted a supplemental filing with the Center.

The Center appointed Adam Taylor as the sole panelist in this matter on August 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 part of the group of tobacco companies affiliated with Philip Morris International, Inc.

Amongst other things, the group produces tobacco products branded “Heets” or “HeatSticks” that are designed to be inserted into another of the Complainant’s products, “IQOS”, a heating device which the Complainant describes as a “Reduced Risk Product”. There are approximately 17.6 million customers using the IQOS system worldwide.

The Complainant owns many registered trade marks including the following:

- International Registration No. 1218246 for IQOS, registered on July 10, 2014, in classes 9, 11 and 34;
- International Registration No. 1217386 for HEATSTICKS, registered on July 21, 2014, in class 34;
- International Registration No. 1261439 for HNB, registered on December 19, 2014, in classes 9, 11 and 34;
- International Registration No. 1326410 for HEETS, registered on July 19, 2016, in classes 9, 11, and 34; and
- Chinese Trade Mark No. 37632257 for a stylised “Q” device, registered on December 28, 2019, in classes 9, 11, 34, 35 and 42.

The Respondent applied for a Chinese trade mark for “TQS” on December 29, 2020.

The Respondent registered the disputed domain name on January 4, 2021.

The disputed domain name was used for a website headed “TQS”, offering for sale “TQS”-branded products described as a “Coolplay Q3 Heating Device” and “TQS Heat Not Burn Herbal Sticks”, said to be made from tea leaves. The website states “TQS leads the market by innovation, commit to create premium products for our customers, and try our best to be the role model of HNB industry.” The website’s browser icon or “favicon”, comprises a stylised letter “Q”.

5. Parties’ Contentions

A. Complainant

The following is a summary of the Complainant’s contentions.

The disputed domain names are confusingly similar to the Complainant’s trade marks,

The disputed domain name consists of the term “tqs”, which is obviously a reference to the Complainant’s well known IQOS trade mark, together with the word “heats”, which is phonetically identical to the Complainant’s HEETS trade mark. The terms “heets”, “heats” and “heatsticks” are not commonly used to describe tobacco products.

The Respondent’s purpose in using the disputed domain name for a website offering products for sale that directly competed with the Complainant was to associate the website with the Complainant’s trade marks.

The content of a website can confirm confusing similarity where, as here, there is prima facie evidence that a respondent is targeting a trade mark.

The Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has not authorised the Respondent to use its trade mark.

The Respondent is not making legitimate noncommercial or fair use of the disputed domain name.

Nor is the Respondent making a bona fide offering of goods.

The Respondent does not qualify as a legitimate reseller because its website suggests affiliation with the trade mark owner and, in any case, the Respondent is promoting competing goods, rather than the Complainant’s own goods.

Furthermore, the disputed domain name of itself suggests at least an affiliation with the Complainant, as does the Respondent’s website, including by not revealing the identity of the website operator, by imitating the Complainant’s “Q” favicon and by using the Complainant’s trade marks and slogans throughout the website.

The disputed domain name was registered and is being used in bad faith.

The Respondent was aware of the Complainant’s trade mark when registering the disputed domain name.

The terms “heets”, heats” and “heatsticks” were coined by the Complainant and are unique to it.

The Respondent registered and used the disputed domain name with intention of creating a likelihood of confusion under paragraph 4(b)(iv) of the Policy, including by adapting the Complainant’s trade marks in the disputed domain names, by unauthorised use of the Complainant’s trade marks on the site and by use of the Complainant’s favicon. The Respondent sought to give the false impression that its website and products were endorsed by the Complainant.

The fact that the Respondent has engaged in typo-squatting is further evidence of bad faith.

B. Respondent

The following is a summary of the Respondent’s contentions.

The disputed domain name is not identical or confusingly similar to the Complainant’s trade marks.

The disputed domain name consists of the Respondent’s brand name “TQS” together with the indicative term “heats”, which describes how the TQS products work as well as “the Respondent’s motivation to make consumers excited and impressed”. The term “heats” is just the third-person singular version of the verb “heat” and should not be treated as a misspelling of the Complainant’s trade mark.

The word “heats” is not an obvious part of the Complainant’s trade mark HEATSTICKS, which is displayed on the Complainant’s website in the form “HeatSticks”, i.e., reflecting the words “heat” and “sticks”, rather than “heats” and “ticks”.

The disputed domain name will not be associated with the Complainant’s HEETS or HEATSTICKS trade marks, which are never referred to on the Respondent’s website, or with its IQOS system. The only trade marks shown are “TQS” and “Cool play”.

The Respondent possesses rights or legitimate interests in the disputed domain name. Not only is the disputed domain name not confusingly similar to the Complainant’s trade marks, the Respondent has never resold the Complainant’s goods.

The Respondent’s website does reveal the identity of the website operator and provides certificates for the Complainant’s products. Therefore, consumers will not be given the false impression that the Respondent’s products are endorsed by the Complainant.

The Respondent has applied for a trade mark for “TQS” in China, which has passed examination and will be registered soon. The Respondent also intends to submit applications in the European Union and elsewhere.

The disputed domain name was not registered or used in bad faith.

Before the Respondent registered the disputed domain name, the Respondent had already registered the domain name <tqs.com> and had applied for a Chinese trade mark for “TQS”. The Respondent just added a word which represented basic features of the products to the term “TQS”.

The Parties are not competitors. The Complainant’s “Heets” and “Heatsticks” products are tobacco products, whereas the Respondent’s products are designed to help people to stop smoking. Furthermore, it is legal to manufacture and sell “TQS” products in China, whereas it is illegal to sell the Complainant’s products in China. The Respondent never intended to sell tobacco products similar to those of the Complainant.

6. Discussion and Findings

Under the Policy, the Complainant is required to prove on the balance of probabilities that:

- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.

A. Preliminary - Supplemental Filings

Both parties have made unsolicited supplemental filings.

Section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that UDRP panels have repeatedly affirmed that the party submitting an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response, e.g. owing to some “exceptional” circumstance.

In this case, the Panel declines to admit the Complainant’s supplemental filing because it comprises material that was, or could have been, addressed in the Complaint and otherwise consists of standard rebuttal. Given that the Panel has rejected the Complainant’s supplemental filing, there is no need for the Panel to admit the Respondent’s supplemental filing, which simply responds to the Complainant’s filing.

The Panel would add, however, that admission of either supplemental filing would have made no difference to the outcome of this case.

B. Identical or Confusingly Similar

Section 1.7 of the WIPO Overview 3.0 makes clear that the first element functions primarily as a standing requirement. The test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trade mark and the disputed domain name. Where at least a dominant feature of the relevant mark is recognisable in the disputed domain name, it will normally be considered confusingly similar to that mark for purposes of UDRP standing.

Section 1.9 of WIPO Overview 3.0 adds that a domain name which consists of a common, obvious, or intentional misspelling of a trade mark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.

The Panel considers that the Complainant’s HEETS trade mark is recognisable within the disputed domain name in the form of the word “heats”, which the Panel considers to be an obvious misspelling of the Complainant’s trade mark. The Panel is not convinced by the Respondent’s explanation that it selected “heats” as the third-person singular version of the verb “heat” to describe its products or its motivation to make its customers feel “excited and impressed” rather than as a misspelling of the Complainant’s trade mark. However, at this point it is not necessary for the Panel assess in detail the Respondent’s motive for selecting the term “heats” – this is addressed in section 6.D. below. In the Panel’s view, for the purposes of the straightforward side-by-side comparison called for under the first element, it is sufficient that the term “heats” could reasonably be read by some people as a misspelling, or otherwise denoting, the Complainant’s HEETS trade mark.

In any case, section 1.9 of WIPO Overview 3.0 explains that the Panel’s assessment may also entail a more holistic aural or phonetic comparison of the trade mark and disputed domain name to ascertain confusing similarity. The Panel notes that the term “heats” is phonetically identical to the Complainant’s trade mark.

The Panel also considers that “heats” could be read as abbreviation of the Complainant’s HEATSTICKS trade mark. While the Respondent is correct to say that the this mark is displayed on the Complainant’s website in the form “HeatSticks”, which does not obviously split into “heats” and ticks”, nonetheless the Panel still believes that “heats” could reasonably be treated as an abbreviation of the entire word.

As regards the term “tqs”, section 1.8 of WIPO Overview 3.0 states that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive, meaningless or otherwise, would not prevent a finding of confusing similarity under the first element. And it makes no difference if the additional term is a third party trade mark. See section 1.12 of WIPO Overview 3.0.

Accordingly, the Panel does not consider that the inclusion of the term “tqs” averts a finding of confusingly similarity, whether or not it is treated as a trade mark. On the contrary, the Panel considers that the presence of “tqs” in the disputed domain name supports a finding of confusing similarity in that, at the very least, it alludes to the Complainant’s IQOS trade mark, given that both are short acronym-style terms that include the letters “Q” and “S”.

The Panel would add that, as explained in section 1.7 of WIPO Overview 3.0, the overall facts and circumstances of a case, including relevant website content, may support a finding of confusing similarity in certain situations, particularly where it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the complainant. The Panel considers that that applies here, for reasons explained in section 6.D. below, in particular the Respondent’s use of the Complainant’s “Q” logo.

For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

C. Rights or Legitimate Interests

As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.

Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.

Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests.

As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain name could not be said to be bona fide.

Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.

The Respondent relies on its Chinese trade mark application for “TQS”. However, this does not assist the Respondent. Not only has the application not yet been registered as a trade mark, in any case it reflects only part of the disputed domain name, and omits the crucial term “heats”.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.

D. Registered and Used in Bad Faith

The Panel notes the following:

1. The Respondent has used a stylised letter “Q” favicon for its website which is virtually identical to the Complainant’s own favicon, a registered trade mark. The Respondent has not denied this, or even addressed the issue.

2. The Panel does not consider it credible that the Respondent selected the term “heats” within the disputed domain name as a verb to describe how its products work as well as to reflect “the Respondent’s motivation to make consumers excited and impressed”. To the Panel, simply adding the verb “heats” to a brand name such as “TQS” seems an unlikely way to describe either of these things. Particularly given the circumstances whereby the Respondent has adopted the Complainant’s logo, the Panel considers it more likely that the Respondent selected the term “heats” by reference to the Complainant’s well-known HEETS and HEATSTICKS trade marks. Even if the Parties are not direct competitors on the basis that the Respondent’s products are designed to help people stop smoking, as the Respondent claims, nonetheless the Respondent plainly operates in the tobacco industry and the parties’ respective products are somewhat similar.

3. The Panel also considers it more likely than not that the Respondent selected the term “TQS” by reference to the Complainant’s IQOS trade mark. The Respondent has not put forward any alternative explanation for its choice of this term. For reasons explained in section 6.C. above, the Panel does not consider that its Chinese trade mark application for “TQS” assists the Respondent in this case.

4. Even if it is illegal to sell the Complainant’s products in China, as the Respondent claims, the Panel does not consider that this would justify the Respondent’s conduct as described above, particularly given that the Respondent has provided no evidence that its own products are sold only in China. The Panel notes that the Respondent’s website is in English.

For the above reasons, the Panel considers that, on the balance of probabilities, the Respondent set out to create a likelihood of confusion with the Complainant’s marks in accordance with paragraph 4(b)(iv) of the Policy.

The Panel therefore finds that the Complainant has established the third element of 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, <tqsheats.com> be transferred to the Complainant.

Adam Taylor
Sole Panelist
Date: August 24, 2021