The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Steven Cheng, Siu Siu Style Company of Hong Kong, China 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2017. On June 29, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 2017, 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 July 3, 2017 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 July 4, 2017.
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 July 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2017.
The Center appointed Douglas Clark as the sole panelist in this matter on August 1, 2017. 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 manufactures, markets, and sells cigarettes. The Complainant has also developed a range of smoke free products, one of which is “IQOS”. The “IQOS” system was launched in 2014 and the products are only sold on official websites.
The Complainant is the registered proprietor in a number of jurisdictions of the trademark IQOS, including trademark no. 302983609 in Hong Kong, China (registered on May 2, 2014).
The Respondent registered the disputed domain name on January 28, 2017.
The disputed domain name until recently resolved to a website which displays and offers for sale IQOS products in Hong Kong, China. The webpage stated in Chinese it was the “Hong Kong Exclusive Shop” (香港專賣店) for IQOS products. 5. Parties’ Contentions A. Complainant
Identical or confusingly similar
The Complainant argues that the disputed domain name is made up of the registered trademark IQOS combined with the geographic term “hk” (that is, Hong Kong). It is, therefore, confusingly similar to the Complainant’s registered trademark IQOS.
No rights or legitimate interests
The Complainant relies on two grounds to argue the Respondent has no rights or legitimate interests. These are: (a) the Respondent has no connection with the Complainant or any of its affiliates and (b) the Respondent is trying to profit from consumer confusion by using “IQOS” in a domain name on a website selling IQOS products when it is not an authorized reseller. The Complainant adds further that even if the Respondent was an authorised reseller, the Respondent has not complied with the principles in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 for a reseller to use a trademark as part of its domain name. In particular, the Respondent has not made clear it is not an authorised reseller.
Registered and used in bad faith
There is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant’s rights in IQOS, an invented name. The Respondent is using the disputed domain name to attract Internet users to its website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name is made up of the registered trademark IQOS combined with the letters “hk” and the generic Top-Level Domain (“gTLD”) “.com”. The disputed domain name is therefore confusingly similar to the trademark IQOS.
The first part of the paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides:
“While the overall burden of proof in UDRP proceedings is on the complainant, 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.”
Paragraph 4(c) of the Policy sets out ways in which a respondent may establish they have rights and legitimate interests. These are:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads.
However, the circumstances of this case do require the Panel to consider paragraph 4(c)(i). The Respondent is using the website under the disputed domain name to offer smokeless tobacco products. The question is, is such use bona fide?
The Complainant makes a vague assertion, without providing any evidence that the products on sale on the website under the disputed domain name may not be genuine. However, absent clear evidence in support of this assertion, the Panel will proceed to decide the case on the basis that the Respondent may be selling genuine products.
Under the generally accepted principles set out in the decision in Oki Data Americas, Inc. v. ASD, Inc., supra, a re-seller must accurately disclose its relationship with the trademark owner. The Respondent has not disclosed its relationship. On the contrary, the Respondent on the website under the disputed domain name seeks to give the impression it is an official website by stating it is the “Hong Kong exclusive shop” in Chinese.
The Panel, therefore, finds the Respondent is not making bona fide use of the disputed domain name. It has not responded to assert that it has any other rights or interests in the disputed domain name. Accordingly, the Panel finds it has no rights and legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith
Given its findings in relation to rights and legitimate interests, the Panel finds that the disputed domain name was registered in bad faith and is being used in bad faith.
This case clearly falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The website under the disputed domain name was being used to sell products and Internet users will have been confused as to the website’s possible affiliation with the Complainant.
The third part of the paragraph 4(a) of the Policy is therefore satisfied. 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, , be transferred to the Complainant.
Douglas Clark
Sole Panelist
Date: August 17, 2017
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