The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Ka Wai Wan of Hong Kong, China / Registration Private, Domains by Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”), self-represented. 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 the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that 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 6, 2017. In accordance with the Rules, paragraph 5(b), the due date for Response was extended at the Respondent’s request to July 30, 2017. The Response was filed with the Center on July 24, 2017.
In accordance with the Rules, paragraph 17, the proceeding was suspended from August 3, 2017 at the Complainant’s request to allow the Parties to explore the possibility of a settlement. The proceeding was reactivated on August 11, 2017 at the Complainant’s request.
The Center appointed Matthew Kennedy as the sole panelist in this matter on August 14, 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 belongs to a corporate group owned by Philip Morris International, Inc. (“PMI”), a tobacco company. PMI launched IQOS, a smoke-free product, in 2014 and distributes it exclusively through its official IQOS stores and websites. IQOS consists of an electronically-controlled device into which a tobacco stick is inserted and heated to create a tobacco vapor. The Complainant owns multiple trademark registrations including Hong Kong, China trademark registration number 302983609 for IQOS, registered from May 2, 2014, International trademark registration number 1218246 for IQOS, registered from July 10, 2014, United States trademark registration number 4763090 for IQOS, registered from June 30, 2015, and International trademark registration number 1329691 for IQOS device (the “IQOS logo”), registered from August 10, 2016. These registrations all specify goods including electronic vaporizers in class 11, and they all remain in effect.
The Respondent is an underlying registrant and a domain name registration privacy service. The underlying registrant is an individual, for which the Registrar’s WhoIs database contact information specifies no address besides “NT, HK”. The Respondent’s email communications with the Center and the Response have all been in English.
The disputed domain name was registered on May 21, 2017 and resolves to an online store presented as “IQOS Hong Kong electronic cigarette flagship store” in Chinese selling the Complainant’s IQOS products. The website displays the Complainant’s IQOS logo, photographs of the Complainant’s products and a photograph of one of the Complainant’s official IQOS stores. Prices are displayed in Hong Kong dollars. The website also displays links to social media platforms. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical or confusingly similar to the Complainant’s IQOS trademark. The addition of the geographical term “hongkong” is insufficient to avoid a finding of confusing similarity. Users will perceive the disputed domain name as linked to the Complainant’s official online presence or an online store for Hong Kong, China, or both.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise authorized the Respondent to use any of its trademarks or to register a domain name incorporating its IQOS trademark. The Respondent is not making a bona fide offering of goods at its website because the disputed domain name suggests an affiliation with the Complainant. The website displays the Complainant’s IQOS logo and does not clarify the Respondent’s relationship with the Complainant.
The disputed domain name was registered and is being used in bad faith. The Respondent knew of the Complainant at the time of registration because he started selling the Complainant’s products immediately afterwards. The Respondent is using the disputed domain name with the intention to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s IQOS mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product on the Respondent’s website. B. Respondent
The Respondent does not intend to infringe any of the Complainant’s trademarks. The Respondent’s website displays the following disclaimer:
Legal Disclaimer All Rights Reserved. All product names, logos, and brands are property of their respective owners. All company, product and service names used in this website are for identification purposes only. Use of them does not imply any affiliation with or endorsement by them. IQOS is a trademark of Philip Morris Products S.A. This Website and Page does not represent Philip Morris In Hong Kong.
In addition, all products sold are trademarked goods and legal in Hong Kong, China.
The Respondent does not intend to mislead any IQOS users that it is the official store authorised by the Complainant as the Respondent registered and purchased the disputed domain name from the Registrar. The website at the disputed domain name sells only the trademarked goods; it accurately discloses the relationship between the parties; it never tried to “corner the market” in all relevant domain names.
The Respondent offered to transfer the disputed domain name to the Complainant on condition that the Complainant could afford to repurchase it. 6. Discussion and Findings
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 IQOS trademark.
The disputed domain name wholly incorporates the Complainant’s IQOS trademark as its only distinctive element.
The disputed domain name also includes the term “hongkong”, which is a city and special administrative region of China. As a mere geographical term, this additional element is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant’s trademark. See Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768.
The disputed domain name also includes the generic Top-Level Domain (“gTLD”) suffix “.com”. A gTLD suffix is generally disregarded for the purposes of assessing confusing similarity under the Policy. See Lego Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080.
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 circumstance above, the disputed domain name is being used in connection with an online store that offers for sale what are alleged to be the Complainant’s IQOS products. The Complainant submits that it has not licensed or otherwise authorized the Respondent to use any of its trademarks or to register a domain name incorporating its IQOS trademark. Regardless of whether the products offered for sale on the Respondent’s website are counterfeit or genuine, the Panel notes that the website is prominently and misleadingly presented as an IQOS Hong Kong electronic cigarette flagship store. These facts show that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
As regards the second circumstance above, the name of the underlying registrant is recorded in the Registrar’s WhoIs database as “Ka Wai Wan”, not “hongkongiqos” or even “iqos”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
As regards the third circumstance above, the disputed domain name resolves to an online store. That is not a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) 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.
Turning to the Respondent’s arguments, the Panel notes that mere registration of a domain name does not demonstrate rights or legitimate interests for the purposes of the Policy, otherwise no complaint could ever succeed. See Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134.
The Respondent argues that he does not intend to mislead any IQOS users that this is the official store authorized by the Complainant. The Panel rejects this argument because the website prominently displays the tagline “Hong Kong iqos 香港電子煙旗艦店” (“Hong Kong iqos Hong Kong electronic cigarette flagship store”) on its homepage (as does the sender information in the Respondent’s email communications). In any event, the disclaimer of any relationship between the Respondent and the Complainant is inconspicuous; only those users who scroll down to the very bottom of the homepage will find the legal notice within which the disclaimer is buried. The legal notice is also in English whereas the website is mostly in Chinese. In these circumstances, it makes no difference whether the website sells genuine goods or not. Given that the disputed domain name is confusingly similar to the Complainant’s trademark, the Panel considers that the Respondent’s website is very likely to misleadingly divert Internet users to the site with intent for commercial gain.
In summary, the Panel considers that the Respondent has failed to rebut the Complainant’s prima facie case.
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, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance 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] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
The disputed domain name was registered in 2017, three years after the Complainant obtained its trademark registration for IQOS in Hong Kong, China where the Respondent is located. The disputed domain name incorporates the Complainant’s IQOS trademark in its entirety as its only distinctive element. The addition of the term “hongkong” gives the impression that it resolves to the Complainant’s Hong Kong IQOS website or a website connected with the Complainant. The content of the website to which the disputed domain name resolves confirms that impression, by presenting itself as “Hong Kong iqos Hong Kong electronic cigarette flagship store” in Chinese, displaying the Complainant’s IQOS logo and offering what are alleged to be the Complainant’s IQOS products. This all indicates to the Panel that the Respondent was aware of the Complainant and its IQOS trademark at the time that he registered the disputed domain name and deliberately chose to register it as part of the disputed domain name in bad faith.
The Respondent uses the disputed domain name, which is confusingly similar to the Complainant’s IQOS trademark, in connection with a website that is an online store falsely presented as if it were the Complainant’s Hong Kong IQOS website or a website connected with the Complainant. The disputed domain name operates by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website. This use is intentional and for commercial gain as contemplated by 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 be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: August 21, 2017
Full & Egal Universal Law Academy