The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Simone Intellectual Property Services Asia Limited, China.
The Respondent is Jack Charls of Armenia. 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 August 27, 2018. On August 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 28, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 September 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2018.
The Center appointed Francine Tan as the sole panelist in this matter on October 16, 2018. 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 companies affiliated with Philip Morris International Inc. (“PMI”). PMI is one of the world’s leading tobacco companies, with products sold in more than 180 countries.
PMI developed a brand of “Reduced Risk Products” under the brand IQOS. The IQOS product is a precisely controlled heating device into which specially designed tobacco consumables are inserted and heated to generate a nicotine-containing aerosol.
The IQOS products were first launched by PMI in Nagoya, Japan, in 2014. Currently, the IQOS brand of products can be found in key cities in around 38 markets across the world. The Complainant states that as a result of extensive investment and international sales and marketing efforts, the IQOS products have achieved a considerable level of international success and reputation. Over 5 million adult smokers have switched to the IQOS products worldwide. The IQOS products are almost exclusively distributed through PMI’s official IQOS stores and websites.
The IQOS trade mark has been registered worldwide including in China (e.g., Trade Mark Registration Nos. 16314287 and 16314286 (both registered with effect from May 14, 2016).
The disputed domain name was registered on November 15, 2017. The disputed domain name resolves to a website which promotes itself as the “IQOS e-cig official site”. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical or confusingly similar to the Complainant’s IQOS trade mark as it contains the IQOS mark in its entirety. The mere addition of the letters “cn” (which is the established country code for China) to the disputed domain name further misleads consumers into believing that the Respondent’s website is an official, authorized or endorsed website of the Complainant in China. The letters “cn” merely describes the jurisdiction of the Respondent’s website.
The IQOS trade mark has acquired substantial fame and recognition in China and this is evidenced by the fact that the vast majority of the results on the first three pages are related directly to the Complainant. The IQOS trade mark has also been recognized in previous UDRP panel decisions as famous and possessing reputation in China.
The Respondent has no rights or legitimate interests in the disputed domain name and this is evidenced by the fact that:
(i) The Respondent is not authorized nor licensed by the Complainant to use its IQOS trade marks or to register a domain name incorporating the trade mark;
(ii) The Respondent seeks to mislead the public by presenting its website as the “IQOS official website” in China when in fact the Complainant has not yet commercialized its IQOS products in China.
The disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name with knowledge of the Complainant’s IQOS trade marks. The Respondent’s website extensively uses the IQOS trade marks and copyright-protected images created by and belonging to the Complainant and its affiliates. The Respondent seeks to ride on the Complainant’s fame and reputation and to create the false impression that the Respondent’s business is supported by, authorised or endorsed by the Complainant. Two product links to Taobao/TMall that sell e-cigarette products manufactured and marketed by the Complainant’s competitors can be found on the Respondent’s website. Further, the Respondent’s website openly suggests that the disputed domain name can be assigned and invites any interested parties to leave a message. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established it has rights in the trade mark IQOS. The IQOS trade mark is identifiable in the disputed domain name and incorporated in its entirety. The Panel finds that the addition of the letters “cn” does not remove the confusing similarity with the Complainant’s trade mark IQOS.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Panel therefore finds that the first element of paragraph 4(a) of the Policy has been satisfied. B. Rights or Legitimate Interests
The Respondent did not file a response in this case. The Complainant is, nevertheless, required to establish at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. (See section 2.1 of the WIPO Overview 3.0.)
With reference to paragraph 4(c) of the Policy, the Panel finds that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name as:
(i) The Complainant has not authorized or permitted the Respondent to use the IQOS trade mark or to register it as a domain name;
(ii) There is no evidence that the Respondent has been commonly known by the disputed domain name;
(There is no evidence that the Respondent has acquired trade mark rights in the word “iqos” or “iqoscn”; and
(iii) The evidence shows that the Respondent is not making a bona fide offering of goods and services nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers
The Respondent has failed to rebut the Complainant’s prima facie case. The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Following on from the circumstances enumerated under Section B, the Panel also finds that the disputed domain name was registered and is being used in bad faith. It is evident that the Respondent registered the disputed domain name with knowledge of the Complainant’s IQOS trade marks as the said marks (including the stylized mark) are reproduced on the Respondent’s website.
In view of the fame and reputation that have been built up by PMI in the IQOS brand, the unauthorized reproduction of the Complainant’s IQOS marks and proprietary material and images, the misrepresentation of the Respondent’s website as an “official” website, and given the absence of any evidence that the Respondent has rights or legitimate interests in the disputed domain name, the Panel concludes that the registration and use of the disputed domain name were opportunistic in nature and clearly in bad faith.
The Panel therefore concludes that the third element of paragraph 4(a) of the Policy has been 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.
Francine Tan
Sole Panelist
Date: October 30, 2018
Full & Egal Universal Law Academy