The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Zhanbo, Zhangzhiyong of Guiyang, Guizhou, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2018. On November 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 2018, 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 November 27, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email in English and Chinese regarding the language of the proceeding. The Complainant filed an amendment to the Complaint and requested that English be the language of the proceeding on November 29, 2018. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on December 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 26, 2018.
The Center appointed Douglas Clark as the sole panelist in this matter on January 15, 2019. 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 one of the world’s leading international tobacco companies, with its presence in more than 180 countries. It has developed a number of new reduced risk products that have the potential to present less risk of harm to smokers who switch to these products as opposed to smoking traditional cigarettes. One of these products that the Complainant developed and is being sold is the IQOS.
The IQOS holder is a tobacco heating system designed to heat, rather than burn a specific type of tobacco stick with a controlled temperature range that generates the taste of tobacco without using fire like traditional cigarettes. This product was launched in 2014 and are now available in 43 countries around the world.
The Complainant is the owner of various IQOS trademarks in numerous jurisdictions, which include Chinese trademark Nos. 16314287 and 16314286 (both registered on May 14, 2016) and international trademark registration No. 1329691 (registered on August 10, 2016) that designates China.
The Respondent is an individual based in Guizhou, China.
The disputed domain name was registered on April 9, 2018. The disputed domain name resolved to a page that appears to be online platform that sells IQOS products. At the top of the page, it displays the “IQOS” mark with additional Chinese words in the middle of the homepage that says “创新的烟草加热技术”, which means “innovative tobacco heating technology”. Other sub-webpages also contain advertisements of IQOS products with the purchase price at the bottom of each display. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The Complainant contends that the disputed domain name and the trademark “IQOS” are confusingly similar. The disputed domain name contains “IQOS” in its entirety as the distinctive part of the disputed domain name. The additional English alphabet “u” does not affect the similarity of the disputed domain name from the registered trademark. No rights or legitimate Interests
The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for IQOS. It, therefore, has no rights or legitimate interests in the disputed domain name. Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant’s rights in the IQOS trademark given its worldwide reputation and the extent to which this product has been advertised in the world, including China. The Respondent acquired the disputed domain name to disrupt the business of the Complainant and/or to prevent the Complainant from reflecting its mark in a corresponding domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of Proceedings
The Language of the Registration Agreement is in Chinese.
The Complainant requests that the language of proceedings be English on the following grounds: The obligation to translate all case relevant documents would be an unfair disadvantage to the Complainant and the Complainant would incur additional expenses and the proceeding would be unduly delayed and the domain name includes the letter “u” which could mean “you” suggesting targeting at the English speaking market.
The Respondent did not respond to this request.
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 Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceedings lies with this Panel.
The Respondent did not respond to the Center’s preliminary determination. This Panel decided in Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191 that a Respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceedings “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
As set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delays and expense. This factor leads the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English. 6.2 Substantive Issues
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 use in bad faith. A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s IQOS mark in full with the additional alphabet “u”. The disputed domain name is therefore confusingly similar to the Complainant’s registered trademark.
The first element of paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests. Section 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 rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
The Respondent has no business or any kind of relationships (i.e., licensor, distributor) with the Complainant. Considering the absence of a response by the Respondent to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
The Panel notes that the disputed domain name resolves to a page that advertises IQOS products. In principle, it is not an infringement of a trademark to resell or promote for resale genuine trademarked goods by reference to the mark. A seller can make use of a trademark in a domain to sell genuine products.
However, in Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903, the panel held that to be bona fide within the meaning paragraph 4(c)(i), the offering should meet the following requirements:
- The Respondent must actually be offering the goods or services at issue;
- The Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
- The site must accurately disclose the registrant’s relationship with the trade mark owners; it may not, for example, false suggest that it is the trademark owner, or that the website is the official site; and
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
In this case, the Respondent does not meet, at least, the third requirement set out above. The website under the disputed domain name does not accurately disclose its relationship with the Complainant.
The second element of paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith
Based on the evidence, the Panel has no hesitation in finding that the disputed domain name was registered in bad faith and is being used in bad faith. The Respondent clearly knew of the IQOS products when registering the disputed domain name. This is made clear by the use of the disputed domain name to promote IQOS products. The Respondent’s intention can only have been used to attract, for commercial gain, Internet users to the webpage, by creating a likelihood of confusion with the Complainant’s mark of the service of the website.
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: January 29, 2019
Full & Egal Universal Law Academy