The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondents are Han Ming (Lin Cheng), China / Chenyi Zhao, 瑪爾有限公司, Taiwan Province of China. 2. The Domain Names and Registrars
The disputed domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd.; the disputed domain name is registered with Net-Chinese Co., Ltd. (the “Registrars”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2019. On April 1, 2019, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. On April 3, 2019 and April 10, 2019, the Registrars transmitted by email to the Center verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 12, 2019, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center also notified the Complainant that the Complaint was administratively deficient. The Complainant filed an amended Complaint in English on April 15, 2019.
On April 12, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. On April 15, 2019, the Complainant confirmed its request that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amended 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 Respondents in English and Chinese of the Complaint, and the proceeding commenced on April 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2019. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 16, 2019.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on May 27, 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 A. Complainant
The Complainant is a company incorporated in Switzerland and is part of the group of companies affiliated with Philip Morris International Inc. (“PMI”).
The Complainant is the owner of several registrations in jurisdictions worldwide for the word and device mark IQOS (the “Trade Mark”), including international trade mark registration No. 1218246, with a registration date of July 10, 2014; and Taiwan Province of China trade mark registration No. 01921980, with a registration date of June 16, 2018.
PMI has used the Trade Mark since its launch in Japan in 2014 and to date in 43 countries in respect of its products, specifically precisely controlled heating devices into which specially designed tobacco products are inserted and heated to generate a flavourful nicotine-containing aerosol. B. Respondent
The Respondents are apparently resident in Kunming, China; and in Taiwan Province of China, respectively. C. The Disputed Domain Names
The disputed domain names and were registered on March 26, 2018 and September 12, 2018, respectively. D. Use of the Disputed Domain Names
The disputed domain name has been used in respect of a Chinese language website under the prominent banner “IQOS台湾官網商城” (IQOS Taiwan official website mall) and the disputed domain name has been used in respect of a Chinese language website under the prominent banner “IQOS電子煙台灣店” (IQOS e-cigarette Taiwan store). The websites at the disputed domain names both offer for sale the Complainant’s products under the Trade Mark (the “Websites”). 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to the Trade Mark, the Respondents have no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names were registered and are being used in bad faith. B. Respondent
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Consolidation of Respondents
Previous UDRP decisions suggest that consolidation of multiple respondents may be appropriate, under paragraphs 3(c) and 10(e) of the Rules, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the disputed domain names resolve, where consolidation would be fair and equitable to all parties, and where procedural efficiency supports consolidation (see section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the present proceeding, the Complainant contends as follows:
(i) The Websites contain the same, prominent website banner;
(ii) The Websites contain the same introduction video; and
(iii) This demonstrates that common control is being exercised over the disputed domain names.
The Respondents did not file a response and did not file any submissions with respect to this issue.
In all the circumstances, the Panel concludes that the evidence relied upon by the Complainant supports the conclusion that common control is being exercised over the disputed domain names. Further, the Panel notes the similarity between the disputed domain names and .
In all the circumstances, the Panel determines, under paragraph 10(e) of the Rules, that consolidation of the Respondents is procedurally efficient and equitable to all the Parties, is consistent with the Policy and Rules, and comports with prior relevant UDRP decisions in respect of this issue. The Respondents are referred to hereinafter as the “Respondent”. 6.2 Language of the Proceeding
The language of the Registration Agreements for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.
Paragraph 11(a) of the Rules allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that the language of the proceeding be English, for several reasons, including the following:
(i) The disputed domain names are in Latin script and not in Chinese script, indicating that the Websites are directed to, at the very least, an English speaking public;
(ii) The Complainant being a Swiss entity has no knowledge of Chinese and, in light of the Respondent’s knowledge of English, decided to file the Complaint in English being a common language in global business and obviously also a language in which the Respondent is doing business;
(iii) The website of the privacy registration service used by the Respondent for the disputed domain names is both a Chinese and English language website; and
(iv) Taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs, the language of the proceeding should be English.
The Respondent did not file a response and did not file any submissions with respect to the language of the proceeding.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel does not find the first three grounds relied upon by the Complainant in support of its language request convincing. In respect of the first ground, the Panel notes that the Websites are predominantly Chinese language websites. In respect of the second ground, the Panel notes that the Complainant operates globally, including in Chinese speaking jurisdictions. In respect of the third ground, the Panel considers the fact the privacy service operator operates a dual language website in Chinese and in English does not demonstrate the likely possibility the Respondent is conversant in English.
Although the Websites are predominantly Chinese language websites apparently targeting Chinese speaking consumers in Taiwan province of China, they do contain some English language content, including English language “Read More” and “Leave a Comment” links; English language product branding; an English language copyright notice; and an English language search function. Although this is perhaps not enough evidence to support a firm conclusion that the Respondent is conversant in the English language, the Panel notes that the Respondent has chosen not to contest this proceeding; and is mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.3 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain names incorporate the entirety of the Trade Mark (see WIPO Overview 3.0, section 1.7) prefaced by the commonly used abbreviation for Taiwan Province of China, “tw”.
Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Mark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(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 trade mark 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 trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain names have been used in connection with the Websites, in order to offer for sale the Complainant’s products under the Trade Mark.
The Complainant contends that “the Complainant’s IQOS system is not currently sold in Taiwan” and points out that the currency used on the Websites is the currency used in Taiwan Province of China
According to the undisputed evidence of the Complainant, the Websites are further using a number of the Complainant’s official product images and marketing materials without the Complainant’s authorisation, while at the same time providing a copyright notice at the bottom of the Websites claiming copyright in the material presented on the Websites and thereby strengthening the impression of an affiliation with the Complainant.
The Complainant contends further that the Websites do not show any details regarding the provider of the Websites, nor do they acknowledge the Complainant as the real owner of the Trade Mark, leaving the Internet user under the false impression that the online shops provided under the Websites are those of the Complainant or one of its official distributors.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
In addition, the Panel notes the nature of the disputed domain names, which carries a risk of implied association (see WIPO Overview 3.0, section 2.5.1).
In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
In light of the manner of use of the disputed domain names highlighted in Section 6.3.B above, the Panel finds that the requisite element of bad faith has been made out, under paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the disputed domain names have been registered and are being used in bad faith. 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 names and be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: June 10, 2019
Full & Egal Universal Law Academy