The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Lin Ze Qin, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2019. On May 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 7, 2019, 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.
On May 7, 2019, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on May 9, 2019. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Chinese of the Complaint, and the proceedings commenced on May 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 3, 2019.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on June 7, 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 an affiliate of Philip Morris International Inc., which is one of the world’s leading international tobacco companies, with products sold in over 180 countries. The Complainant offers both traditional combustible cigarettes and a line of “reduced risk products”, one of which is branded IQOS. IQOS is a controlled heating device into which a special tobacco product is inserted and heated to generate a nicotine-containing aerosol.
The Complainant owns a portfolio of trademark registrations for IQOS (word and device marks) in a large number of jurisdictions, including China, for example Chinese trademark registration number 16314286 registered on May 14, 2016 and International Registration number 1329691 registered on August 10, 2016 designating, inter alia, China. Incidentally, the relevant registered trademarks adduced by the Complainant were successfully registered prior to the registration date of the disputed domain name, which was registered on March 31, 2019. The Complainant submits evidence that the disputed domain name directs to an active website, which is operated as an e-commerce platform, offering IQOS-branded products for sale. 5. Parties’ Contentions A. Complainant
The Complainant essentially contends that the disputed domain name is confusingly similar to its trademarks for IQOS, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.
The Complainant claims that its trademarks are famous and well-regarded in the tobacco industry, and provides evidence of its marketing materials, including sales information. Moreover, the Complainant provides evidence that the disputed domain name is linked to an active website. The Complainant contends that the website linked to the disputed domain name is operated as an e-commerce platform, purporting to be an official sales channel for IQOS-branded products, and offering counterfeit IQOS branded products for sale. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the disputed domain name, and constitutes use in bad faith.
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Language of proceedings
Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings.
The Complainant states that to the best of its knowledge, the Registration Agreement is written in Chinese. Nevertheless, the Complainant has filed the Complaint in English, and requests that the language of proceedings be English.
The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of proceedings be English; the lack of comment on the language of the proceedings and the lack of response of the Respondent (the Panel notes that the Respondent had the opportunity to respond in either English or Chinese); the fact that the website linked to the disputed domain name is available in both English and Chinese, from which the Panel deducts that the Respondent is able to understand and communicate in English; and the fact that Chinese as the language of proceedings could lead to unwarranted delays and costs for the Complainant. In view of all these elements, the Panel rules that the language of proceedings shall be English. 6.2. Discussion and Findings on the merits
The Policy requires the Complainant to prove three elements:
(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 used in bad faith.
Based on the evidence and arguments submitted, the Panel’s findings are as follows: A. Identical or Confusingly Similar
The Panel finds that the Complainant has provided sufficient evidence that it has valid rights in the sign IQOS, based on its use and registration of the same as a trademark, incidentally commencing several years prior to the registration of the disputed domain name.
Moreover, as to confusing similarity of the disputed domain name with the Complainant’s trademarks, the disputed domain name consists of the combination of two elements, which are the Complainant’s IQOS trademark and the meaningless single vowel “i”. The Top-Level Domain (“TLD”) “.net” is a standard registration requirement and is as such disregarded. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.7, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing” (see also Wal-Mart Stores, Inc. v Richard McLeod d/b/a For Sale,WIPO Case No. D2000-0662). The Panel concludes that the disputed domain name contains the entirety of the Complainant’s trademark, as its only dominant feature. The addition of the meaningless single vowel “i” does not prevent a finding of confusing similarity. Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s trademarks, and the Complainant has satisfied the requirements for the first element under the Policy. B. Rights or Legitimate Interests
The Complainant has demonstrated that the Respondent is not an authorized reseller, service provider, licensee or distributor, and is not making legitimate noncommercial use or fair use of the Complainant's trademarks. The Panel therefore considers that none of the circumstances of legitimate interests envisaged by paragraph 4(c) of the Policy apply. The Panel also notes that no evidence or arguments have been submitted by the Respondent in reply. The Panel therefore rules that the Complainant has satisfied the requirements for the second element under the Policy. C. Registered and Used in Bad Faith
Given the reputation and fame of the Complainant’s trademarks, the registration of the disputed domain name, which incorporates such trademarks in their entirety, with only the minor addition of a single vowel “i”, is clearly intended to mislead and divert consumers to the disputed domain name. Even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned, and owns, trademarks in IQOS and uses these marks extensively. In the Panel’s view, this clearly indicates the bad faith of the Respondent, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain name in bad faith.
As to use of the disputed domain name in bad faith, the Complainant provides evidence that the website linked to the disputed domain name is operated as an e-commerce platform, purporting to be an official sales channel for IQOS-branded products, explicitly stating to be the “IQOS Chinese official website” in both English and Chinese, and offering unauthorized or counterfeit IQOS-branded products for sale. Moreover, the Respondent uses the Complainant’s official, copyright-protected product images without authorization, while at the same time misleadingly claiming copyright in these images (particularly in a bilingual copyright notice at the bottom of the website linked to the disputed domain name). Having regard to this clear evidence of bad faith, the Panel rules that it has been demonstrated that the Respondent is using the disputed domain name in bad faith.
Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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.
Deanna Wong Wai Man
Sole Panelist
Date: June 11, 2019
Full & Egal Universal Law Academy