The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Zhao Lai Lai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with eName Technology 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 3, 2019, 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 May 8, 2019 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 amended Complaint on May 9, 2019.
On May 8, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On May 9, 2019, the Complainant confirmed its request that English be the language of the proceeding. The Respondent 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 Respondent of the Complaint, and the proceedings commenced on May 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2019.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on June 18, 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. The IQOS-system consists of a controlled heating device into which a designated tobacco product is inserted and heated to generate a nicotine-containing aerosol. The Complainant provides materials stating that the IQOS-system has achieved considerable international success and reputation, and that it has an estimated amount of 7.3 million consumers worldwide.
The Complainant owns a portfolio of trademark registrations for IQOS (word and device marks) in China and throughout the world, for example Chinese trademark registration number 16314286, registered on May 14, 2016 and international trademark registration number 1329691, registered on August 10, 2016, and designating, inter alia, China. The Complainant also owns a number of other registered trademarks used on the website linked to the disputed domain name, such as HEETS (international trademark registration number 1326410, registered on July 19, 2016, and designating, inter alia, China); Q (Chinese trademark registration number 16314289, registered on May 14, 2016); and a hummingbird device mark (international trademark registration number 1331054, registered on October 11, 2016, and 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 May 17, 2018. The Complainant submits evidence that the disputed domain name directed to an active website, which was operated as an e-commerce website for IQOS-branded products and competing tobacco products of other commercial origin. However, on the date of this decision, the disputed domain name directs to an inactive webpage. 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 consumer and tobacco industry, and provides evidence of its marketing materials. Moreover, the Complainant provides evidence that the disputed domain name was linked to an active website, operating as an e-commerce website, unlawfully using the Complainant's trademarks and copyrighted works and offering both the Complainant’s and its competitor’s unauthorized goods 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. 6.1. Preliminary Issue: Language of the proceeding
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 proceeding.
The Complainant states that the language of the Registration Agreement is Chinese, and provides a copy of the Registration Agreement in Chinese. Nevertheless, the Complainant has filed its Complaint in English, and requests that the language of the proceeding be English.
The Panel has carefully considered all elements of this case, in particular, the Complainant's request that the language of the proceeding be English; the lack of comment on the language of the proceeding and the lack of response on the merits of the Respondent (the Panel notes that the Respondent had the opportunity to put forward arguments in either English or Chinese); and the fact that Chinese as the language of the proceeding could lead to unwarranted delay and costs for the Complainant. In view of all these elements, the Panel rules that the language of the proceeding 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 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 marks, the disputed domain name consists of the combination of two elements, which are the Complainant’s IQOS trademark combined with the seemingly meaningless addition “4s”. 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 SaleWIPO Case No. D2000-0662). The Panel concludes that the disputed domain name contains the entirety of the Complainant’s trademark, as its only distinctive feature. 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 has no rights or legitimate interests in the disputed domain name. The Panel notes that the Respondent is not an authorized reseller, service provider, licensee or distributor, and is not making legitimate non-commercial use or fair use of the Complainant's trademarks. Rather to the contrary, the content of the Respondent’s website linked to the disputed domain name (before it was taken offline) shows a clear intent to obtain illegal commercial gains from offering for sale unauthorized products originating from both the Complainant and its competitors. Moreover, the Respondent suggests at least an affiliation with the Complainant and its IQOS trademarks, by placing the following copyright notice on the website linked to the disputed domain name (before it was taken offline): “IQOS China official website copyright owner” (“IQOS中国官网版权所有”). 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, 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, including in the Respondent’s home jurisdiction China. 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 initial version of the website linked to the disputed domain name was used as an e-commerce website, offering unauthorized IQOS-branded products as well as tobacco products from the Complainant’s competitors for sale. On the date of this decision however, the disputed domain name links to an inactive website. In this regard, the WIPO Overview 3.0 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding”. Having regard to all elements of the case at hand, and in particular to the fact that the only distinctive element in the disputed domain name is the Complainant’s trademark, the high degree of distinctiveness and reputation of the Complainant’s trademark, the initial use of the website linked to the disputed domain name as an e-commerce website selling unauthorized IQOS-branded products and competing tobacco products, the unauthorized use on such website of several other of the Complainant’s trademarks (such as its HEETS, Q, and hummingbird trademarks), the unauthorized use of the Complainant’s marketing images protected by copyright, and the use by the Respondent of misleading and bad faith copyright notices such as “IQOS China official website copyright owner” (“IQOS中国官网版权所有”), the Panel rules that it has been demonstrated that the Respondent has used and 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 requirement 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 25, 2019
Full & Egal Universal Law Academy