The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Shen ZhenShi Heng Lian Su Ke Ji You Xian Gong Si, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Chengdu West Dimension Digital 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 31, 2019. On May 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 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 June 4, 2019, the Center transmitted 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 June 5, 2019. The Respondent did not comment on the language of the proceeding.
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 June 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2019.
The Center appointed Rachel Tan as the sole panelist in this matter on July 16, 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.
The Panel notes that due to what appears to be a technical issue on the Respondent’s email server side, the notification of the Complaint (along with the Complaint and annexes) may not have been sent to the email address on record for the Respondent and postmaster (i.e. “[…]@” and “[…]@”). The Panel further notes that records show that attempts to send emails to the above Respondent email addresses appear to have been redirected through other email addresses, possibly causing their non-delivery. In light of the this, and out of an abundance of caution, on August 6, 2019 the Panel granted five (5) days to the Respondent to indicate to the Center whether it wished to participate in this proceeding by August 11, 2019. The Respondent still did not submit any response by this date. 4. Factual Background
The Complainant is a part of the group of companies affiliated with Philip Morris International Inc. (“PMI”). PMI is a major international player in the tobacco industry, with products sold in more than 180 countries.
PMI developed an electrically-heated tobacco smoking system branded IQOS. The IQOS products were first launched in Nagoya, Japan, in 2014. To date, the IQOS products are available in key cities in 44 markets across the world. The IQOS products are almost exclusively distributed through PMI’s official stores and websites as well as authorized distributors and retailers. The Complainant claims to have invested USD 6 billion in international sales and marketing efforts resulting in approximately 7 million legal-aged smokers switching to the IQOS products.
The Complainant holds worldwide registrations of the IQOS trade mark, including:
IQOS Chinese Registration No. 16314286, registered on May 14, 2016 in class 34; and
International Registration No. 1329691, registered on August 10, 2016 in classes 9, 11 and 34, designating numerous jurisdictions, including China.
The goods claimed include “batteries for electronic cigarettes” in class 9, “electronic vaporizers except electronic cigarettes; apparatus for hearing liquids; apparatus for generating vapor” in class 11 and “electronic cigarettes; liquid nicotine solutions for use in electronic cigarettes” in class 34.
The disputed domain name was registered by the Respondent on October 9, 2018. According to the evidence provided by the Complainant, the disputed domain name previously resolved to a website in Chinese which allegedly offered the IQOS system for sale. The disputed domain name currently resolves to an inactive website. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its IQOS trade mark. The addition of the letter “f” does not serve to differentiate the disputed domain name from the Complainant’s trade mark.
The Complainant further contents that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not licensed or permitted by the Complainant to use the IQOS trade marks or to register a domain name which will be associated with this mark. The Respondent’s website extensively uses the IQOS trade mark and official product images and marketing materials produced by the Complainant. Thus, the Respondent seeks to obtain unfair commercial gain by misleading consumers into thinking that it is an official distributor when in fact the Complainant has yet to commercialize its IQOS products in China.
Lastly, the Complainant contents that the disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name with full knowledge of the Complainant’s IQOS trade mark. The Respondent’s use of the disputed domain name is with the intent to attract, for commercial gain, internet users to the website by creating a likelihood of confusion with the Complainant’s IQOS trade mark as to the source, sponsorship, affiliation or endorsement of its website or location. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
6.1 Language of the Proceeding
The Panel must first address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.
In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding. The Respondent did not comment on the language of the proceeding. The Center proceeded to issue its case-related communications to the Parties in both English and Chinese. Given the provided submissions and circumstances of this case, the Center decided to accept the Complaint as filed in English, accept a Response in either English or Chinese, and appoint a Panel familiar with both languages. The appointed Panel has the discretion to decide the language of the proceeding.
The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below:
(a) The Complainant is a company incorporated in Switzerland. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;
(b) English is not the native language of either Party;
(c) The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request; and
(d) The Respondent has failed to reply to the Complainant’s contentions. The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.
6.2 Substantive Issues
On the basis of the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a),(b) and (c) of the Policy, the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainant submitted the Chinese trade mark registration certificate for IQOS and extract of the IQOS trade mark registration from the official public record of WIPO Madrid Monitor. The registrations cover, amongst others, class 34 goods such as heating installations for liquids, steam generating installations, heating installations for tobacco and tobacco products and electric evaporators.
The evidence adduced by the Complainant demonstrates its established rights in the IQOS trade mark.
By comparing the disputed domain name and the IQOS word mark, the Panel notes that the disputed domain name wholly incorporates the Complainant’s IQOS word mark and deviates only by the addition of the letter “f” at the end of the word. In cases where a domain name incorporates the entirety of a trade mark, 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 section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
In this context, the single letter “f” does not prevent a finding of confusing similarity between the disputed domain name and the IQOS word mark. See section 1.8 of the WIPO Overview 3.0. The addition of “.com”, a generic Top-Level Domain (“gTLD”), “is a technical requirement of every domain name registration”. Groupon, Inc. v. Whoisguard Protected, Whoisguard, Inc. / Vashti Scalise,WIPO Case No. D2016-2087. Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s IQOS trade mark.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainant has submitted evidence of its exclusive rights to the IQOS trade mark as well as materials about its IQOS branded products. The Respondent is not licensed or permitted by the Complainant to use the IQOS trade marks or to register a domain name which will be associated with this mark. Moreover, the Respondent is not an authorized distributor or reseller of the Complainant.
The disputed domain name is currently inactive. However, the Complainant has submitted archived web pages demonstrating that the disputed domain name previously resolved to a website in Chinese which allegedly offered the IQOS system for sale in Chinese currency. The Panel notes that the Complainant’s registered IQOS word mark and logo as well as branded product images appeared on the website. Further, the online store did not accurately or prominently disclose a lack of a commercial relationship between the Complainant and the Respondent. Therefore, the facts do not support a claim of fair use under the “Oki data test”. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Moreover, the disputed domain name carries a risk of implied affiliation with the Complainant. See section 2.5.1 of the WIPO Overview 3.0.
The Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the domain name, and the burden of production shifts to the Respondent. See International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683. The Respondent has however failed to come forward with any evidence giving rise to rights or legitimate interests in the disputed domain name.
The Panel has weighed all available evidence and finds that the Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services, nor making fair or noncommercial use of the name.
Accordingly, the Panel finds that the Complainant has satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Complainant owns worldwide registrations for the IQOS trade mark, including rights in China. The disputed domain name was registered subsequent to the first registration of the Complainant’s IQOS trade mark. The search results using the keyword “IQOS” on the Baidu search engine reveals a strong and definite link between the IQOS trade mark and the Complainant.1 This evidences the fact that the IQOS trade mark would have acquired a certain degree of reputation and recognition amongst relevant consumers in China.
The Respondent appears to be a Chinese entity. The term “iqosf” has no meaning in the Chinese language and the IQOS trade mark is clearly recognizable within the disputed domain name. By registering a domain name composed of the mark in its entirety, the Respondent cannot credibly claim not to have knowledge of the Complainant’s trade mark. The Complainant has submitted archived webpages showing that the Respondent allegedly offered IQOS branded goods by using the IQOS trade mark. This demonstrates that the Respondent is clearly aware of the Complainant, its business, and the IQOS products. Such registration and use of the disputed domain name constitutes bad faith under paragraph 4(b)(iv) of the Policy. Further, the Panel notes that the disputed domain name currently resolves to an inactive website. However, the current “passive holding” of a domain name does not prevent a finding of bad faith.
Given all the circumstances of the case, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, considering the Respondent’s lack of rights or legitimate interests, the past use and by continuing to hold the disputed domain name, the Panel is led to conclude that the disputed domain name was registered and is being used in bad faith.
Accordingly, the Panel concludes that the Complainant has satisfied the third element under paragraph 4(a) of 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.
Rachel Tan
Sole Panelist
Date: August 13, 2019
1 It has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. See section 4.8 of the WIPO Overview 3.0.
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