The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is chenyi zhao, 瑪爾有限公司, Taiwan Province of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Net-Chinese Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2019. On June 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 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 June 12, 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 in English on June 13, 2019.
On June 12, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on June 13, 2019. 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 in English and Chinese of the Complaint, and the proceedings commenced on June 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 16, 2019.
The Center appointed Rachel Tan as the sole panelist in this matter on July 22, 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 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 7.3 million legal-aged smokers switching to the IQOS products.
The Complainant holds worldwide registrations of the IQOS trade mark, including:
International Registration No. 1329691, registered on August 10, 2016 in classes 9, 11 and 34, designating numerous territories, including Australia, China, Japan, the European Union, the United States of America. The goods claimed include “batteries for electronic cigarettes” in class 9, “electronic vaporizers except electronic cigarettes; apparatus for heating liquids; apparatus for generating vapor” in class 11 and “electronic cigarettes; flavorings, other than essential oils, for use in electronic cigarettes” in class 34;
IQOS Registration No. 01921980, registered on June 16, 2018 in Taiwan Province of China in classes 14, 18, 25 and 35. The class 35 goods claimed include “retail services (including online retail services) of heated tobacco products, electronic cigarettes, electronic smoking devices, electronically controlled tobacco products heating device”; and
Registration No. 01927293, registered on July 16, 2018 in Taiwan Province of China, in class 35. The class 35 goods claimed include “retail services (including online retail services) of heated tobacco products, electronic cigarettes, electronic smoking devices, electronically controlled tobacco products heating device”.
Hereafter referred to as the “IQOS trade marks”.
The disputed domain name was registered by the Respondent on September 21, 2018. The disputed domain name currently resolves to an active website in the Chinese language offering for sale IQOS branded smoking system and MARLBORO branded smoking accessories. The website appears to target consumers in Taiwan Province of China. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its IQOS 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 Taiwan Province of 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 trademark 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. 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 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 has submitted extracts of the IQOS trade mark registrations from the official public records of the WIPO Global Brand Database and Taiwan Intellectual Property Office. The registrations cover, amongst others, “installations for liquids, steam generating installations, heating installations for tobacco and tobacco products and electric evaporators” in class 34 and “retail services (including online retail services) of heated tobacco products, electronic cigarettes” in class 35.
The evidence adduced by the Complainant demonstrates its established rights in the IQOS trade marks.
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 letters “jp”. 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”). Further, although the letters “jp” are the accepted country abbreviation for “Japan”, the IQOS word mark remains recognizable within the disputed domain name. As such, the addition of a geographical term here does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0. The inclusion of “.com”, a generic Top-Level Domain (“gTLD”), “is a technical requirement of every domain name registration”. See 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 marks.
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 marks as well as materials about its IQOS branded products. The Complainant contends that it has not licensed or otherwise permitted the Respondent to use the IQOS trade marks or register a domain name incorporating the IQOS mark. The Complainant further contends that the Respondent is not making legitimate noncommercial or fair use of the disputed domain name but rather is doing so with an intent to obtain unfair commercial gain.
The disputed domain name currently resolves to an online store in the Chinese language which offers the IQOS system for sale in Taiwan dollars. The Panel notes that the Complainant’s registered IQOS trade marks as well as branded product images are noticeable on the website. The online store does not accurately or prominently disclose a lack of a commercial relationship between the Complainant and the Respondent. On the contrary, the Panel notes that the operator of the website is stated as “IQOS Taiwan” with a copyright claimed over its content. The “news” section also includes the statement “IQOS Taiwan official website, the largest IQOS electronic cigarette seller in Taiwan”. These 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.
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 supporting a bona fide offering of goods or services or giving rise to rights or legitimate interests in the disputed domain 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 marks, including rights in Taiwan Province of China. The disputed domain name was registered subsequent to the registration of the Complainant’s IQOS trade marks.
The Respondent appears to be an individual located in Taiwan Province of China. The term “iqosjp” 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 incorporating the trademark IQOS in its entirety, the Respondent cannot credibly claim not to have knowledge of the Complainant’s trade marks.
The Panels notes that the disputed domain name resolves to an online store offering for sale the IQOS branded system accompanied by images of the products, and on which the Complainant’s IQOS trade marks prominently appear. The lack of a disclaimer that the Respondent is not affiliated with the Complainant is noticeably absent. Conversely, the content on the website leads consumers to think that the online store is authorized by the Complainant. Another pertinent consideration is that the disputed domain name consists of a distinctive term followed by the country abbreviation for Japan, which corresponds to the geographical location where the Complainant first launched the IQOS system, and from which the goods for sale originate. These facts demonstrate that the Respondent is clearly aware of the Complainant, its business, and the IQOS trade marks and products.
The Panel is satisfied that the Respondent intends to take advantage of the reputation of the Complainant’s trade mark to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to source, affiliation or endorsement of their website.
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 present use of 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 5, 2019
Full & Egal Universal Law Academy