The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Huang Zong Zhong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing (Beijing) 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 14, 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 confirmed its request that English be the language of the proceeding on June 14, 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 Chinese of the Complaint, and the proceedings commenced on June 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 10, 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:
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 territories, including China.
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; liquid nicotine solutions for use in electronic cigarettes” in class 34.
The disputed domain name was registered by the Respondent on December 26, 2018. According to the Complainant, the disputed domain name resolved to an online shop allegedly offering the Complainant’s 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 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 sell 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 the 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 numerals “808” 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”). It is also accepted that the addition 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.
In the present case, given that the numerals “808” does not prevent a finding of confusing similarity between the disputed domain name and the IQOS word mark, 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. Rather, the website contained a statement that the Respondent is the official seller of Japanese IQOS 2.4 Plus and other IQOS cartridges. 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.
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.
In the present case, the Complainant’s IQOS trade mark is inherently distinctive. The Respondent appears to be a Chinese individual. The term “iqos808” 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 IQOS 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 offered allegedly IQOS branded goods by using the IQOS trade mark. The Panel notes that the website contained a statement that the Respondent is the official seller of Japanese IQOS 2.4 Plus and other IQOS cartridges, and the Respondent provides maintenance services for the IQOS products. These facts demonstrate that the Respondent is clearly aware of the Complainant, its business, and the IQOS trade mark and products. Furthermore, the statement would have led Internet users into believing that the Respondent was the official supplier of the IQOS product in China. Such registration and use of the disputed domain name constitutes evidence of bad faith under paragraph 4(b)(iv) of the Policy. In addition, the Respondent has kept silent in the face of the Complainant’s allegations of bad faith, and there is nothing to suggest that the Respondent could make good faith use of the disputed domain name.
Further, the Panel notes that the disputed domain name currently resolves to an inactive website. The “passive holding” of a domain name does not prevent a finding of bad faith in this case.
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 5, 2019
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