The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is zhao yuan, 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 14, 2019. On June 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 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 17, 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 the first amended Complaint in English on June 19, 2019. The Complainant filed the second amended Complaint in English on June 26, 2019.
On June 17, 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 19, 2019. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amended Complaints 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 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2019.
The Center appointed Douglas Clark as the sole panelist in this matter on July 25, 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 one of the world’s leading international tobacco companies, with its presence in approximately 180 countries. The Complainant has developed a line of smokeless products called the IQOS System.
The IQOS is a tobacco heating system designed to heat, rather than burn a specific type of tobacco stick with a controlled temperature range that generates the taste of tobacco without using fire like traditional cigarettes. This product was launched in 2014 and is now available in 44 countries around the world.
The Complainant is the owner of various IQOS trademarks in numerous jurisdictions including Chinese trademark no. 16314286, registered on May 14, 2016, Japanese trademark no. 5727311, registered on December 19, 2014 and international trademark registration no. 1329691, registered on August 10, 2016, that designates both China and Japan.
The Respondent is an individual based in China.
The disputed domain name was registered on December 26, 2018. According to the evidence provided by the Complainant, the disputed domain name resolved to a page that appears to be online platform that sells IQOS products from Japan to Mainland China as well as products from the competitors of the Complianant. At the top of the page, it bears a IQOS mark with additional Chinese words “日本直邮 正规合法”, which means “Direct Mail from Japan Properly Regulated and Legal”. The title website also displayed “IQOS官网” which means “IQOS official site”. 5. Parties’ Contentions A. Complainant
Identical or Confusingly Similar
The Complainant contends that the disputed domain name and the trademark IQOS are confusingly similar. The disputed domain name contains IQOS in its entirety as the distinctive part of the disputed domain name. The addition of the English letters “rb” does not affect the similarity of the disputed domain name to the registered trademark.
No rights or legitimate Interests
The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for IQOS. It, therefore, has no rights or legitimate interests in the disputed domain name. Even if the Respondent was selling genuine IQOS products it does not satisfy the criteria to establish bona fide use set out in Oki Data Americas, Inc. v. ASD, Inc.WIPO Case No. D2001-0903.
Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant’s rights in the IQOS trademark given its worldwide reputation and the extent to which this product has been advertised in the world. The Respondent acquired the disputed domain name to divert Internet users to the Respondent’s website under the disputed domain name for commercial gain. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
The Language of the Registration Agreement is in Chinese.
The Complainant requests that the language of the proceeding be English on a number of grounds including that the disputed domain name is in Latin script, the website under the disputed domain name also used English words, the WhoIs privacy service also uses English and the obligation to translate all case relevant documents would be an unfair disadvantage to the Complainant and the Complainant would incur additional expenses and the proceeding would be unduly delayed.
The Respondent did not respond to this request.
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
The Respondent did not respond to the Center’s preliminary determination. This Panel decided in Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191 that a Respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceedings “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
As set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delays and expense. These factors lead the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English. 6.2 Substantive Issues
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(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 use in bad faith. A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s IQOS mark in full with the additional letters “rb” which do not appear to have any particular meaning. The disputed domain name is therefore confusingly similar to the Complainant’s registered trademark.
The first element of paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests. Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
The Respondent has no business or any kind of relationships (i.e. licensor, distributor) with the Complainant. Considering the absence of a response by the Respondent to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
The Panel notes that the disputed domain name resolved to a page that advertised alleged IQOS products. In principle, it is not an infringement of a trademark to resell or promote for resale genuine trademarked goods by reference to the mark; As long as certain conditions are met a seller can make use of a trademark in a domain name to sell genuine products.
However, in Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903, the panel in that case held that to be “bona fide” within the meaning of paragraph 4(c)(i) of the policy, the offering should meet the following requirements:
- The Respondent must actually be offering the goods or services at issue;
- The Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait internet users and then switch them to other goods;
- The site must accurately disclose the registrant’s relationship with the trademark owners; it may not, for example, false suggest that it is the trademark owner, or that the website is the official site; and
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
In this case the Respondent does not meet, at least, the second and third requirements set out above. The website under the disputed domain name did not accurately disclose its relationship with the Complainant, rather at the title bar of the website, it indicated it was IQOS official website.
The second element of paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith
Based on the evidence, the Panel has no hesitation in finding that the disputed domain name was registered in bad faith and is being used in bad faith. The Respondent clearly knew of the IQOS products when registering the disputed domain name. This is made clear by the use of the disputed domain name to promote alleged IQOS products. The Respondent’s intention can only have been to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark of the products of the website. Such registration and use falls into paragraph 4(b)(iv) of the Policy.
The third element of the paragraph 4(a) of the Policy is therefore satisfied. 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.
Douglas Clark
Sole Panelist
Date: August 8, 2019
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