The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Chang Liu, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. On October 25, 2019, the Center sent an email communication to the Complainant 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 October 30, 2019. The Center verified that the Complaint and 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 November 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2019. The Center appointed Matthew Kennedy as the sole panelist in this matter on December 11, 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 belongs to a corporate group owned by Philip Morris International, Inc. (“PMI”), a tobacco company. In 2014, PMI launched IQOS, an electronically-controlled device into which a tobacco stick is inserted and heated to create a tobacco vapor. To date, IQOS products have been distributed almost exclusively through PMI’s official IQOS stores and websites and selected authorized distributors and retailers. However, the Complainant’s IQOS System is not currently sold in China. The Complainant owns multiple trademark registrations including International trademark registration number 1218246 for IQOS, registered on July 10, 2014, and International trademark registration number 1329691for IQOS in a particular script (the “IQOS logo”), registered on August 10, 2016 and designating multiple jurisdictions, including China. Both trademark registrations specify goods in classes 9, 11 and 34, including electronic cigarettes. Both trademark registrations remain current. The Respondent is an individual ostensibly resident in China. His name and contact details are not available in the Registrar’s public WhoIs database. His contact details in the Registrar’s private WhoIs database are incomplete, as a result of which the Written Notice of the Complaint could not be delivered by courier. The disputed domain name was created on October 26, 2018. It resolves to a website in Chinese that is presented as “IQOS官网（中国）”, meaning “IQOS Official Site (China)”. The website displays the Complainant’s IQOS logo with images of the Complainant’s IQOS products. The website offers for sale both IQOS products and a competitor product. Prices are quoted in CNY. The website invites Internet users to scan a QR code to obtain further information. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s IQOS trademark. The disputed domain name reproduces the IQOS trademark in its entirety, in addition to the nondistinctive and descriptive word “sell”. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its IQOS trademark. The Respondent is not only offering the Complainant’s products but also competing tobacco products and/or accessories of other unknown commercial origin. The disputed domain name was registered and is being used in bad faith. It is evident from the Respondent’s use of the disputed domain name that the Respondent registered and is using the disputed domain name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s registered IQOS trademark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (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. A. Identical or Confusingly Similar Based on the evidence submitted, the Panel finds that the Complainant has rights in the IQOS trademark. The disputed domain name wholly incorporates the Complainant’s IQOS trademark as its initial and only distinctive element. It also includes the element “sell” which, as a mere dictionary word, does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. The disputed domain name also includes a generic Top-Level Domain (“gTLD”) suffix, specifically, “.com”, which is a technical requirement of registration. A gTLD suffix is disregarded in the comparison between a domain name and a trademark for the purposes of the first element of the Policy, unless it has some impact beyond its technical function, which is not the case here. Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. As regards the first circumstance above, the disputed domain name is being used in connection with a website that offers for sale the Complainant’s IQOS products, among other things. The website does not exclusively offer for sale the Complainant’s products as it also offers for sale a third party competitor product. Further, the website is falsely presented as an official IQOS website for China whereas the Complainant submits that it has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its IQOS trademark. These facts show that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. As regards the second circumstance above, the Registrar’s verification email indicates that the name of the Respondent is “Chang Liu”, not “iqossell”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy. As regards the third circumstance above, the disputed domain name resolves to a website that offers goods for sale. That is not a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that case because he did not respond to the Complainant’s contentions. Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows: “(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.” The disputed domain name was registered in 2018, years after the Complainant obtained its trademark registrations for IQOS, including in China, where the Respondent is resident. The disputed domain name wholly incorporates the Complainant’s IQOS trademark and combines it with the dictionary word “sell”. The website to which the disputed domain name resolves displays the Complainant’s IQOS logo and images of the Complainant’s products. This all indicates that the Respondent was aware of the Complainant and its IQOS trademark at the time that he registered the disputed domain name last year and that he deliberately chose to register that trademark as part of the disputed domain name in bad faith. The Respondent uses the disputed domain name, which is confusingly similar to the Complainant’s IQOS trademark, in connection with a website that offers for sale the Complainant’s products and is falsely presented as an official IQOS website for China, which implies that it is operated by, or affiliated with, the Complainant. The website not only offers for sale IQOS products but a third party competitor product as well. The Panel finds that the disputed domain name operates by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website or the products offered for sale on the website. This use is intentional and for commercial gain as contemplated by paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in 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 Matthew Kennedy
Sole Panelist
Date: December 25, 2019
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