The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondents are Contact Privacy Inc. Customer 1247056114, Canada / Ed Lin, Taiwan Province of China (“Taiwan”) and Domains By Proxy, LLC, United States of America / Hsuan Kin, Taiwan. 2. The Domain Names and Registrars
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2020. On June 26, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On June 27 and 29, 2020, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on July 1 and 10, 2020, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed amended Complaints on July 1 and July 10, 2020. 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 Respondents of the Complaint, and the proceedings commenced on July 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 4, 2020. The Center appointed Francine Tan as the sole panelist in this matter on August 27, 2020. 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 part of the group of companies affiliated to Philip Morris International Inc. (jointly referred to as “PMI”). PMI is a leading international tobacco company, with products sold in approximately 180 countries. The Complainant states that PMI is known for innovating across its brand portfolio. In the course of transforming its business from combustible cigarettes to Reduced Risk Products (or “RRPs”, which PMI defines as products that present, are likely to present, or have the potential to present less risk of harm to smokers who switch to those products versus continued smoking), PMI has developed a number of RRP products. One of these RRPs developed and sold by PMI is called IQOS. IQOS is a precisely-controlled heating device into which specially-designed tobacco products under the trade marks HEETS or HEATSTICKS are inserted and heated to generate a flavourful nicotine-containing aerosol. The IQOS system also consists of an IQOS Pocket Charger, specially designed to charge the IQOS Holder (collectively referred to as the IQOS System). The IQOS System was first launched by PMI in Nagoya, Japan in 2014 and has obtained an 18.3% share of the market in Japan. Today the IQOS System is available in key cities in around 53 markets across the world. As a result of a USD 6 billion investment and extensive international sales and marketing efforts (in accordance with local laws), the IQOS System has achieved considerable international success and reputation, and over 10 million relevant consumers have converted to the IQOS System worldwide. To date, the IQOS System has been almost exclusively distributed through PMI’s official IQOS stores and websites and selected authorized distributors and retailers. The Complainant owns a huge portfolio of trade marks worldwide. Its trade mark registrations include Taiwan, trade mark registration Nos. 01921980 for IQOS registered on June 16, 2018, and 01927293 for a stylized version of IQOS registered on July 16, 2018. The disputed domain names, The disputed domain names are confusingly similar to the Complainant’s IQOS trade mark as the trade mark is incorporated entirely into the disputed domain names. The “.net” generic Top-Level Domain (“gTLD”) is a standard registration requirement and is not relevant to whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark. The Respondents have no rights or legitimate interests in the disputed domain names. The Respondents have no trade mark rights in the term “iqos”. The Respondents are not authorized distributors of resellers of the IQOS System. The Complainant does not sell its IQOS products in Taiwan where the Respondents are based. There is no bona fide offering of goods or services by the Respondent. The disputed domain names were registered and are being used in bad faith. The Respondents were aware of the Complainant’s IQOS mark when registering the disputed domain names as the term “iqos” is purely an imaginative term and unique to the Complainant. The Complainant’s trade mark registrations predate the registration dates of the disputed domain names. The Respondents registered and used the disputed domain names with the intention to attract, for commercial gain, Internet users to the its websites selling goods under the Complainant’s IQOS mark by creating a likelihood of confusion with the Complainant’s registered IQOS trade mark as to the source, sponsorship, affiliation, or endorsement of their websites or locations. The Respondents’ websites use, with the Complainant’s consent, a number of the Complainant’s official product images and marketing materials. At the same time, the bottom of the websites claim copyright in the material presented on the websites, which serve to further cause the false impression of affiliation with the Complainant. B. Respondent The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary Issue: Consolidation of a Complaint for more than one disputed domain name Paragraphs 3(c) and 10(e) of the Rules respectively provide that: “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” “A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.” It is established that the consolidation of multiple registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraphs 3(c) or 10(e) of the Rules provided “the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel, having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.” (See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2) In the present case, the Complainant submitted evidence that the layout of the websites to which the disputed domain names resolve are highly similar and contain highly similar designations, and that one of the hyperlinks from the disputed domain name From the foregoing, the Panel is of the view that there is common control being exercised over the disputed domain names and websites. Accordingly, having regard to the above circumstances, the Panel is of the view that the consolidation of the multiple domain name disputes asserted by the Complainant against the Respondents is consistent with the Policy and Rules, and is in line with prior relevant UDRP decisions in this area. The Panel will proceed to a decision on the merits of these domain name disputes. 6.2 Substantive Issues A. Identical or Confusingly Similar The Complainant has established it has rights in the IQOS trade mark. The trade mark is reproduced in its entirety in the disputed domain names and recognizable. The Panel agrees that the additions of the letter “i” (in the first disputed domain name) and geographical abbreviation for Taiwan, “tw” (in the second disputed domain name) do not serve to remove the confusing similarity with the Complainant’s IQOS trade mark. The disputed domain names are therefore confusingly similar to the Complainant’s IQOS trade mark. The Panel accordingly finds that the first element of paragraph 4(a) of the Policy has been satisfied. B. Rights or Legitimate Interests Noting the facts and arguments set out above, the Panel finds that the Complainant has established a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names. The Complainant’s trade mark registrations and many years of use of the IQOS trade mark long predate the registrations of the disputed domain names. There is no evidence that any licence or authorization has been extended by the Complainant to the Respondents for the use of the IQOS trade mark as a trade mark or in a domain name. Neither is there evidence that the Respondents are commonly known by the name “iqos”. The use of the disputed domain names and the Complainant’s official product images and marketing materials, as well as the false claim of copyright ownership on the Respondents’ websites suggest an affiliation with the Complainant and the IQOS trade mark. Further, the Complainant does not offer its IQOS system for sale in Taiwan; the online shops provided under the disputed domain names create the false impression that the Complainant has officially introduced the IQOS System into the Taiwanese market. Such use of the disputed domain names does not constitute a bona fide offering of goods or services. The Respondents failed to respond to or rebut the Complainant’s assertions. The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied. C. Registered and Used in Bad Faith The Complainant’s IQOS trade mark is such a well-known mark that the Respondents could not by pure coincidence and without knowledge of the IQOS mark have selected the disputed domain name without the Complainant and/or its mark in mind. Moreover, it is evident that the Respondents specifically targeted the Complainant’s trade mark and products. The Panel finds that the Respondents registered the disputed domain names with a view to intention to attract, for commercial gain, Internet users to the their websites by creating a likelihood of confusion with the Complainant’s registered IQOS trade mark as to the source, sponsorship, affiliation, or endorsement of their websites or locations or of a product or service on their websites. The inference of opportunistic bad faith on the Respondents’ part has not been rebutted by the Respondents. The Panel therefore finds that the third element of paragraph 4(a) of the Policy has been 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 names, Francine Tan
Sole Panelist
Date: September 10, 2020
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