The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondents are Ed Lin, Yuhsuan Lin, and Yu Lin, all of Taiwan Province of China. 2. The Domain Names and Registrars
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2020. On the same day, the Center transmitted by email to the Registrar a request for verification in connection with the disputed domain names On December 11, 2020, the Complainant filed a second amended Complaint requesting the addition of the disputed domain name 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 December 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on January 7, 2021. The Center appointed Matthew Kennedy as the sole panelist in this matter on February 2, 2021. 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. PMI launched IQOS in 2014, which consists of a device into which tobacco products are inserted and heated to generate a nicotine-containing aerosol. The IQOS system also consists of an IQOS pocket charger designed to charge the IQOS holder. To date, IQOS products have been distributed almost exclusively through PMI’s official IQOS stores and websites and selected authorized distributors and retailers. The Complainant has not yet commercialized its IQOS products in Taiwan Province of China. The Complainant holds multiple trademark registrations, including Taiwan Province of China trademark registrations numbers 01921980 registered on June 16, 2018 and 01927293 registered on July 16, 2018, both for IQOS, collectively specifying goods in classes 14, 18, 25 and 35 including electronically controlled tobacco products heating devices and online retail services for heated tobacco products. Those trademark registrations remain current. The Respondents are all identified in the Registrar’s private WhoIs database by the family name “Lin”, albeit with different given names. All are resident in Taipei. The disputed domain name The Registrar confirmed that the language of all three Registration Agreements is English. The Complainant and the Respondent Ed Lin were parties to another proceeding under the Policy, which concerned an IQOS Fans Taiwan online shop associated with the domain name The disputed domain names are each identical or confusingly similar to the Complainant’s IQOS trademark. The Respondents have no rights or legitimate interests in respect of the disputed domain names. The Complainant has not licensed or otherwise permitted the Respondents to use any of its trademarks or to register domain names incorporating its IQOS trademark (or a domain name which will be associated with this trademark). The Respondents are not authorized distributors or resellers of the IQOS System. The website provided under the disputed domain names does not meet the requirements for a bona fide offering of goods. The disputed domain names were registered and are being used in bad faith. The Respondents registered and used the disputed domain names 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 the website or location or of a product or service on the website or location. B. Respondents The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Consolidation: Multiple Domain Name Registrants The amended Complaint initiates disputes in relation to nominally different domain name registrants. The Complainant contends that the disputed domain names are all under common control. The Complainant requests consolidation of the disputes against the disputed domain name registrants pursuant to paragraph 10(e) of the Rules. The disputed domain name registrants did not comment on the Complainant’s request. Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. However, the Panel does not consider that paragraph 3(c) was intended to enable a single person or entity to put a complainant to the unnecessary time, expense and effort of initiating multiple proceedings against technically different domain name registrants, particularly when each registration raises the same issues. In addressing the Complainant’s request, the Panel will consider whether: (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be 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 and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. As regards common control, the Panel notes all disputed domain names begin with “iqos” and that they all resolve or redirect to the same website. The registrant’s email and telephone number are identical for the disputed domain names As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding. 6.2 Substantive Issues 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 Based on the evidence presented, the Panel finds that the Complainant has rights in the IQOS mark. The disputed domain name The disputed domain names The only other element in each disputed domain name is a Top-Level Domain (“TLD”) suffix, either “.blog”, “.co” or “.com”. A TLD suffix is a standard registration requirement and generally disregarded for the purposes of assessing confusing similarity between a domain name and a trademark under the Policy. See WIPO Overview 3.0, section 1.11. Therefore, the Panel finds that the disputed domain names are identical or 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 names, which are identical or confusingly similar to the Complainant’s IQOS trademark, are being used to resolve or redirect to an online shop, which offers for sale the Complainant’s IQOS products. The Complainant submits that it has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register domain names incorporating its IQOS trademark. The Panel notes that the Respondent’s homepage gives the impression that it is an IQOS shop affiliated with, or endorsed by, the Complainant. Although there is a disclaimer of any affiliation between the operator of the shop and the Complainant on another page, this will not be viewed by Internet users unless they click on the disclaimer button at the bottom of the homepage. Further, customers may not understand the disclaimer even if they see it, as the website is directed at Chinese speakers and the disclaimer is in English. In addition, the shop offers for sale other products that appear to be from a competitor of the Complainant. These circumstances show that the Respondent’s use of the disputed domain names 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 names of the underlying domain name registrants are recorded in the Registrar’s private WhoIs database variously as “Ed Lin”, “Yuhsuan Lin”, and “Yu Lin”. None of these names resembles any of the disputed domain names. While two of the disputed domain names are abbreviations of the title of the Respondent’s shop “IQOS Fans Taiwan”, there is no evidence that the Respondent is known by that name besides the Respondent’s own website and the Respondent’s website in a previous proceeding under the Policy in which the Respondent was found to have registered and been using another domain name in bad faith: see See Philip Morris Products S.A. v. Contact Privacy Inc. Customer 1247056114 / Ed Lin and Domains By Proxy, LLC / Hsuan Kin (supra). Accordingly, there is no evidence indicating that the Respondent has been commonly known by any of the disputed domain names as envisaged by the second circumstance of paragraph 4(c) of the Policy. As regards the third circumstance above, the disputed domain names resolve or redirect to an online shop. Despite its title, the site is not a noncommercial fan website. This 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 names. The Respondent failed to rebut that case because the Respondent 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 names. 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] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] web site or location.” The disputed domain names were registered in 2020, after the Complainant obtained its trademark registrations for IQOS, including in Taiwan Province of China, where the Respondent is resident. The disputed domain names are identical or confusingly similar to the Complainant’s IQOS trademark and resolve or redirect to a website that prominently displays the Complainant’s IQOS mark and images of the Complainant’s products. This all gives the Panel reason to find that the Respondent was aware of the Complainant and its IQOS trademark at the time that the Respondent registered the disputed domain names and deliberately chose to register that mark as part of the disputed domain names in bad faith. The Respondent uses the disputed domain names to resolve or redirect to an online shop. The homepage of the website gives the false impression that it is an online IQOS shop affiliated with the Complainant. Given the findings in section 6.2B above, the Panel finds that the disputed domain names operate by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website and the products on the website. This use is intentional and for the commercial gain of the Respondent as contemplated by paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the disputed domain names have been registered and are 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 names Matthew Kennedy
(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
Sole Panelist
Date: February 16, 2021
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