The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is CHI CHUN-HSIANG, Taiwan Province of 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 April 20, 2021. On April 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 20, 2021, 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 April 22, 2021 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 April 26, 2021. 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 of the Complaint, and the proceeding commenced on May 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2021. On May 20, 2021, the Respondent sent an email to the Center. On June 3, 2021, the Complainant sent an email to the Center requesting the suspension of the proceeding. On June 3, 2021, the Center notified the Suspension of the Proceeding to the Parties. On June 14, 2021, the Complainant sent an email to the Center requesting the Center to reinstitute the proceeding. On June 14, 2021, the Center informed the Parties that it would proceed to appoint a panel. The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on July 8, 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 A. Complainant The Complainant is a company incorporated in Switzerland and is part of the group of companies affiliated with Philip Morris International Inc. (“PMI”). The Complainant is the owner of several registrations in jurisdictions worldwide for the word and device mark IQOS (the “Trade Mark”), including Taiwan Province of China trade mark registration No. 1718976, with a registration date of July 16, 2015. PMI has used the Trade Mark since its launch in Japan in 2014 and to date in 64 countries in respect of its products, specifically precisely controlled heating devices into which specially designed tobacco products are inserted and heated to generate a flavourful nicotine-containing aerosol. B. Respondent The Respondent is apparently a resident of Taiwan Province of China. C. The Disputed Domain Name The disputed domain name was registered on February 21, 2021. D. Use of the Disputed Domain Name Prior to the filing of the Complaint herein, the disputed domain name was used in respect of a Chinese language website offering for sale the Complainant’s products under the Trade Mark (the “Website”). The disputed domain name is presently resolved to a Chinese and English language website saying “這個網站目前已啟用維護模式。Site will be available soon”. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration. The disputed domain name incorporates the entirety of the Trade Mark (see WIPO Overview 3.0, section 1.7) together with the word “store”, and the commonly used abbreviation for Taiwan Province of China, “tw”, each element separated by hyphens. Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8). The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name: (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 trade mark 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 trade mark or service mark at issue. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption. The Respondent has failed to show that he has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has previously been used in connection with the Website, in order to offer for sale the Complainant’s products under the Trade Mark. The Complainant contends that the Complainant’s IQOS system is not currently sold in Taiwan Province of China and points out that the currency used on the Website is the currency used in Taiwan Province of China. According to the undisputed evidence of the Complainant, the Website is further using a number of the Complainant’s official product images and marketing materials without the Complainant’s authorisation, while at the same time providing a copyright notice at the bottom of the Website claiming copyright in the material presented on the Website and thereby strengthening the impression of an affiliation with the Complainant. The Complainant contends further that the Website does not show any details regarding the provider of the Websites - which is only identified as “IQOS加熱菸” (“IQOS heating smoke”) - nor does it acknowledge the Complainant as the real owner of the Trade Mark, leaving the Internet user under the false impression that the Website is an online shop of the Complainant or one of its official distributors. The disputed domain name is presently resolved to a Chinese and English language website saying “這個網站目前已啟用維護模式。Site will be available soon”. There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. In addition, the Panel notes the nature of the disputed domain name, which carries a risk of implied association (see WIPO Overview 3.0, section 2.5.1). In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith In light of the manner of use of the disputed domain name highlighted in Section 6B above, the Panel finds that the requisite element of bad faith has been made out, under paragraph 4(b)(iv) of the Policy. The Panel’s finding in this regard is fortified by the Respondent’s decision to take down the Website following the filing of the Complaint herein, whilst electing not to reply to the Complainant’s contentions. The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith. 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 Sebastian M.W. Hughes
Sole Panelist
Dated: July 19, 2021
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