Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
Respondents are 向智平 (Zhi Ping Xiang), China, 杨阳 (Yang Yang), China. 2. The Domain Names and Registrars
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2021. On May 20, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On May 21, 2021 and May 25, 2021, the Registrars transmitted by email to the Center their verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 25, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in English on May 26, 2021. On May 27, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On June 1, 2021, Complainant submitted a request that English be the language of the proceeding. Respondents did not comment on the language of the proceeding. 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 Respondents in English and Chinese of the Complaint, and the proceedings commenced on June 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2021. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on July 11, 2021. The Center appointed Yijun Tian as the sole panelist in this matter on July 25, 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 Complainant, Philip Morris Products S.A, is a company incorporated in Neuchâtel, Switzerland. It is part of a group of companies affiliated with Philip Morris International Inc. (“PMI”). PMI is a leading international tobacco company, which has business in approximately 180 countries. Complainant has innovated, developed, and sold a number of products, including smoke-free products. One of such products is branded as IQOS, a controlled heating device into which specially designed tobacco products under the trademarks HEETS and HEATSTICKS are inserted and heated to generate a flavourful nicotine-containing aerosol. Complainant has exclusive rights in the IQOS and IQOS related marks. Complainant is the exclusive owner of numerous IQOS trademarks worldwide, including the Chinese trademark registered on May 14, 2016 (the Chinese Trademark registration number 16314286). B. Respondents Respondents are 向智平 (Zhi Ping Xiang), China, 杨阳 (Yang Yang), China. The disputed domain names Complainant contends that the disputed domain names Complainant contends that Respondents have no rights or legitimate interests in respect of the disputed domain names. Complainant contends that Respondents have registered and used the disputed domain names in bad faith. Complainant requests that the disputed domain names be transferred to Complainant. B. Respondents Respondents did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding The language of the Registration Agreements for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondents to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following main reasons: a) The disputed domain names are in Latin script and not in Chinese script indicating that the Websites provided under the disputed domain names are directed to, at the very least, an English-speaking public. b) The Websites resolved by thee disputed domain names c) Complainant being a Swiss entity has no knowledge of Chinese and, in the light of above considerations regarding Respondent’s knowledge of English, decided to file the Complaint in English being a common language in global business and obviously also a language, in which Respondent is doing business. d) The Registrar in respect of the disputed domain name e) The above further supports Complainant’s contention that Respondents are capable of communicating in English, and that English is a common language in global business. Respondents did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding. Paragraph 11(a) of the Rules allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in its abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) further states: “Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case. Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that Respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of Complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving Respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering Complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.” (WIPO Overview 3.0, section 4.5.1; see also L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585). The Panel has taken into consideration the facts that Complainant is a company from Switzerland, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain names On the record, Respondents 向智平 (Zhi Ping Xiang), and 杨阳 (Yang Yang) appear to be Chinese residents and are thus presumably not native English speakers. However, considering the following, the Panel has decided that English should be the language of the proceeding: (a) the disputed domain names include Latin characters and number, rather than mere Chinese scripts; (b) the gTLD of the disputed domain names is “.com”, so the disputed domain names seem to be prepared for users worldwide, including English speaking countries; (c) the disputed domain name Accordingly, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Consolidation of Respondents The Panel notes that the present Complaint has been filed against multiple Respondents and Complainant has submitted a request for consolidation. On this subject, section 4.11 of the WIPO Overview 3.0 provides inter alia as follows: “The WIPO Center may accept, on a preliminary basis, a consolidated complaint where the criteria described below are prima facie met. Any final determination on consolidation would be made by the appointed panel, which may apply its discretion in certain circumstances to order the separation of a filed complaint”. The Panel finds that Complainant has provided sufficient evidence to establish that the disputed domain names or corresponding websites are subject to common control, such as the disputed domain names have been used to host identical website content (Annexes 8.1 and 8.2 of the Compliant). The connection between the disputed domain names is reinforced by the website resolved by the disputed domain name In all of these circumstances, the Panel considers that it is procedurally efficient to allow Complainant to proceed with the single Complaint as filed and is content that such consolidation is fair and equitable to all of the Parties. 6.3. Substantive Issues Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred: (i) the disputed domain names registered by Respondents are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondents have no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a)-(c)), the Panel concludes as follows: A. Identical or Confusingly Similar The Panel finds that Complainant has rights in the IQOS marks. The disputed domain names Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”. (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662). Further, in relation to the gTLD suffix, WIPO Overview 3.0 further states: “The applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” (WIPO Overview 3.0, section 1.11.1.) The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name: (i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or (iii) 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 Complainant’s trademarks. The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein). According to the Complaint, Complainant is a leading international tobacco company, which has business in approximately 180 countries. Complainant has innovated, developed and sold a number of products, including smoke-free products, and one of such products is branded as IQOS. The IQOS marks have been registered internationally, including China since 2016, which precede Respondents’ registration of the disputed domain names (in 2019 and 2020). Moreover, Respondents, while not affiliated with Complainant, are offering purported IQOS branded products and services, and using IQOS trademark and product images from Complainant’s official website, and using the disputed domain names to claim they are office websites (“Copyright IQOS. Some Rights Reserved”) of Complainant’s IQOS products. (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Philip Morris Products S.A. v. Lin Cheng, Han Ming,WIPO Case No. D2018-2688). Based on the following reasons the Panel finds that Respondents have no rights or legitimate interests in the disputed domain name: (a) There has been no evidence adduced to show that Respondents are using the disputed domain names in connection with a bona fide offering of goods or services. Respondents have not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the term “iqos” in the disputed domain names and in their business operations. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondents to use the IQOS marks or to apply for or use any domain names incorporating the IQOS marks, and Respondents have, through the use of a confusingly similar domain names and their webpage contents, created a likelihood of confusion with the IQOS marks. (b) There has been no evidence adduced to show that Respondents have been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondents have any registered trademark rights with respect to the disputed domain names. Respondents registered the disputed domain names in 2019 and 2020, after the IQOS marks became internationally known. The disputed domain names are confusingly similar to the IQOS marks. (c) There has been no evidence adduced to show that Respondents are making a legitimate noncommercial or fair use of the disputed domain names. By contrast, the Panel finds that the disputed domain names resolved to websites selling purported IQOS products. It seems that Respondents made profits through the Internet traffic attracted to the websites under the disputed domain names. (See BKS Bank AG v. Jianwei Guo,WIPO Case No. D2017-1041; BASF SE v. Hong Fu Chen, Chen Hong Fu,WIPO Case No. D2017-2203.) The Panel notes that Respondents have not produced any evidence to establish their rights or legitimate interests in the disputed domain names. Accordingly, Complainant has established that Respondents have no rights or legitimate interests in the disputed domain names. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out four circumstances, which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely: (i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or (ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or (iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on the website or location. The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondents have registered and are using the disputed domain names in bad faith. (a) Registration in Bad Faith The Panel finds that Complainant has a widespread reputation in the IQOS marks with regard to its products and services. Complainant is a leading international tobacco company, which has business in approximately 180 countries. As mentioned above, IQOS marks are registered internationally, including in China (since 2016). It is not conceivable that Respondents would not have had actual notice of the IQOS marks at the time of the registration of the disputed domain names (in 2019 and 2020) particularly given that Respondents have claimed they are authorized websites (“Copyright IQOS. Some Rights Reserved”) of Complainant’s IQOS products through the disputed domain names, and are selling purported IQOS products. The Panel therefore finds that the IQOS mark is not one that a trader could legitimately adopt other than for the purpose of creating an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra). Moreover, Respondents have chosen not to respond to Complainant’s allegations. According to the UDRP decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of Respondent to respond to the Complaint further supports an inference of bad faith”. See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787. Thus, the Panel concludes that the disputed domain names were registered in bad faith. (b) Use in Bad Faith Respondents are using the websites resolved by the disputed domain names to sell purported IQOS products. Thus, the Panel concludes that Respondents are currently using the confusingly similar disputed domain names with the intention to attract, for commercial gain, Internet users to Respondents’ websites. Given the reputation of the IQOS marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain names have a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the websites to which the disputed domain names resolve. In other words, Respondents have through the use of a confusingly similar disputed domain names created a likelihood of confusion with the IQOS marks. Moreover, as mentioned above, Respondents are selling purported IQOS products via the websites to which the disputed domain names resolve, presumably for commercial gain. The Panel therefore concludes that the disputed domain names were registered and are being used by Respondents in bad faith. Such use of the disputed domain names are also disruptive in relation to the interests of Complainant. In summary, Respondents, by choosing to register and use the disputed domain names, which are confusingly similar to the IQOS marks, intended to ride on the goodwill of this trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondents, the choice of the disputed domain names and the conducts of Respondents as far as the websites to which the disputed domain names resolve are indicative of registration and use of the disputed domain names in bad faith. The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 7. Decision For all 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 Yijun Tian 1 See “http://iqos588.com/lianxi/” 2 See “iqsell8.com”
Sole Panelist
Dated: August 8, 2021
Full & Egal Universal Law Academy