The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Lee Kevin, Taiwan Province of China. 2. The Domain Name and RegistrarWIPO Arbitration and Mediation Center
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2021. 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 July 14, 2021, 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. The Center sent an email communication to the Complainant on July 19, 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 July 20, 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 proceedings commenced on July 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2021. The Center appointed Matthew Kennedy as the sole panelist in this matter on August 23, 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 is a tobacco and smoke-free products company. It markets a controlled heating device under the brand name “IQOS”, into which specially designed tobacco products under the brand names “HEETS” or “HeatSticks” are inserted and heated to generate a flavourful nicotine-containing aerosol. The Complainant holds multiple trademark registrations in multiple jurisdictions, including Taiwan Province of China trademark registrations numbers: - 1718976 for IQOS, registered from July 16, 2015, specifying goods in classes 9 and 34, including electronically-controlled tobacco products heating devices; - 1921980 for IQOS, registered from June 16, 2018, specifying goods in classes 14, 18, 25, and 35; - 1927293 for IQOS in a stylized script (the “IQOS logo”), registered from July 16, 2018, specifying services in class 35; - 2003604 for the IQOS logo, registered from August 1, 2019, specifying goods and services in classes 9 and 34; and - 1833719 for HEETS in a stylized script (the “HEETS logo”), registered from April 1, 2017, specifying goods and services in classes 9, 11, and 34. The Complainant does not currently offer its IQOS products for sale in Taiwan Province of China. The Respondent is an individual resident in Taiwan Province of China. The disputed domain name was registered on January 6, 2021. It formerly resolved to a website in traditional Chinese script offering for sale the Complainant’s products. The website title was “IQOƧ SHOP”, written in the same stylized script as the Complainant’s IQOS logo, but inverting the “S”. The subtitle was the Line ID “IQOSfans”. The site displayed images of the Complainant’s HEETS and IQOS products in Japanese packaging along with the HEETS logo and the IQOS logo. The operator of the site was not identified; customers could get in touch by scanning a QR code displayed on the site. At the time of this Decision, the disputed domain name no longer resolves to an active website; rather, it is passively held. The Registrar confirmed that the Registration Agreement is in English. 5. Parties’ Contentions A. Complainant The disputed domain name is highly similar and phonetically almost identical to the Complainant’s IQOS mark. 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 (or a domain name which will be associated with this trademark). The Respondent is not an authorized distributor or reseller of the IQOS system. The website gives the false impression of a commercial relationship between itself and the Complainant. The disputed domain name was registered and is being used in bad faith. The Respondent registered and used 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 location or of a product or service on its website or location. The Respondent’s purported recent involvement in the bad faith registration and use of the domain name The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that the 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 provided, the Panel finds that the Complainant has rights in the IQOS mark. The disputed domain name incorporates the first three letters of the IQOS mark, omitting only the final “s” and adds the word “fans”. On a side-by-side comparison, these differences do not prevent a finding of confusing similarity between the disputed domain name and the IQOS trademark for the purposes of the first element of the Policy. Further, the Panel takes note that the website to which the disputed domain name formerly resolved displayed the Complainant’s IQOS mark, its IQOS logo, and offered for sale the Complainant’s IQOS products. The website subtitle was the Line ID “IQOSfans”, which is the same as the disputed domain name but adds the missing “s” from the IQOS mark. All of this confirms that the Respondent was seeking to target the IQOS trademark through the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.15. The disputed domain name also includes a generic Top-Level Domain (“gTLD”) “.com”, which is a technical requirement of domain name registration. A gTLD suffix is normally disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy. 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 set out above, the disputed domain name formerly resolved to an online store offering for sale what were purported to be the Complainant’s IQOS and HEETS products. The website displayed the Complainant’s IQOS and HEETS logos and product images. The operator of the site was not identified. Regardless of whether the products were genuine or counterfeit, the website gave the impression that it was affiliated with, or endorsed by, the Complainant. The Complainant submits that the Respondent is not an authorized distributor or reseller of the IQOS system. The website displayed no disclaimer of any relationship with the Complainant. At the time of this Decision, the disputed domain name is passively held. In view of these circumstances, the Panel does not consider either of the Respondent’s uses of the disputed domain name to be in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy. As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “Lee Kevin”, not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by paragraph 4(c)(ii) of the Policy. As regards the third circumstance, the disputed domain name formerly resolved to a website offering goods for sale. It is currently passively held. Neither is a legitimate noncommercial or fair use of the disputed domain name within the circumstances of paragraph 4(c)(iii) 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 prima facie case because he did not respond to the Complaint. 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 shall be evidence of the registration and use of a domain name in bad faith. The fourth of these 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] web site or location or of a product or service on [the respondent’s] website or location. With respect to registration, the disputed domain name was registered in 2020, after the registration of the Complainant’s IQOS trademark, including in Taiwan Province of China where the Respondent is resident. The disputed domain name formerly resolved to a website offering for sale the Complainant’s IQOS products and displaying the Complainant’s IQOS logo. This gives the Panel reason to infer that the Respondent was aware of the Complainant at the time when he registered the disputed domain name and targeted the Complainant’s IQOS trademark when he registered the disputed domain name. With respect to use, the Respondent formerly used the disputed domain name in connection with a website that gave the false impression that it was affiliated with, or endorsed by, the Complainant. In view of these circumstances and the findings in Section 6.B above, the Panel finds that the Respondent is using the disputed domain name intentionally to attract, for commercial gain, Internet users to his website 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 of a product on the Respondent’s website, within the terms of paragraph 4(b)(iv) of the Policy. The Panel notes that the use of the disputed domain name has recently changed and that it no longer resolves to an active website. This change in use does not alter the Panel’s conclusion; rather, it may be a further indication of bad faith. 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: September 6, 2021
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