The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Whois Agent, Domain Protection Services, Inc., United States of America / jise cai, United States of America.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2021. On October 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 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 October 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 October 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 October 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2021. The Respondent sent an informal communication to the Center on October 22, 2021. The Respondent did not submit a formal Response. Accordingly, on November 18, 2021, the Center informed the Parties that it would proceed with the panel appointment process.
The Center appointed George R. F. Souter as the sole panelist in this matter on December 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 BackgroundThe Complainant, Philip Morris Products S.A., is a company which 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.
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 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 a 20% share of the market in Japan. Today the IQOS System is available in key cities in around 66 markets across the world. As a result of an investment of over USD 8.1 billion and extensive international sales (in accordance with local laws), the IQOS System has achieved considerable international success and reputation, and approximately 19.1 million relevant consumers using 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.
For its new innovative smoke-free products, the Complainant owns a large portfolio of trademark registrations internationally, details of which have been supplied to the Panel. These include Chinese registration No. 16314286, registered on May 14, 2016, in respect of the trademark IQOS (word), Chinese registration No. 16314287, registered on May 14, 2016 in respect of the trademark IQOS (device), Taiwan Province of China registration No 1718976, registered on July 16, 2015, in respect of the trademark IQOS (word), and Taiwan Province of China registration No. 02003604, registered on August 1, 2019, in respect of the trademark IQOS (device), and International registration No. 1218246, registered on July 10, 2014, in respect of the trademark IQOS (word).
The disputed domain name was registered on July 13, 2020, and is currently in use in connection with an online shop website in the Chinese language offering products for sale in direct competition with the goods traded in by the Complainant.
5. Parties’ Contentions A. ComplainantThe Complainant alleges that the disputed domain name is confusingly similar to its IQOS trademark, containing its IQOS trademark in its entirety, with the mere addition of the word “smoke”.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that so far as the Complainant is aware, the Respondent is not generally known by the disputed domain name, and the Complainant has never granted the Respondent permission to use its IQOS trademark in connection with registration of a domain name, or otherwise.
The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith in connection with the Chinese language website referred to above.
B. RespondentThe Respondent did not substantively reply to the Complainant’s contentions. The Respondent’s email communication of October 22, 2021, merely sought instruction on what action to take in reply to the Complaint, without commenting on the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(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.
It is well established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top-Level Domain (“gTLD”) may generally be disregarded when comparing a trademark with a disputed domain name. Accordingly, the Panel considers the gTLD “.com” to be irrelevant in the circumstances of the present case, and so finds it may be disregarded here.
The Complainant’s IQOS trademark is clearly recognizable in the disputed domain name, rendering the disputed domain name confusingly similar to the IQOS mark, and the added word “smoke” does not prevent a finding of confusing similarity, and the Panel so finds.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in connection with the disputed domain name at issue.
B. Rights or Legitimate InterestsIt is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and although the Respondent was active in the present proceeding, the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Furthermore, the nature of the disputed domain name, incorporating the Complainant’s well-known IQOS trademark and an added term descriptive of the Complainant’s goods, carries a risk of implied affiliation. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy, in connection with the disputed domain name.
C. Registered and Used in Bad FaithThe Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The circumstance of the present case, in which the Panel regards it as self-evident from the evidence supplied, that the Complainant’s IQOS trademark was deliberately appropriated in the disputed domain name, are such that the Panel concludes that a finding of registration in bad faith is justified, in connection with the disputed domain name and so finds.
It is well-established in prior decisions under the Policy that the use of a disputed domain name in connection with a website offering goods in competition with those of the Complainant constitutes use of a disputed domain name in bad faith. Here, the Respondent seems to be deliberately, in a Chinese language website, seeking to entice customers in Taiwan Province of China to buy products competing with those of the Complainant. Furthermore, the Respondent is prominently making use of the Complainant’s IQOS mark on its website, without authorization and in a way that falsely suggests an affiliation with the Complainant, and appears to be offering for sale the Complainant’s IQOS products in Taiwan, where the Complainant does not currently offer such goods for sale, in addition to the competing third party products. The Respondent has not denied the Complainant’s claims. Accordingly, the Panel has no hesitation in finding that the disputed domain name is being used in bad faith, and so finds.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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,
George R. F. Souter
Sole Panelist
Date: December 16, 2021