The Complainant is Philip Morris Products S.A., Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is 黄鳞, China.
2. The Domain Name and RegistrarThe Disputed Domain Name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2021. On November 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 4, 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 November 4, 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 amendment to the Complaint on November 5, 2021.
The Center verified that the Complaint together with the amendment to the 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 November 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2021.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on December 27, 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 is part of an international group of companies affiliated to Philip Morris International Inc., which is an international tobacco company, with products sold in approximately 180 countries, and a large brand portfolio including the globally well-known trademark MARLBORO. The Complainant and its group have developed various products to substitute combustible cigarettes, one of them identified by the trademark IQOS, which was launched in Japan in 2014, and now is sold in 67 markets across the world. The product identified by the mark IQOS is a controlled heating device, collectively referred as “IQOS System”, consisting of a pocket charger specially designed to charge a specific holder, into which specially designed tobacco products (identified by the marks HEETS or HEAT STICKS) are inserted and heated to generate a flavored nicotine-containing aerosol. There are five versions of this heating device currently available: the IQOS 2.4/IQOS 2.4+ pocket charger and holder, IQOS 3 pocket charger and holder, IQOS 3 Multi device, IQOS 3 DUO/DUOS, and IQOS ILUMA.
The Complainant holds a large portfolio of registered trademark rights in the mark IQOS in many jurisdictions, denominative or with a specific graphic representation, including International Registration No. 1218246 for IQOS (word mark), registered on July 10, 2014, in classes 9, 11, and 34; and International Registration No. 1329691 for IQOS (figurative mark), registered on August 10, 2016, in classes 9, 11, and 34, designating, among other jurisdictions, China; (collectively the “IQOS mark”).
Prior UDRP decisions under the Policy have recognized the international well-known character of the IQOS mark. 1
The Disputed Domain Name was registered on July 31, 2021, and it is currently inactive. However, according to evidence filed by the Complainant, it was previously linked to a website, in Chinese language, displaying banners with links to mostly pornographic and gambling content sites, and including a reference to the “Suncity Group”. 2
5. Parties’ Contentions A. ComplainantKey contentions of the Complaint may be summarized as follows:
Through its intensive use and promotion, with over USD 8.1 billion investment, the trademark IQOS has achieved considerable international reputation with approximately 19.1 million relevant consumers. The IQOS System has been almost exclusively distributed through the Complainant’s IQOS stores and websites, as well as selected authorized distributors and retailers.
The Disputed Domain Name is confusingly similar to the IQOS mark. The Disputed Domain Name reproduces the IQOS mark in its entirety adding a letter “i”, which is a misspelling of this trademark, and the applicable generic Top-Level-Domain (“gTLD”) “.com”, which is considered a standard registration requirement and as such is disregarded under the first element confusing similarity test.
The Respondent lacks any rights or legitimate interests in the Disputed Domain Name. The Complainant has not licensed or otherwise permitted the Respondent to use the IQOS mark, and the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The Respondent’s behavior shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the Complainant’s trademark. The website provided under the Disputed Domain Name is showing banners and links mostly forwarding to pornographic content and this site has been promoted on a social media account (via an Instagram account), prominently using both the IQOS mark and the Complainant’s official marketing material without authorization.
The Disputed Domain Name was registered and is being used in bad faith. The Respondent started promoting the website provided under the Disputed Domain Name on a social media account using both the IQOS mark and the Complainant’s official marketing material without authorization immediately after registering the Disputed Domain Name, and the term “iqos” is purely imaginative having no inherent meaning. The Respondent registered and used the Disputed Domain Name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the IQOS trademark, which constitutes registration and use in bad faith under the Policy. The pornographic content on the Respondent’s website, and the practice of typosquatting, and the fact that the Respondent is hiding its identity, constitute factors indicating bad faith.
The Complainant has cited previous decisions under the Policy as well as various sections of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) that it considers supportive of its position, and requests the transfer of the Disputed Domain Name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsThe Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
A. Identical or Confusingly SimilarThe Complainant indisputably has rights in the registered trademark IQOS. The Disputed Domain Name incorporates this trademark in its entirety followed by a letter “i”, which does not avoid a finding of confusing similarity between the Disputed Domain Name and this trademark. The IQOS mark is recognizable in the Disputed Domain Name, and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. See sections 1.7, 1.8, and 1.11.1 of WIPO Overview 3.0.
Accordingly, this Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate InterestsAlthough the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of “proving a negative”, requiring information that is primarily if not exclusively within the respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the Disputed Domain Name, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests. See section 2.1 of WIPO Overview 3.0.
The Complainant’s assertions and evidence outlined above effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the Disputed Domain Name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the Disputed Domain Name in order to rebut the Complainant’s prima facie case.
The Respondent, however, has not replied to the Complainant’s contentions, not providing any explanation or evidence of rights or legitimate interests in the Disputed Domain Name.
A core factor in assessing fair use of the Disputed Domain Name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5 of WIPO Overview 3.0. The Disputed Domain Name incorporates the Complainant’s trademark in its entirety adding a letter “i”, generating a risk of implied affiliation.
The Panel further considers that the Complainant has made out a strong prima facie case that the Respondent could not have rights or legitimate interests in respect of the Disputed Domain Name, not being authorized to use the IQOS mark and not existing any evidence that suggests that the Respondent may be commonly known by the Disputed Domain Name. In this respect, the Panel notes that the term “iqos” is a coined term with no understandable meaning, and the Respondent’s name provided in the Registrar verification email has no resemblance with the Disputed Domain Name.
According to the evidence provided by the Complainant, the Disputed Domain Name has been used to resolve to a website displaying various banners and links to websites of pornographic and gambling contents unrelated to the Complainant or its trademark; especially without a plausible explanation being put forward by the Respondent (which in any event seems difficult to conceive), this presents a risk of tarnishment.
The Panel has further corroborated that, at the time of this decision, the said website has been apparently taken down, and the Disputed Domain Name is apparently inactive.
All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not rebutted the Complainant’s prima facie case, and all this case cumulative facts and circumstances point to consider that the Respondent lacks any rights or legitimate interests in the Disputed Domain Name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
C. Registered and Used in Bad FaithThe Policy, paragraph 4(a)(iii), requires that the Complainant establish that the Disputed Domain Name has been registered and is being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
The Panel notes the continuous and extensive use of the IQOS mark and its presence over the Internet since its launch in 2014, as well as the well-known character of this trademark worldwide recognized by previous decisions under the Policy.3
The Panel further considers that all cumulative circumstances of this case point to bad faith registration and use of the Disputed Domain Name:
(i) the Disputed Domain Name incorporates the IQOS mark in its entirety adding a sole letter “i” at the end of this mark, which constitutes a misspelling of this mark, generating a likelihood of confusion or implied affiliation;
(ii) the Complainant’s trademark is well-known worldwide and the Complainant operates internationally;
(iii) the Respondent used a privacy protection service to hide its identity in the WhoIs record of the Disputed Domain Name;
(iv) the website that was linked to the Disputed Domain Name displayed banners and various links to third parties’ websites of pornographic and gambling contents, as well as references to companies of potentially questionable legality;4
(v) the Respondent has not offered an acceptable explanation of any rights or legitimate interests in the Disputed Domain Name and has not come forward to deny the Complainant’s assertions of bad faith; and
(vi) the website linked to the Disputed Domain Name has been apparently taken down.
It is further to be noted that non-use of the Disputed Domain Name does not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3 of WIPO Overview 3.0.
Therefore, on the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the Disputed Domain Name was very likely registered targeting the IQOS mark with the intention of obtaining a free ride on the established reputation of the Complainant, in order to increase the traffic of the website that was linked to the Disputed Domain Name by misleading Internet users seeking for the Complainant and its products, which constitutes bad faith.
All of the above-mentioned circumstances leads the Panel to conclude that the Disputed Domain Name was registered and is being used in bad faith. Accordingly, the Panel considers that the Complainant has met its burden of establishing that the Respondent registered and is using the Disputed Domain Name in bad faith under the third element 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
Reyes Campello Estebaranz
Sole Panelist
Date: January 10, 2022
1 See, inter alia, Philip Morris Products S.A. v. 杨英子 (yingzi0412),WIPO Case No. D2020-2600; Philip Morris Products S.A. v. Маханьков Михаил Владимирович / Makhankov Mikhail,WIPO Case No. D2020-2793; Philip Morris Products S.A. v. 深圳市云熙智能有限公司 (shen zhen shi yun xi zhi neng you xian gong si),WIPO Case No. D2021-1538; and Philip Morris Products S.A. v. Chenyi Zhao, 瑪爾有限公司,WIPO Case No. D2020-2193.
2 The Panel under its general powers articulated, inter alia, in paragraph 10 of the Rules, has consulted the Suncity Group over the Internet, finding various news about the arrest of its CEO and the closure of its casinos (located in Macau), for being part of an alleged illegal gambling and money laundering scheme.
3 See footnote number 1, supra.
4 See footnote number 2, supra.