The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is 和军 (he jun), China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2021. On December 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 8, 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 December 10, 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 in English on December 10, 2021.
On December 10, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On December 10, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent 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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on December 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2022.
The Center appointed Rachel Tan as the sole panelist in this matter on January 17, 2022. 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 the group of companies affiliated with Philip Morris International Inc. (“PMI”). PMI is an international tobacco company with products sold in approximately 180 countries. PMI developed a tobacco heating system called IQOS. It is a controlled heating device into which specially designed tobacco sticks under the brand names “Heets”, “HeatSticks”, and “Terea” are inserted and heated to generate a flavourful nicotine-containing aerosol (the “IQOS System”). The IQOS System was first launched in Japan in 2014 and is available in around 66 markets across the world.
The Complainant is the owner of trade marks incorporating the “iqos”, “heets”, “”, “”, and “This changes everything” elements in multiple jurisdictions, including:
- China Registration No. 16314286 for IQOS, registered on May 14, 2016 in class 34;
- International Registration No. 1218246 for IQOS, registered on July 10, 2014, in classes 9, 11, and 34;
- International Registration No. 1338099 for , registered on November 22, 2016, in class 35;
- International Registration No. 1329691 for , registered on August 10, 2016, designating, inter alia, China, in classes 9, 11, and 34;
- International Registration No. 1328679 for , registered on July 20, 2016, designating, inter alia, China, in classes 9, 11, and 34;
- International Registration No. 1331054 for , registered on October 11, 2016, in classes 9 and 34;
- International Registration No. 1332896 for , registered on June 28, 2016, designating, inter alia, China, in classes 9, 11, and 34;
- International Registration No. 1343294 for THIS CHANGES EVERYTHING, registered on December 12, 2016, designating, inter alia, China, in class 34.
The Respondent is 和军 (he jun), China.
The disputed domain name was registered on October 31, 2021 and inaccessible at the date of this Decision. At the time of filing of the Complaint, the disputed domain name resolved to a website in Chinese which appeared to offer different versions of the IQOS System for sale as well as repair and maintenance services for the IQOS System. The resolved website displayed the Complainant’s IQOS, , , and the Chinese translation “这，改变了一切” of THIS CHANGES EVERYTHING marks. Further, the resolved website appeared to display images of the Complainant’s products together with a notice claiming copyright in the material presented on the resolved website.
5. Parties’ Contentions A. ComplainantThe Complainant contends that it is the registered owner of the IQOS mark in numerous jurisdictions, including China. The disputed domain name is confusingly similar to its IQOS mark. The disputed domain name reproduces the IQOS mark in its entirety with the addition of the numerical suffix “06”. Any Internet user when visiting a website provided under the disputed domain name will reasonably expect to find a website commercially linked to the owner of the IQOS mark.
The Complainant further alleges that it has made a prima facie case that the Respondent lacks any rights or legitimate interests in the disputed domain name. The Respondent is not licensed or otherwise permitted to use any of the Complainant’s marks or to register a domain name incorporating its IQOS mark. The Respondent is not making a bona fide offering of goods or services as a reseller, distributor, or repair services operator because the disputed domain name itself suggests at least an affiliation with the Complainant and its IQOS mark. Further, the Respondent is using the Complainant’s registered marks and official product images without authorization and falsely claiming copyright in these materials. The Respondent’s use of the disputed domain name cannot be considered a bona fide offering of goods or services and does not establish a legitimate interest on behalf of the Respondent.
The Complainant finally asserts that the Respondent knew of the Complainant’s IQOS mark when registering the disputed domain name. 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 mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. By using the Complainant’s registered marks and official product images together with a copyright notice claiming copyright for the contents, the Respondent is clearly suggesting to any Internet users visiting the resolved website that the Complainant or an affiliated dealer, and authorised repair services operator of the Complainant is the source of the resolved website.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1 Language of the ProceedingInitially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.
In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement as used by the registrant for the disputed domain name is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding for the reasons summarized below:
(a) the disputed domain name is in Latin script, which indicates that the website provided under the disputed domain name is directed to, at the very least, an English-speaking public;
(b) the fact that the website under the disputed domain name also includes several English words and/or phrases, suggesting the Respondent understands English;
(c) the Complainant being a Swiss entity has no knowledge of Chinese;
(d) the Respondent is capable of communicating in English; and
(e) English is a common language in global business.
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 order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below:
(a) the Complainant is a company based in Switzerland. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;
(b) English is not the native language of either Party;
(c) even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request;
(d) the Respondent has failed to participate in the proceeding even though the Center sent the notification of the Complaint in English and Chinese, and has been notified of its default; and
(e) the Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.
Accordingly, the Panel will proceed with issuing this Decision in English.
6.2 Substantive Issues A. Identical or Confusingly SimilarThe Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the IQOS mark.
The Panel notes that the IQOS mark is wholly encompassed within the disputed domain name. The IQOS mark is instantly recognizable as the most distinctive element of the disputed domain name. In cases where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is accepted by previous UDRP panels that the addition to the complainant’s trade mark of other words or terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity between the domain name and the registered trade mark under the first element of the Policy. As such, the Panel finds the additional numbers “06” do not preclude a finding of confusing similarity between the IQOS mark and the disputed domain name. See section 1.8 of the WIPO Overview 3.0.
Lastly, it is permissible for the Panel to disregard the generic Top-Level Domain (“gTLD”) in the disputed domain name, in this case “.com”. See section 1.11.1 of the WIPO Overview 3.0.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsIn circumstances where the Complainant possesses exclusive rights to the IQOS mark, whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name. See section 2.1 of the WIPO Overview 3.0.
The Respondent has not provided evidence of a legitimate noncommercial or fair use of the disputed domain name or reasons to justify the choice of the term “iqos”. There is no indication to show that the Respondent is commonly known by the disputed domain name or otherwise has rights or legitimate interests in it. In addition, the Complainant has not granted the Respondent a license or authorization to use the Complainant’s IQOS mark or register the disputed domain name.
The Panel notes that the disputed domain name previously resolved to a website in Chinese which allegedly offered the IQOS System for sale, and repair and maintenance services for the IQOS System. The website displayed the Complainant’s IQOS, , , and the Chinese translation of THIS CHANGES EVERYTHING marks together with images of the Complainant’s products. The website did not accurately and prominently disclose a lack of a commercial relationship between the Complainant and the Respondent. Therefore, the facts do not support a claim of a bona fide offering of goods or services under the “Oki Data test”. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Moreover, the disputed domain name carries a risk of implied affiliation with the Complainant. See section 2.5.1 of the WIPO Overview 3.0.
None of the circumstances in paragraph 4(c) of the Policy are present in this case. For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithThe Complainant’s IQOS mark was registered well before the registration of the disputed domain name. Through use and advertising, the Complainant’s IQOS mark is well-known throughout the world, including China. Moreover, “iqos” is not merely a term. Search results using the term “iqos” on the Internet search engines direct Internet users to the Complainant and its products, which indicates that an exclusive connection between the IQOS mark and the Complainant has been established. As such, the Respondent either knew or should have known of the Complainant’s IQOS mark when registering the disputed domain name or have exercised “the kind of willful blindness that numerous panels have held support a finding of bad faith”. See eBay Inc. v. Renbu Bai,WIPO Case No. D2014-1693; Barclays Bank PLC v. Andrew Barnes,WIPO Case No. D2011-0874.
The Panel notes that the disputed domain name previously resolved to a website allegedly offering for sale the Complainant’s IQOS System as well as repair and maintenance services for the IQOS System, and on which the Complainant’s IQOS and marks prominently appear. The Complainant’s mark was also used within the tab interface of the resolved website. Further, the resolved webiste allegedly used the Complainant’s product images without authorization. The lack of a disclaimer that the Respondent is not affiliated with the Complainant is noticeably absent. Conversely, the content on the website leads Internet users to think that the online store is authorized by the Complainant.
The Panel is satisfied that the Respondent intends to take advantage of the reputation of the Complainant’s trade mark to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to source, affiliation, or endorsement of its website. This demonstrates bad faith registration and use of the disputed domain name, as provided in paragraph 4(b)(iv) of the Policy.
Given all the circumstances of the case, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, considering the Respondent’s lack of rights or legitimate interests, and by registering and using the disputed domain name as discussed above, the Panel is led to conclude that the disputed domain name was registered and is being used in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the third element under paragraph 4(a) 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,
Rachel Tan
Sole Panelist
Date: January 31, 2022