The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is 深圳市生而非凡科技有限公司 (shen zhen shi sheng er fei fan ke ji you xian gong si), China.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2021. On December 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 9, 2021, the Registrar transmitted by email to the Center its 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 the Complainant on December 9, 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 9, 2021, the Center transmitted another 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. On December 11, 2021, the Respondent transmitted four identical emails in Chinese to the Center, essentially stating that the Respondent has officially registered the disputed domain names and providing a phone number to contact the Respondent’s technical service department for further questions.
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 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2022. The Respondent did not submit any formal response. On January 10, 2022, the Center notified the Parties that it would proceed to the panel appointment process.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on January 20, 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 to Philip Morris International Inc., which is one of the world’s leading international tobacco companies, with products sold in approximately 180 countries around the world. The Complainant offers both traditional combustible cigarettes and a line of so-called “reduced risk products”, one of which is branded IQOS. The IQOS-system consists of a controlled heating device into which a designated tobacco product, branded either HEETS, HEATSTICKS or TEREA, is inserted and heated to generate a nicotine-containing aerosol. The Complainant states that the IQOS‑system has achieved considerable international success and fame, and that it currently has an estimated amount of 19.1 million regular users worldwide.
The Complainant owns a large portfolio of trademark registrations for IQOS (word and device marks) in a large number of jurisdictions around the world, including in China, where the Respondent is located, for example, Chinese trademark registration 16314286, registered on May 14, 2016, and International trademark registration 1329691, registered on August 10, 2016 and designating, inter alia, China and Viet Nam.
The disputed domain names were all registered on August 5, 2021, and are therefore of a later date than the abovementioned trademarks of the Complainant. The Complainant submits evidence that the disputed domain names directed to webpages used by the Respondent as e-commerce websites for unauthorized sales of IQOS-branded products. However, the Panel notes that on the date of this decision, the disputed domain names direct to inactive webpages.
5. Parties’ Contentions A. ComplainantThe Complainant essentially contends that the disputed domain names are confusingly similar to its trademarks for IQOS, that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered, and are being used in bad faith.
The Complainant claims that its trademarks are famous and well-regarded in the consumer and tobacco industry, and provides printouts of its official website and of its marketing materials. Moreover, the Complainant provides evidence that the disputed domain names were linked to active websites, operating as e-commerce websites, unlawfully using the Complainant’s word marks and logo marks for IQOS in a prominent way on such websites, displaying the Complainant’s product images and videos likely protected by copyright, showing misleading copyright notices and offering unauthorized IQOS products for sale to Internet users. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the disputed domain names and constitutes use in bad faith.
The Complainant requests the transfer of the disputed domain names.
B. RespondentOn December 11, 2021, the Respondent transmitted four identical emails in Chinese to the Center, essentially stating that the Respondent has officially registered the disputed domain names and providing a phone number to contact the Respondent’s technical service department for further questions. The Respondent also added that emails arriving at its email address are not regularly checked. The Respondent did not comment on the language of the procedure and did not reply on the merits of the Complaint.
6. Discussion and Findings 6.1 Preliminary Issue: the Language of the Administrative ProceedingPursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
According to the Registrar’s verification response, the language of the Registration Agreements for the disputed domain names is Chinese. Nevertheless, the Complainant filed its Complaint and its amended Complaint in English, and requests that English be the language of the proceeding. The Panel notes that the Respondent did not comment on the language of the proceeding and did not submit any arguments on the merits of this proceeding.
In considering this request, the Panel has carefully reviewed all elements of this case, and deems the following elements particularly relevant: the Complainant’s request that the language of the proceeding be English; the lack of comment on the language of the proceeding and the lack of response on the merits of this proceeding by the Respondent (the Panel notes that the Respondent was invited by the Center in Chinese and in English and in a timely manner to present its comments and response in either Chinese or English, but chose not to do so); the fact that the disputed domain names each contains the Complainant’s trademark for IQOS in its entirety; the fact that the disputed domain names are written in Latin letters and not in Chinese characters; and, finally, the fact that Chinese as the language of proceedings could lead to unwarranted delays and additional costs for the Complainant. In view of all these elements, the Panel grants the Complainant’s request, and decides that the language of this administrative proceeding shall be English. Nonetheless, the Panel accepts and has considered the Respondent’s communications as submitted, that is, in Chinese.
6.2. Discussion and Findings on the MeritsThe Policy requires the Complainant to prove three elements:
a) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
b) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
c) the disputed domain names have been registered and are being used in bad faith.
Based on the evidence and arguments submitted, the Panel’s findings are as follows:
A. Identical or Confusingly SimilarThe Panel finds that the Complainant has provided sufficient evidence that it has valid rights in the mark IQOS, based on its use and registration of the same as a trademark in various jurisdictions.
Moreover, as to confusing similarity of the disputed domain names with the Complainant’s trademark, the Panel finds that the disputed domain names each consist of the combination of two elements, namely the Complainant’s IQOS trademark, each time either followed or preceded by a prefix or suffix, namely, the prefix “in” for the disputed domain name
Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark. The Panel rules that the Complainant has satisfied the requirements of the first element under the Policy.
B. Rights or Legitimate InterestsOn the basis of the evidence and arguments submitted, the Panel accepts that the Complainant makes out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee, or distributor of the Complainant, is not a bona fide provider of goods or services under the disputed domain names, and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. The Panel also notes that the Respondent is not commonly known by the disputed domain names. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply to the above contentions.
Moreover, upon review of the facts of this case, the Panel notes that the Complainant provides evidence that the disputed domain names directed to webpages which showed a clear intent on the part of the Respondent to obtain unlawful commercial gains from incorporating the Complainant’s IQOS trademark in the disputed domain names, namely to offer IQOS-branded products to Internet users in an unauthorized manner. Furthermore, the Respondent prominently displayed the Complainant’s IQOS logos and word marks, used the Complainant’s own product images and videos presumably protected by copyright, and also placed a misleading copyright notice at the bottom of each home page, thereby misleading consumers into believing that it is licensed by, or affiliated with the Complainant or its IQOS trademarks. However, the Panel notes that on the date of this decision, the disputed domain names direct to inactive webpages. In this regard, the Panel finds that holding a domain name passively, without making any use of it, also does not confer any rights or legitimate interests in the disputed domain names on the Respondent (see earlier UDRP decisions such as Bollore SE v. 赵竹飞 (Zhao Zhu Fei),WIPO Case No. D2020-0691 and Vente-Privee.Com and Vente-Privee.com IP S.à.r.l. v. 崔郡 (jun cui),WIPO Case No. D2021-1685).
Furthermore, the Panel finds that the nature of the disputed domain names, incorporating the Complainant’s trademark for IQOS in its entirety, and prior use, including the use of the Complainant’s trademarks and product images, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests endorsement by the Complainant (see WIPO Overview 3.0, section 2.5).
On the basis of the foregoing elements, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.
C. Registered and Used in Bad FaithGiven the reputation and fame of the Complainant’s prior trademarks, the Panel finds that the registration of the disputed domain names, which incorporate such trademarks in their entirety, clearly and consciously targeted the Complainant’s registered trademarks. The Panel deducts from these efforts to consciously target the Complainant’s trademarks that the Respondent knew, or at least should have known, of the existence of the Complainant’s trademarks. The Panel also considers the disputed domain names to be so closely linked and so obviously connected to the Complainant and its trademarks that the Respondent’s registration of these disputed domain names points toward the Respondent’s bad faith. In the Panel’s view, these elements clearly indicate bad faith on the part of the Respondent, and the Panel therefore finds that it has been demonstrated that the Respondent registered the disputed domain names in bad faith.
As to use of the disputed domain names in bad faith, the Complainant provides evidence that the disputed domain names directed to webpages used by the Respondent as e-commerce websites offering IQOS‑branded products in an unauthorized manner. Such websites clearly displayed the Complainant’s well-known trademark IQOS and the related logos on the home page and throughout the rest of the website, without the authorization of the Complainant, and also prominently used the Complainant’s official product images and videos, combined with elements such as copyright notices which wrongly suggested that the Respondent was affiliated or connected with the Complainant. The Panel concludes that the Respondent intentionally attracted Internet users for commercial gain to the disputed domain names, by creating consumer confusion between the disputed domain names and the Complainant’s trademarks (see paragraph 4(b)(iv) of the Policy). However, on the date of this decision, the disputed domain names link to inactive websites. In this regard, the WIPO Overview 3.0, section 3.3 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding”. The Panel has reviewed all elements of this case, and attributes particular relevance to the contents of the abovementioned websites before they were taken offline, to the fact that the disputed domain names each contain the entirety of the Complainant’s trademark for IQOS, to the high degree of distinctiveness and well-established fame of the Complainant’s trademark for IQOS, and to the unlikelihood of any good faith use to which the disputed domain names may be put by the Respondent. In these circumstances, the Panel considers that the passive holding of the disputed domain names by the Respondent does not prevent a finding of use of the disputed domain names in bad faith. On the basis of the foregoing elements, the Panel finds that it has been demonstrated that the Respondent has used, and is using the disputed domain names in bad faith.
Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third requirement under 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 names,
Deanna Wong Wai Man
Sole Panelist
Date: February 2, 2022