ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Philip Morris Products S.A. v. Wong Frank Case No. D2025-3776 1. The Parties The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa. The Respondent is Wong Frank, Taiwan Province of China. 2. The Domain Name and Registrar The disputed domain name is registered with Internet Domain Service BS Corp (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2025. On September 17, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 22, 2025, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 23, 2025, 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 September 23, 2025. 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 September 25, 2025. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2025.
page 2 The Center appointed Uwa Ohiku as the sole panelist in this matter on October 27, 2025. 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 According to undisputed facts, the Complainant, Philip Morris Products S.A., is part of the group of companies affiliated with Philip Morris International, Inc., referred to as PMI, one of the world’s leading manufacturers of tobacco and smoke-free products sold in approximately 180 countries. The Complainant is, according to the information provided and/or publicly available, “working to deliver a smoke-free future”, with a vision to “[phase] out cigarettes completely”, and developed as part of its innovation - the IQOS system. IQOS is a controlled heating device which generates a flavorful nicotine-containing aerosol in which specially designed tobacco sticks are inserted and heated. The Complainant has exclusive rights in the following IQOS marks among several others globally: - Chinese Trademark Registration No. 16314286 for IQOS, registered on May 14, 2016; - Chinese Trademark Registration No. 49264074 for IQOS, registered on May 7, 2021; - Taiwan Province of China Trademark Registration No. 01927293 for IQOS Logo, registered on July 16, 2018; and - International Trademark Registration No. 1218246 for IQOS, registered on July 10, 2014. The Respondent is Wong Frank, an individual located in Taiwan Province of China, according to the available record. At the time of filing of the Complaint, the Respondent’s identity was redacted for privacy, but was subsequently disclosed by the Registrar. The disputed domain name was created on July 29, 2025. According to the evidence provided, the disputed domain name, at the time of filing of the Complaint, resolved to an online shop which prominently displayed the Complainant’s IQOS logo and trademark and allegedly offered for sale the Complainant’s IQOS System, as well as competing third party products and accessories of other commercial origin. The website is currently inactive, with the following message: “Sorry, you have been blocked; you are unable to access buyiqosshop.com.” 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name, and requests that the disputed domain name be transferred to it. In support of its contentions in this Complaint, the Complainant provides copious information and documentary evidence by way of several annexures and references to previous UDRP panel decisions. The Complainant asserts that the IQOS system, first launched in 2014, has achieved considerable international success and reputation with over 33 million relevant users and available in around 84 markets and that it is distributed almost exclusively through PMI’s official IQOS stores and websites and selected authorized distributors and retailers.
page 3 Identical or Confusingly Similar The Complainant asserts that the term IQOS is purely imaginative and unique to the Complainant and is not commonly used to refer to tobacco products or electronic devices. The disputed domain name is confusingly similar to the Complainant’s IQOS trademarks because it identically adopts the Complainant’s IQOS trademarks, regardless of the other generic and non-distinctive terms – “buy”, “shop” – in the disputed domain name and the applicable Top-Level Domain (“TLD”) which is disregarded under the first element of confusing similarity. WIPO Overview of Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11. No Rights or Legitimate Interests Among several other contentions: The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating or associated with its IQOS trademarks and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent is not an authorized distributor or reseller of the IQOS system and the website under the disputed domain name offers for sale, competing tobacco products and/or accessories of other commercial origin, which does not meet the requirements set out by numerous panel decisions, for a bona fide offering of goods, as established in Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903 (the “Oki Data case”). The use of a domain name cannot be “fair” if it suggests an affiliation or relationship with a trademark owner when none exists (AB Electrolux v. Handi Sofian, Service Electrolux Lampung, WIPO Case No. D2016-2416) and the Respondent’s behavior shows a clear intent to obtain an unfair commercial gain with a view to misleadingly divert consumers or to tarnish the trademarks owned by the Complainant. Registered and Used in Bad Faith Among several other contentions: The Respondent has registered and used the disputed domain name with the intention to attract 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, and all of this taken together constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The Respondent’s use of the disputed domain name on the website – display of the Complainant’s official product images, use of the Complainant’s IQOS trademark in the title of the website, and the copyright notice claiming copyright for the website and its contents - clearly shows that the Respondent knew of the Complainant’s IQOS trademarks when it registered the disputed domain name and intended to invoke a misleading association or affiliation with the Complainant as a result. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable”.
page 4 The Respondent did not file a Response, but this does not automatically mean that the Complainant has established the three elements for a transfer of the disputed domain name. The Panel will review the evidence provided in the Complaint to verify that all three elements are indeed met. WIPO Overview 3.0, section 4.3. Under paragraph 5(f) of the Rules, if a respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. The Panel has authority to decide the dispute, and to consider all relevant, annexed materials and allegations, and carry out limited independent research under the general powers of the Panel, amongst others, specified in paragraph 10 of the Rules. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is both reproduced and recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the Complainant’s mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The addition of other terms, here “buy” and “shop”, does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record – the Complainant’s unrebutted assertions, the preponderance of evidence submitted in support of the Complaint and the failure of the Respondent to come forward with relevant evidence demonstrating any rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and upholds the Complainant’s reliance on the principles in the Oki Data case, that the use of a complainant’s trademark in a domain name by a reseller can only be deemed a “bona fide offering of goods or services” within the meaning of the Policy, in the following circumstances: (i) the respondent must actually be offering the goods or services at issue, (ii) the respondent must use the site to sell only the trademarked goods or services, (iii) the site itself must accurately and prominently disclose the respondent’s relationship with the trademark owner, and (iv) the Respondent must not try to “corner the market” in domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name. In this case, the website at the disputed domain name purportedly offered for sale third party products as well and does not accurately and prominently display any disclaimer regarding the Respondent’s relationship with the Complainant, failing the second and third requirements outlined in the Oki Data case.
page 5 The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. In the present case, the Panel upholds the Complainant’s contention that the Respondent has registered and used the disputed domain name with the intention to attract users to the website, for commercial gain, 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, which taken together, constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel finds that the Complainant has established the third element 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 be transferred to the Complainant. /Uwa Ohiku/ Uwa Ohiku Sole Panelist Date: November 10, 2025
Full & Egal Universal Law Academy