The Complainant is Philip Morris Products S.A. of Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Domains By Proxy, LLC of United States of America (“United States”) / Yuhsu Lin of China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2019. On April 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2019, 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 April 5, 2019 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 April 9, 2019.
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 proceeding commenced on April 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2019.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on May 17, 2019. 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 A. Complainant
The Complainant is a company incorporated in Switzerland and is part of the group of companies affiliated with Philip Morris International Inc. (“PMI”).
The Complainant is the owner of several registrations in jurisdictions worldwide for the word and device mark IQOS (the “Trade Mark”), including international trade mark registration No. 1218246, with a registration date of July 10, 2014; and Taiwan trade mark registration No. 01921980, with a registration date of June 16, 2018.
PMI has used the Trade Mark since its launch in Japan in 2014 and to date in 43 countries in respect of its products, specifically precisely controlled heating devices into which specially designed tobacco products are inserted and heated to generate a flavourful nicotine-containing aerosol. B. Respondent
The Respondent is apparently an individual resident in Taiwan, province of China. C. The Disputed Domain Name
The disputed domain name was registered on July 24, 2017. D. Use of the Disputed Domain Name
The disputed domain name has been used in respect of a Chinese language website under the prominent banner “IQOS Fans Taiwan” and offering for sale the Complainant’s products under the Trade Mark as well as third party competing products (the “Website”). 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Marks, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name incorporates the entirety of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7) together with the commonly used abbreviation for Taiwan province of China, “tw”.
Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in connection with the Website, in order to offer for sale the Complainant’s products under the Trade Mark, as well as competing third party products.
The Complainant contends that “the Complainant’s IQOS System is not currently sold in Taiwan”.
The Complainant also, fairly, points out that the following disclaimer (the “Disclaimer”) appears at the bottom of the “About Us” page on the Website:
“所有產品和公司名稱均為其各自所有者的商標™或註冊商標。使用它們並不意味著與它們有任何联系或認可。
‘IQOS’, ‘Marlboro’ 和 ‘Heatsticks’ 是PMI（Phillip Morris International Inc.）在美國或其他國家/地區的註冊商標。
我們的商店未獲得PMI（Phillip Morris International Inc.）認可或附屬。”
The Panel is content to rely upon the following informal translation of the Disclaimer submitted with the Complaint:
“All product and company names are trade marks or registered trade marks of their respective owners. The use of them does not imply any association or endorsement with them.
‘IQOS’, ‘Marlboro’ and ‘Heatsticks’ are registered trade marks of PMI (Phillip Morris International Inc.) in the United States and/or other countries.
Our store is not endorsed or affiliated with PMI (Phillip Morris International Inc.).”
The Panel finds that the Respondent is unable to rely upon the Disclaimer to establish rights or legitimate interests under the Policy as:
(i) The Disclaimer does not “accurately and prominently disclose the registrant’s relationship with the trademark holder” (the Complainant); and
(ii) The Respondent is not using the Website to sell only the Complainant’s goods under the Trade Mark,
(see WIPO Overview 3.0, section 2.8.1).
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
In addition, the Panel notes the nature of the disputed domain name, which carries a risk of implied association (see WIPO Overview 3.0, section 2.5.1).
In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
In light of the manner of use of the disputed domain name highlighted in Section B. above, the Panel finds that the requisite element of bad faith has been made out, under paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith. 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.
Sebastian M.W. Hughes
Sole Panelist
Dated: May 31, 2019
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