WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. 沈家峰 (Jeffrey sen), 汇联无限(北京)信息技术有限公司 (hui lian wu xian (bei jing) xin xi ji shu you xian gong si)

Case No. D2021-2413

1. The Parties

The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.

The Respondent is 沈家峰 (Jeffrey sen), 汇联无限(北京)信息技术有限公司 (hui lian wu xian (bei jing) xin xi ji shu you xian gong si), China.

2. The Domain Names and Registrar

The disputed domain names <iqos4.com> and <iqos7.com> are registered with Alibaba Cloud Computing (Beijing) Co., Ltd.

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2021. On July 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 27, 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 July 28, 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 July 28, 2021.

On July 28, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the administrative proceeding. On July 28, 2021, the Complainant confirmed its request that English be the language of the administrative proceeding. The Respondent did not comment on the language of the administrative 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 August 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 25, 2021.

The Center appointed Sok Ling MOI as the sole panelist in this matter on September 3, 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 Background

The Complainant is part of the group of companies affiliated to Philip Morris International Inc., which is one of the world’s leaders in manufacturing and selling tobacco products, including its Marlboro cigarettes launched in 1972. In seeking to transform its business from combustible cigarettes, the Philip Morris Group of Companies developed and launched the IQOS heating device, which allows specially designed tobacco products to be inserted and heated to generate a flavorful nicotine-containing aerosol. The IQOS system also consists of an IQOS pocket charger specially designed to charge the IQOS holder (collectively referred to as the “IQOS products”).

The IQOS products were first launched in Japan in 2014, and are now available for sale in official IQOS stores, official websites and authorized distributors and retailers in more than 60 markets across the world. The IQOS products are however not yet available for sale in China, where the Respondent is purportedly based.

The Complainant has registered the IQOS trade mark in several jurisdictions around the world, including the following:

The disputed domain names <iqos4.com> and <iqos7.com> were registered on December 23, 2020 and February 16, 2021 respectively. According to the evidence submitted by the Complainant, each of the disputed domain names resolved to a website which reproduced the Complainant’s IQOS trade mark, logo, copyrighted products, and marketing images, which purported to offer the IQOS products for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to its trade mark.

The Complainant contends that as the Complainant has not licensed or otherwise authorized the Respondent to use its trade mark, and the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Complainant contends that the disputed domain names have been registered and used to create confusion and mislead Internet users into believing that the Respondent’s websites are in some way connected with or endorsed by the Complainant. The Complainant therefore contends that the Respondent has registered and is using the disputed domain names in bad faith.

For all of the above reasons, the Complainant requests for the transfer of the disputed domain names to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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.

Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.

The language of the Registration Agreements for the disputed domain names is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding. The Respondent did not comment on the issue of the language of the proceeding.

The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain names are registered in Latin characters, rather than Chinese script; and

(b) the websites to which the disputed domain names resolve carry product descriptions and copyright notices in English.

Additionally, the Panel notes that:

(a) the Center has notified the Respondent of the proceeding in both Chinese and English;

(b) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but has chosen not to do so; and

(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese.

Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to all Parties and is not prejudicial to any of the Parties in their ability to articulate the arguments for this case. The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be translated into Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.

In view of all the above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English.

6.2. Substantive Findings

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in IQOS by virtue of its use and registration of the same as a trade mark.

Each of the disputed domain names effectively incorporates the Complainant’s trade mark IQOS in its entirety. The addition of the numeral “4” or “7” does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s trade mark. The addition of the generic Top-Level Domain (“gTLD”) “.com” is a standard registration requirement and is usually disregarded under the confusing similarity test.

Consequently, the Panel finds that both disputed domain names are confusingly similar to the Complainant’s trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie case showing under paragraph 4(a)(ii), the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name. It may do so by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it 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.

See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974.

The Complainant has clearly established that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the IQOS trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain names or that the Respondent has any rights in the term “iqos”.

The Panel notes that the Respondent was using each of the disputed domain names to publish a website that purported to offer the IQOS products for sale. However, there appeared not to be any clear statement or disclaimer on the Respondent’s websites to indicate that they are, in fact, not affiliated with the Complainant. In fact, the website at “www.iqos4.com” claims to be the IQOS official website, and the website at “www.iqos7.com” claims to be the IQOS direct-sale website. Hence, the Respondent would not be able to avail itself of the safe harbour defence established by the Oki Data test (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). As such, the Panel does not find such use to be bona fide offering goods or services, nor a legitimate noncommercial or fair use of the disputed domain names for the purposes of the Policy.

The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain names. Since the Respondent has failed to respond, the prima facie case has not been rebutted. The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain names.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

There is no doubt that the Respondent was aware of the Complainant and its trade mark when it registered the disputed domain names, given that it has purported to offer the IQOS products for sale. The Panel determines that the Respondent’s purpose of registering the disputed domain names was to trade on the reputation of the Complainant and its trade mark by diverting Internet users seeking the Complainant’s IQOS products and services to its own websites for financial gain. Each of the disputed domain names incorporates the Complainant’s IQOS mark in its entirety and thus carries a risk of implied affiliation. The addition of the numeral “4” or “7” may contribute to the confusion as Internet users may mistakenly believe websites at the disputed domain names to be the Complainant’s officially endorsed websites or e-commerce shops offering the IQOS products for sale.

The reproduction of the Complainant’s trade mark, logo, copyrighted products, and marketing images of the IQOS products on the Respondent’s websites without also displaying a clear disclaimer of a lack of relationship between the Respondent and the Complainant is a further indication of bad faith. In fact, based on the evidence submitted by the Complainant, the Panel notes that the said websites provided a Beijing, China address, presumably targeting customers in China, thereby creating the false impression that the Complainant has officially introduced the IQOS system into the Chinese market.

The Panel is satisfied that the Respondent intends to take advantage of the fame of the Complainant’s trade mark to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s websites. As such, the Panel is satisfied that the Respondent is using the disputed domain names in bad faith for financial gain, and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.

Taking into account all the circumstances, it is adequate to conclude that the Respondent has registered and is using the disputed domain names in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 names, <iqos4.com> and <iqos7.com>, be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: October 19, 2021