WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Shen Zhen Shi Yang Cheng Biao Shi She Ji You Xian Gong Si
Case No. D2018-0683
1. The Parties
The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Shen Zhen Shi Yang Cheng Biao Shi She Ji You Xian Gong Si of Shenzhen, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <iqos-vip.com> is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2018. On March 27, 2018, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the disputed domain name. On March 28, 2018, the Registrar transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On April 5, 2018, the Center sent an e-mail in English and Chinese to the Parties regarding the language of the proceeding. The Complaint requested that English be the language of the proceeding on April 8, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the 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 April 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2018.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on May 15, 2018. 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 a subsidiary of Philip Morris International Inc., one of the world’s leading tobacco companies. The Complainant offers both traditional combustible cigarettes and a line of “reduced risk products”, one of which is branded IQOS. IQOS is a controlled heating device into which a special tobacco product is inserted and heated to generate a nicotine-containing aerosol. IQOS is currently sold in around 38 countries across the world, and is exclusively distributed through the Complainant’s official stores and websites.
The Complainant owns a number of trademark registrations (word and device marks) for IQOS in various jurisdictions, including in China. See, e.g., International Registration No. 1329691, IQOS, registered on August 10, 2016, and designating inter alia China. The disputed domain name was registered on January 23, 2018. The disputed domain name resolves to an alleged online-shop offering the Complainant’s IQOS and HEETS branded products as well as competing products of other commercial origin.
5. Parties’ Contentions
The Complainant essentially contends that the disputed domain name is identical or confusingly similar to its prior trademarks for IQOS, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
The Complainant claims that its trademarks are famous and well-regarded in the tobacco industry, and provides evidence of marketing materials used on the Internet. The Complainant also provides a prior UDRP decision by which a domain name registration for <iqos.red> was transferred to the Complainant, essentially on the basis of the Complainant’s IQOS trademarks (the Complainant claims that the respondent in this earlier decision was the same as the Respondent in this case. However, the Panel notes that the respondent in the prior decision was a company incorporated in Shanghai while the Respondent in the present case is a company incorporated in Shenzhen, with a different company name). See Philip Morris Products S.A. v. 上海揽檀实业有限公司 (Shang Hai Lan Tan Shi Ye You Xian Gong Si), WIPO Case No. D2017-2419.
The Complainant also provides evidence that the disputed domain name is linked to an active website, selling competing products using the Complainant’s trademarks, without any reference to a license, distribution agreement or other permission from the Complainant. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the domain name and constitutes registration and use in bad faith.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Issue: Language of proceedings
Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceedings shall be the language of the Registration Agreement, subject to the authority to determine otherwise, taking into account the circumstances of the administrative proceeding. The Registrar has confirmed that the Registration Agreement is in Chinese.
In view of all elements of this case, being, in particular, the Complainant’s request that the proceedings be held in English; the lack of response by the Respondent to both the notifications regarding the language of the proceedings and on the merits of the procedure (such that there will be no prejudice to the Respondent, who having been notified of these proceedings in both languages had the opportunity to put forward arguments in either English or Chinese); and the fact that Chinese as the language of proceedings could lead to unwarranted delay and costs for the Complainant; the Panel rules that the language of proceedings shall be English.
6.2. Discussion and Findings
The Policy requires the Complainant to prove three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
Based on the evidence submitted, the Panel’s findings are as follows:
A. Identical or Confusingly Similar
The Panel finds that the Complainant has shown that it has valid rights in the trademark IQOS based on its use and registration.
Moreover, the disputed domain name is confusingly similar to the Complainant’s trademark IQOS, incorporating it in its entirety, as a clearly dominant feature. The addition “-vip” does not differentiate it from the Complainant’s trademark. Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s trademark and the first element required by the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not issued any license, distribution agreement or other permission for the Respondent to register the disputed domain name incorporating the Complainant’s trademark. The Panel notes that the Respondent is not an authorized reseller or distributor, and is not making a legitimate noncommercial use or fair use of the Complainant’s trademarks. Rather, the disputed domain name resolves to a website purporting to offer the Complainant’s products for sale alongside others that directly compete with those of the Complainant. Such use does not amount to a bona fide offering of goods or services for the purposes of the Policy, nor does it confer rights or legitimate interests on the Respondent, see section 2.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition. The Panel notes that no evidence or arguments have been submitted by the Respondent in reply. The Panel therefore rules that the Complainant has satisfied the requirements of the second element under the Policy.
C. Registered and Used in Bad Faith
Given the reputation and fame of the Complainant’s trademark, the registration of the disputed domain name, which incorporates such trademark in its entirety, is clearly intended to mislead and attract consumers to the disputed domain name. The use to which the disputed domain name has been put clearly indicates that the Respondent sought to take advantage of the goodwill associated with the Complainant’s trademark when registering the disputed domain name. In the Panel’s view, this indicates the bad faith of the Respondent, and the Panel therefore rules that the Respondent registered the disputed domain name in bad faith.
As to use of the disputed domain name in bad faith, the website linked to the disputed domain name is currently used as an advertisement and sales platform for products identical to, and competing with the Complainant’s products, and is even using some of the Complainant’s marketing materials as well as photos of some of the Complainant’s official stores. This misleadingly induces consumers to believe that the disputed domain name leads to one of the Complainant’s official or authorized websites. Given the distinctiveness and reputation of the Complainant’s trademark, the use of the disputed domain name is clearly intended to attract consumers to the disputed domain name, where unauthorized products are advertised and offered for sale by creating a likelihood of confusion with the Complainant’s IQOS trademark. In fact, the addition of the term “-vip” is even likely to increase the likelihood of confusion and may induce Internet users to believe that there is an association between the domain name and the Complainant, as it suggests that the disputed domain name leads to the a luxury or exclusive online marketplace for goods and services marketed by the Complainant. The Panel therefore rules that the Respondent is using the disputed domain name 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 element under the Policy.
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 <iqos-vip.com> be transferred to the Complainant.
Deanna Wong Wai Man
Date: May 22, 2018