WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Whois Agent, Doman Protection Services, Inc. / P. Poon, Enc Electronics
Case No. D2018-0823
1. The Parties
Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
Respondents are Whois Agent, Doman Protection Services, Inc. of Denver, Colorado, United States of America ("United States") / P. Poon, Enc Electronics Bldg of Hong Kong, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <iqosfun.com> is registered with Name.com, Inc. (Name.com LLC) (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 12, 2018. On April 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2018, 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 Complainant on April 13, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 13, 2018.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on April 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2018. The Response was filed with the Center on May 9, 2018.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on May 18, 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
Complainant Philip Morris Products S.A. is a company which is part of the group of companies affiliated with Philip Morris International Inc. (collectively referred to here as "Complainant"). Complainant sells its tobacco products in approximately 180 countries. Complainant offers so-called "Reduced Risk Products," including precisely controlled heating devices into which consumers insert specially designed tobacco products to generate a nicotine-containing aerosol. Complainant sells these heating devices under the IQOS brand, which was first introduced in Nagoya, Japan in 2014. IQOS-branded products are currently available in cities in approximately 38 markets globally. To date, the IQOS products have exclusively been distributed through Complainant's official stores and websites, including through Complainant's primary website located at <pmi.com>. Complainant is the owner of the IQOS trademarks worldwide, as reflected in numerous registrations (collectively, the "IQOS Mark"), including in China (Registration No. 16314286, registered on May 14, 2016) and Hong Kong (Registration No. 302983609, registered on May 2, 2014).
The disputed domain name was registered on December 30, 2017, and has been used in connection with a website advertising IQOS-branded products, as well as competing products, and linking Internet users to a Facebook web page hosting an online shop, and identifying an apparent brick-and-mortar shop in Hong Kong, selling IQOS-branded products and competing products.
Respondent is not authorized to use the IQOS Mark.
5. Parties' Contentions
Complainant asserts that it owns valid and enforceable trademark and service mark rights in the IQOS Mark for use in connection with precisely controlled heating devices for nicotine-containing aerosol tobacco inserts, and that Complainant acquired these rights prior to the date on which Respondent registered the disputed domain name.
Complainant contends that the disputed domain name is confusingly similar to Complainant's IQOS Mark. According to Complainant, the only difference between the IQOS Mark and the disputed domain name is the addition of the generic term "fun". According to Complainant, it is well established that the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP.
Complainant asserts that Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register the disputed domain name incorporating Complainant's IQOS Mark. Respondent is not 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 trademarks of Complainant. Firstly, Respondent is not an authorized reseller of the IQOS products. Secondly, the website provided under the disputed domain name does not meet the requirements set-out by numerous UDRP panel decisions for a bona fide offering of goods. In the present case, Respondent is not only promoting Complainant's products but also competing products of other commercial origin. This in itself prevents the finding of a bona fide offering of goods on behalf of Respondent. Further, the use of a domain name cannot be "fair" if it suggests affiliation with the trademark owner. As the IQOS products are mainly distributed through official stores, users are clearly mislead regarding the relationship between the website and Complainant. The illegitimacy of Respondent's use of the disputed domain name is further shown by the fact that Complainant does not currently offer for sale its IQOS branded products in the territory of Hong Kong, and the shop provided under the disputed domain name, creates the false impression that Complainant has launched these products in the territory of Hong Kong. Such use of the disputed domain name cannot be considered a bona fide offering of goods and does not establish a legitimate interest on behalf of Respondent. Therefore, Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interests in the disputed domain name.
Complainant contends that it is evident from Respondent's use of the disputed domain name that Respondent knew of Complainant's IQOS trademarks when registering the disputed domain name. Respondent started offering Complainant's IQOS products immediately after registering the disputed domain name. Furthermore, the term "iqos" is a purely imaginative term and has no inherent meaning. Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with Complainant's 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, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. By reproducing Complainant's trademark in the disputed domain name and at the top of the website located at the disputed domain name, as well as using Complainant's marketing material on the website, Respondent's website clearly suggests that the website under the disputed domain name belongs to the Complainant or is an official affiliated dealer endorsed by Complainant. The fact that the website does not provide any information on the true identity of the website provider clearly shows that Respondent intentionally creates the impression that the products offered on Respondent's website are provided by Complainant or at least an official dealer to mislead users on the source of the website and thereby attract, for commercial gain, Internet users to the website. Furthermore, Respondent is not only using Complainant's IQOS trademark for promoting Complainant's IQOS branded goods but also competing products of other commercial origin. Such abusive use of Complainant's trademark for promoting competing products is a clear-cut trademark infringement and clear evidence of Respondent's bad faith.
Complainant contends that Respondent's use of a privacy protection service to hide its true identity may also constitute a factor indicating bad faith.
In a supplemental filing after Respondent filed a formal Response (discussed below), Complainant also contends that after being notified of the Complaint, Respondent modified the website provided under the disputed domain name. In particular, the headline of the website was changed from "IQOS Hong Kong" to "IQOSFunSharing" and the commercial Facebook site formerly linked to the website is no longer available. Complainant asserts that Respondent made these amendments in reaction to the Complaint filed by Complainant to hide its bad faith relating to the registration and use of the disputed domain name and to establish a basis for its defense. According to Complainant, the original design of the website and the fact that Respondent is trying to deceive the Center by suggesting that the current design of the website is the original design, clearly shows that firstly the disputed domain name is not a mere fan site but has a commercial background and secondly Respondent is well aware of its bad faith use of the disputed domain name, which is why Respondent felt the need to amend its website without highlighting this fact in its Response.
Complainant also points out in its supplemental filing that Respondent itself confirms that it is promoting competing devices on its website. Whether or not such competing devices can be used with Complainant's tobacco products does not change the fact that Complainant's IQOS trademark as part of the disputed domain name is used by Respondent to promote devices of other commercial origin directly competing with Complainant's IQOS-branded devices. Complainant asserts that such trademark infringing use of the disputed domain name cannot be considered a bona fide offering of goods.
Accordingly, Complainant requests that the disputed domain name be transferred to Complainant.
Respondent timely submitted a formal response in this proceeding on May 9, 2018.
In its Response, Respondent admits that it is the beneficial registrant of the disputed domain name. Respondent asserts that on its website located at the disputed domain name it uses the term "IQOSFunSharing" in both English and Chinese, where the term "fun" and the Chinese character "分" have the same pronunciation and mean "sharing." Respondent contends that the website is talking about the fun of using IQOS and the related products on the market. Respondent asserts that the use of the disputed domain name is not confusing nor misleading, particularly given that "it is publicly known that IQOSHK is still not ready to open in Hong Kong, using an objective bystander approach, it is obviously that no one will be misled or even believe it is an official IQOS website or possibly an IQOS authorized agent website. It is a real fact that Hong Kong is so small that all news will pass through the whole city in very short time."
Respondent contends that there is no IQOS logo on its website misleading visitors, there is no shopping cart, and that the product photos are genuine product packing box and product photos. According to Respondent, there are competition and antitrust laws in Hong Kong and many other countries, to promote free trade, and therefore there is no assumption that only the brand owner or its authorized agents can promote their branded products. Respondent contends that if this claim is allowed, it would abridge the freedom of speech and information, and lead to a ban on all websites which contain the four characters "iqos" in the domain name, regardless of whether such domain names confuse or mislead Internet users vis-à-vis Complainant's IQOS Mark.
According to Respondent, before receiving the notice of this dispute, the disputed domain name was in operation and providing information regarding IQOS products. Respondent contends that Complainant's assertion that the disputed domain name is providing Complainant's products as well as competitive products is partially false and misleading. According to Respondent, the alleged competitive devices are already on the market and Respondent is merely providing information regarding these alternative devices, which are intended for use with Complainant's "HeatSticks" branded tobacco insert products. Respondent asserts that this constitutes a bona fide offering of goods and services.
Respondent contends that there is no evidence that the disputed domain name has been registered and used in bad faith. According to Respondent, and as stated previously, the disputed domain name is intended as a means of "fun sharing of IQOS and IQOS related products, and it is not an online store." Respondent asserts that even though the website located at the disputed domain name has a link to a Facebook page, it is only for personal and individual sharing, and that is why there is no company information associated with the page. Respondent asserts that the page is intended as a "Fans-Page", to discuss IQOS devices and eventually other similar new products that become available on the market.
Regarding its use of a privacy protection service, Respondent notes that it helps Respondent avoid unwanted promotional advertising and calls to Respondent's personal mobile phone number.
Respondent also filed a supplemental filing in response to Complainant's supplemental filing. In its supplemental filing, Respondent reiterates that the term appearing on its website at the disputed domain name, "IQOS分享站," means "Fun Sharing." Respondent reiterates that despite its use of the four-letter term "iqos" in the disputed domain name, the disputed domain name as a whole is not confusingly similar to Complainant's IQOS Mark. Respondent also reiterates that because IQOS products are not officially available in Hong Kong, Complainant is actually benefitting from Respondent's website insofar as it is discussing Complainant's IQOS products, even if Respondent is not an official distributor.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.2.1. Complainant has provided evidence that it has rights in the IQOS mark, which has been registered in China, Hong Kong, the United States and elsewhere internationally, well before Respondent registered the disputed domain name.
With Complainant's rights in the IQOS mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain ("gTLD") ".com") is identical or confusingly similar to Complainant's mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant's IQOS mark because it incorporates this mark in its entirety as the dominant element of the disputed domain name. The addition of the generic term "fun" after the dominant IQOS element does not distinguish the disputed domain name from Complainant's mark. See, e.g., Wingstop Restaurants Inc. v. Domains By Proxy, LLC / Johnson Millner / Matthew Alvarez, WIPO Case No. D2016-1004. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the IQOS mark and in showing that the disputed domain name is identical or confusingly similar to this mark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its IQOS mark and does not have any rights or legitimate interests in the disputed domain name. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that Respondent has used the disputed domain name to divert Internet users to its website and associated Facebook page through which it advertises for sale Complainant's products under the IQOS Mark without Complainant's authorization, as well as advertising for sale other competing products. The screenshots of Respondent's website and Facebook page provided by Complainant show unauthorized use of Complainant's IQOS Mark in connection with efforts to sell IQOS-branded products online and/or through a brick-and-mortar retail location in Hong Kong, as referenced on Respondent's Facebook page. Postings on the Facebook page demonstrate specific efforts to sell such products (as opposed to mere commentary or discussion) through the use of specific advertising language, product pricing, an address ostensibly identifying the physical retail store location (Shum Shui Po, Hong Kong), and the clear designation on the Facebook page that the page relates to "Shopping and retail."
Such use of the disputed domain name does not constitute a bona fide offering of goods or services, given that such offering of products bearing the IQOS Mark are not authorized by Complainant, and are advertised and sold alongside competing products. In other words, Respondent is clearly infringing upon Complainant's rights by selling unauthorized products under Complainant's IQOS Mark. UDRP panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods, infringement, or impersonation/passing off) can never confer rights or legitimate interests on a respondent. See WIPO Overview 3.0, section 2.13.1; Karen Millen Fashions Limited v. Belle Kerry, WIPO Case No. D2017-0302.
In this case, Respondent contends that it has a legitimate interest in the disputed domain name because it is merely using the disputed domain name to facilitate discussion regarding IQOS and similar products, and/or because its use of the disputed domain name is in connection with a legitimate offering of goods under the criteria first set forth in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. First, as noted above, Respondent's use of the disputed domain name goes beyond mere discussion or commentary, and clearly comprises commercial use. The question is whether such commercial use is "bona fide" and therefore confers a legitimate interest in the disputed domain name to Respondent. Under the Oki Data Americas test, as expanded in later cases, to be "bona fide," the offering must meet several requirements, namely, at a minimum, the following:
- Respondent must actually be offering the goods or services at issue.
- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods.
- The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents.
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (internal citations and parentheticals omitted); Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481; Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447; ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc., WIPO Case No. D2008-0936. While Respondent succeeds with respect to the first criterion, there is insufficient evidence before the Panel concerning the fourth criterion, and Respondent clearly fails the second and third criteria – it sells goods other than the IQOS-branded goods at issue in this case, and fails to disclose the nature of any relationship with Complainant as the trademark owner, thereby falsely suggesting that Respondent is the trademark owner or is legitimately affiliated with the trademark owner, or that its website is an official or otherwise legitimate or approved site through which Internet users may obtain Complainant's products.
Given that Complainant has established with sufficient evidence that it owns rights in the IQOS mark, and has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the disputed domain name, and given Respondent's failure to produce countervailing evidence of any rights or legitimate interest in the disputed domain name, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
The Panel finds that Respondent's actions indicate that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
As noted above, Complainant contends that Respondent is using the disputed domain name in connection with a website advertising Complainant's IQOS-branded products, as well as other competing products, and providing a link to a Facebook page where Respondent advertises these products for sale either online or at its physical retail store location in Hong Kong. Respondent has admitted in its formal Response and supplemental filing that it is, in fact, offering such products for sale, even though it argues in the alternative that it is merely facilitating discussion about these products, or that its unauthorized sale of such products is somehow protected under competition, antitrust, or free speech law. Respondent's arguments are unavailing. Instead, on balance, the evidence demonstrates that Respondent is, in fact, deliberately using the disputed domain name, which uses Complainant's IQOS Mark in full, appended to the generic term "fun", and the significant goodwill and reputation associated with such marks, to misdirect Internet traffic for its own commercial gain by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or associated Facebook page by Complainant where no such affiliation or authorization exists.
The Panel also agrees with Complainant that the change in website content located at the disputed domain name, and in particular the removal of the associated Facebook page, following the notice of this Complaint, further underscores Respondent's bad faith.
In light of this activity, and given that Respondent registered the disputed domain name without Complainant's authorization long after Complainant's rights in this mark had been established, the Panel can only conclude that the disputed domain name was registered and used in bad faith.
Accordingly, the Panel finds that Complainant succeeds under this element of 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 <iqosfun.com>, be transferred to the Complainant.
Brian J. Winterfeldt
Date: June 6, 2018