WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Han Ming, Lin Cheng
Case No. D2018-1635
1. The Parties
The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Simone Intellectual Property Services Asia Limited, China.
The Respondent is Han Ming, Lin Cheng of Kunming, China.
2. The Domain Name and Registrar
The disputed domain name <iqos-buy.com> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2018. On July 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 24, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on July 25, 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 in English and Chinese of the Complaint, and the proceedings commenced on August 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2018.
The Center appointed Jonathan Agmon as the sole panelist in this matter on September 5, 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, Philip Morris Products S.A. is a part of a group of companies affiliated with Philip Morris International Inc. (PMI), which is one of the world's leading tobacco companies with products sold in more than 180 countries, holding a brand portfolio consisting of brands such as Marlboro, according to the Complainant, the world's number one selling cigarette brand since 1972.
PMI is in the course of transforming its business from combustible cigarettes to Reduced Risk Products has developed a number of products. One of the products is marketed under the IQOS brand. Iqos is a precisely controlled heating device into which specially designed tobacco products under the brand names HEETS and HEATSTICKS are inserted and heated to generate a flavorful-containing aerosol. The IQOS system consists of an Iqos Pocket Charger, designed to charge the IQOS Holder – together known as IQOS products.
Today IQOS products are marketed in 38 key cities worldwide. Because of a USD 4.5 billion investment and extensive international sales and marketing efforts, IQOS products have achieved notoriety and fame – claims the Complainant.
The Complainant is the owner of IQOS trademarks worldwide, holds an extensive portfolio which includes a variety of different trademarks registrations. The Complainant owns a number trademark registrations in China and Taiwan province of China including but not limited to:
- Chinese Trademark IQOS No. 15098769 registered on June 28, 2015;
- Chinese Trademark IQOS No. 15098772 registered on June 21, 2015;
- Chinese Trademark IQOS No. 16314287 registered on May 14, 2016;
- Chinese Trademark IQOS No. 16314286 registered on May 14, 2016;
- Taiwan province of China Trademark IQOS (stylized) No. 01845937 registered June 1, 2017;
- Taiwan province of China Trademark IQOS No. 01718978 registered on July 16, 2015; and
- Taiwan province of China Trademark IQOS No. 01718976 registered on July 16, 2015.
The disputed domain name <iqos-buy.com> was registered March 26, 2018.
The disputed domain name resolves to a website offering the Complainants' IQOS products as well as HEET and HEATSTICKS products, etc., and endorses "Taiwan IQOS Specialty Store".
It should be noted that the Complainant has not yet began to market in China or Taiwan province of China.
5. Parties’ Contentions
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s registered mark IQOS since it contains the Complainant’s mark in its entirety and states that an addition of a generic term as “buy” with a hyphen does not negate confusion of Internet users. It further contends that the fact the website the disputed domain name resolves to offers the Complainants' products adds to the confusion of Internet users as well as other variations of proprietary rights of the Complainant.
The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the Complainant is the trademark owner and the Respondent is not affiliated with the Complainant in any way.
The Complainant also argued that the term “IQOS” has no meaning in the English language and was created by the Complainant for its brand. The Complainant stipulates this indicates that the Respondent registered the disputed domain name to gain undue advantage of the Complainant’s registered mark and notoriety.
The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith as it is impossible he did not know or should have known about the Complainants’ rights in the registered and mark as it is offering the Complainant's products, which also proves there was no bona fide registration or use and that the Respondent is actively trying to gain profits due to the Complainant's reputation and success.
For all of the above reasons, 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. Language of the Proceeding
Paragraph 11 of the Rules provides that:
“(a) 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.”
The language of the Registration Agreement for the disputed domain name <iqos-buy.com> is Chinese, as confirmed by the Registrar in its verification email to the Center of July 23, 2018.
The Complainant requested that the language of the proceeding be English.
The Respondent did not respond.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).
The Panel finds that in the present case regarding the disputed domain name <iqos-buy.com>, the following should be taken into consideration upon deciding on the language of the proceeding:
(i) The disputed domain name consists of Latin letters, rather than Chinese characters, and the website at the disputed domain name incorporates English words and phrases;
(ii) The Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language;
(iii) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.
Upon considering the above, the Panel determines that English be the language of the proceeding for the disputed domain name.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of a number trademarks registered for the IQOS mark also in China and Taiwan province of China. The disputed domain name is <iqos-buy.com> is comprised of the word “iqos”, hyphen and the generic term “buy” and the generic Top-Level-Domain (“gTLD”) “.com”.
It is well established that if the relevant trademark is recognizable within the disputed domain name, the addition of other terms, such as generic terms, as shown in these circumstances, or other, would not prevent a finding of confusing similarity under the first element (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; Accor v. Serdar Ceylan, WIPO Case No. D2011-2231). Under the circumstances of the present case, the term “buy” is a generic descriptive term as it applies to the action offered on the website, i.e. purchase of goods (See Roche Therapeutics, Inc., Hoffman-La Roche, Inc., Genentech, Inc., F. Hoffman-La Roche AG v. Privacy Hero Inc. / IT Company / Kyle Rocheleau, IT Company, WIPO Case No. D2016-0988; International Business Machines Corporation v. Libia Sanchez, SAS / Jairo Sandoval, WIPO Case No. DCO2015-0038). Therefore, this panel finds that the addition of the generic term “buy” with a hyphen does not prevent a finding that the disputed domain name is confusingly similar to the Complainant’s mark.
Prior panels have established that the addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity (see Accor v. Noldc Inc., WIPO Case No. D2005-0016; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; L’Oréal v Tina Smith, WIPO Case No. 2013-0820; Titoni AG v Runxin Wang, WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877). Therefore, the gTLD “.com” is without significance in the present case since the use of a TLD is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview 3.0, section 2.1.
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard.
In previous decisions, UDRP panels found that in the absence of any license or permission from the complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed (Groupe Auchan v. Gan Yu, WIPO Case No. D2013-0188; LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138). Due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks, a variation thereof or other proprietary rights by the Complainant, and that the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services but rather tries to build from the Complainant's hard work and reputation by deceptively associating itself with the Complainant and its products.
The Respondent has not submitted any Response to the Complaint and did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The various factors that can be taken into account include the (i) the degree of distinctiveness or reputation of the complainant’s mark; (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use; (iii) the respondent’s concealing its identity or use of false contact details; and (iv) the implausibility of any good faith use to which the domain name may be put (WIPO Overview 3.0, section 3.3).
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name at least two years after the Complainant registered its trademarks in China where the Respondent resides. According to the evidence filed by the Complainant, the Complainant has owned a registration for the IQOS trademark since the year 2015. The addition of the generic word “buy” to the disputed domain name is ignored for the purpose of comparing the Complainant’s trademark and the disputed domain name. In view of the evidence filed by the Complainant, and the widespread use of the IOQS trademarks by the Complainant, it is suggestive of the Respondent’s bad faith in these particular circumstances, i.e., registration of the disputed domain name incorporating that trademark, owned by the Complainant, (see The Nasdaq Stock Market, Inc. v. H. Pouran, WIPO Case No. D2002-0770; Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735; LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494).
Furthermore, in the present case, the disputed domain name is active, and the evidence provided shows that the Respondent is attempting to associate itself with the Complainant and its products sold under the IQOS trademarks. In addition, the evidence shows that the Respondent appears to have copied the Complainant’s promotional materials using the Complainant’s stylized IQOS trademarks and pictures from the Complainant’s instruction manual. In the website under the disputed domain name, the Respondent appears to be offering for sale what appear to be the Complainant's products including IQOS products and related products such as HEET or HEATSTICKS products while representing to be either affiliated or connected with the Complainant or its trademarks. The evidence provided by the Complainant is suggestive of the Respondent bad faith registration and use of the disputed domain name as it shows that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his website or location.
The Complainant provided evidence showing that it is associated with the IQOS trademark for the goods and services it provides. Under the particular circumstances of the present case the reputation of the mark and high degree of distinctiveness are yet another indication of bad faith registration and use of the disputed domain name by the Respondent.
In addition, the Respondent failed to provide an answer which would provide any evidence of actual or contemplated good-faith use. This failure to provide an explanation to his choice of domain name is especially of import when the disputed domain name comprises in whole the distinctive trademark of the Complainant. The failure of the Respondent to provide an answer is an additional indication of bad faith registration and use of the disputed domain name.
Finally, given the distinctiveness of the Complainant’s trademark, its registration and wide use by the Complainant, it is implausible that there is any good faith use in the disputed domain name nor was there during its registration.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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 <iqos-buy.com> be transferred to the Complainant.
Date: September 13, 2018