WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. De Ping Wu, Shen Zhen Shi Zhi Qi Wu Lian Ke Ji You Xian Gong Si
Case No. D2018-2606
1. The Parties
The Complainant is Philip Morris Products S.A. of Neuchatel, Switzerland, represented by Simone Intellectual Property Services Asia Limited, Hong Kong, China.
The Respondent is De Ping Wu, Shen Zhen Shi Zhi Qi Wu Lian Ke Ji You Xian Gong Si of Shenzhen, China.
2. The Domain Name and Registrar
The disputed domain name <iqosvivid.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2018. On November 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 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 the Complainant on November 16, 2018, 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 November 19, 2018.
On November 16, 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 November 19, 2018. The Respondent did not comment on the language of the proceeding.
On November 15, 2018, the Center received an email from a non-identifiable email address, asking for information about the dispute. On November 16, 2018, the Center sent an email to the Parties, requesting for identification of the email sender. The Center did not receive any reply.
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 November 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2018.
The Center appointed Deanna Wai Man Wong as the sole panelist in this matter on January 2, 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
The Complainant is an affiliate of Philip Morris International Inc., which is one of the world’s leading international tobacco companies, with products sold in over 180 countries. 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.
The Complainant owns a portfolio of trademark registrations for both IQOS and VIVID (word and device marks) in several jurisdictions, including in China, e.g., Chinese trademark registration number 15098769 for IQOS, registered on June 28, 2015, and international trademark registration number 1309242 for VIVID, registered on March 7, 2016 and designating China. Incidentally, the relevant registered trademarks adduced by the Complainant were successfully registered prior to the registration date of the disputed domain name, which was registered on November 1, 2018. The disputed domain name directs to an active website, which is operated as an e-commerce platform for IQOS and VIVID-branded products.
5. Parties’ Contentions
The Complainant essentially contends that the disputed domain name is identical to its trademarks for IQOS and VIVID, 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 consumer and tobacco industry, and provides evidence of its marketing materials as well as prior domain name decisions which state that the Complainant and its IQOS mark are well-known. Moreover, the Complainant provides evidence that the disputed domain name is linked to an active website, operating as an e-commerce platform, unlawfully using the Complainant’s trademarks and copyrighted works and offering unauthorized goods for sale, thereby specifically targeting China. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the domain name and constitutes 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 proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Complainant states that, to the best of its knowledge, the language of the Registration Agreement is Chinese, and provides a copy of the Registration Agreement in Chinese. Nevertheless, the Complainant has filed both the Complaint and the amended Complaint in English, and requests that the language of proceedings be English.
The Panel has carefully considered all elements of this case, in particular, the Complainant's request that the language of proceedings be English; the lack of comment on the language of the proceeding and the lack of response of the Respondent (the Panel notes that the Respondent had the opportunity to put forward arguments in either English or Chinese); the fact that the disputed domain name resolves to an active webpage that is available in both English and Chinese, so that the Panel concludes that the Respondent is able to understand and communicate in English; and the fact that Chinese as the language of proceedings could lead to unwarranted delay and costs for the Complainant. In view of all these elements, the Panel rules that the language of proceedings shall be English.
6.2. Discussion and Findings on the merits
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 and arguments submitted, the Panel's findings are as follows:
A. Identical or Confusingly Similar
The Panel finds that the Complainant has provided sufficient evidence that it has valid rights in the signs IQOS and VIVID based on its use and registration of the same as trademarks, incidentally commencing years prior to the registration of the disputed domain name.
Moreover, as to identity of the disputed domain name with the Complainant’s marks, the disputed domain name consists of the mere combination of two elements, which are the Complainant’s IQOS and VIVID trademarks. Accordingly, the Panel rules that the disputed domain name is identical or confusingly similar to the Complainant's trademarks, 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 Panel notes that the Respondent is not an authorized reseller, service provider or distributor, and is not making legitimate noncommercial use or fair use of the Complainant's trademarks. This finding is reinforced by the fact that the Respondent is offering for sale, on the Chinese version website linked to the disputed domain name, VIVID-branded products, which, according to the Complainant, have not yet been launched on the Chinese market by the Complainant. The Panel therefore considers that none of the circumstances of legitimate interests envisaged by paragraph 4(c) of the Policy applies. The Panel also 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 requirement under the Policy.
C. Registered and Used in Bad Faith
Given the reputation and fame of the Complainant's trademarks, further confirmed by two recent domain name decisions adduced by the Complainant, the registration of the disputed domain name, which incorporates such trademarks in their entirety, is clearly intended to mislead and divert consumers to the disputed domain name. Even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned, and owns, trademarks in IQOS and VIVID and uses these marks extensively, including in the Respondent’s home jurisdiction China. In the Panel's view, this clearly indicates the bad faith of the Respondent, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain name in bad faith.
As to use of the disputed domain name in bad faith, both the English and Chinese language versions of the website linked to the disputed domain name are currently used as an e-commerce platform, offering unauthorized IQOS and VIVID-branded products for sale. Moreover, upon the Panel’s review of the website linked to the disputed domain name, the Panel notes that the Respondent clearly tries to mislead consumers into thinking that it is the Complainant, or is at least connected with the Complainant, by displaying the following copyright notice at the bottom of the page in all language versions “© 2018 Phillip Morris Limited. All rights reserved” and by prominently using the Complainant’s trademarks and copyright protected images. The Panel therefore rules that it has been demonstrated 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 requirement 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 <iqosvivid.com> be transferred to the Complainant.
Deanna Wong Wai Man
Date: January 14, 2019