WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Wangmingxin, Shenzhen Huanqiu Yikeji co.,ltd
Case No. D2018-2665
1. The Parties
The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Wangmingxin, Shenzhen Huanqiu Yikeji co.,ltd of Guangzhou, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <iqoswx.com> is registered with Xin Net Technology Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2018. On November 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 22, 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 23, 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 amendment to the Complaint on November 26, 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”).
On November 23, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On November 26, 2018, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2018.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on January 7, 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. Today IQOS products are available in a number of cities in around 43 countries across the world, and according to the Complainant, worldwide, around 6 million smokers have switched to using the IQOS products.
The Complainant owns a portfolio of trademark registrations for IQOS (word and device marks) in China, including Chinese trademark registration number 16314286, registered on May 14, 2016 and Chinese trademark registration number 16314287, registered on May 14, 2016. The Complainant also owns a portfolio of trademark registrations for IQOS in a large number of other jurisdictions, such as international registration 1329691 registered on August 10, 2016 and extended to countries such as the United States of America, Russian Federation, Mexico, New Zealand etc. 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 28, 2017. The Complainant submits evidence that the disputed domain name directed to an active website, offering repair and maintenance services for the Complainant’s IQOS branded products. However, on the date of this decision, the disputed domain name directs to an inactive webpage.
5. Parties’ Contentions
The Complainant essentially contends that the disputed domain name is confusingly similar to its 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 consumer and tobacco industry, and provides evidence of its marketing materials showing that both the Complainant and its IQOS mark are well-known. Moreover, the Complainant provides evidence that the disputed domain name was linked to an active website, offering repair and maintenance services for the Complainant’s IQOS-branded products, thereby using the Complainant’s trademarks and official marketing images, in which it claims to own copyrights. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the disputed 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 could be either English or Chinese, since the Registrar provides registration agreements in both languages. The Complainant 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); 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 sign IQOS based on its use and registration of the same as a trademark, incidentally commencing prior to the registration of the disputed domain name.
Moreover, as to confusing similarity of the disputed domain name with the Complainant’s trademarks, the disputed domain name consists of the combination of two elements, which are the Complainant’s IQOS trademark and the seemingly meaningless addition “wx”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.7, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing” (see also Wal-Mart Stores, Inc. v Richard McLeod d/b/a For Sale, WIPO Case No. D2000-0662). The Panel concludes that the disputed domain name contains the entirety of the Complainant’s trademark, as its sole distinctive and dominant feature. The addition of the meaningless letters “wx” does not avoid the confusing similarity between the disputed domain name and the Complainant’s IQOS trademarks. Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s trademarks, and the first element required by the Policy is 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. The Panel therefore considers that none of the circumstances of legitimate interests envisaged by paragraph 4(c) of the Policy apply (see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). This finding is reinforced by the fact that the Respondent was offering unauthorized maintenance services, thereby using the Complainant’s trademarks and copyright protected images (without any disclaimer) on the website linked to the disputed domain name (before it was taken offline), for IQOS-branded products, which, according to the Complainant, have not yet been launched on the Chinese market by the Complainant. 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, 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 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, the Complainant provides evidence that the initial version of the website linked to the disputed domain name was used to promote its unauthorized IQOS repair and maintenance services. On the date of this decision however, the disputed domain name links to an inactive website. In this regard, the WIPO Overview 3.0 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding”. Having regard to all elements of the case at hand, and in particular to the fact that the only distinctive element in the disputed domain name is the Complainant’s trademark, the high degree of distinctiveness and reputation of the Complainant’s trademark, the initial use of the website linked to the disputed domain name as a website offering unauthorized repair and maintenance services for the Complainant’s IQOS-branded products, displaying a copyright notice including the Complainant’s trademark IQOS, thereby misleading consumers about the Respondent’s identity or connection to the Complainant, and the Respondent’s use of false contact details, the Panel rules that it has been demonstrated that the Respondent has used and 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 <iqoswx.com> be transferred to the Complainant.
Deanna Wong Wai Man
Date: January 14, 2018