WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Lai Jian Ping
Case No. D2018-2764
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 Lai Jian Ping of Shenzhen, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <iqos002.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 December 3, 2018. On December 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 2018, the Registrar transmitted by email to the Center its verification response disclosing the 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 December 4, 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 December 7, 2018.
On December 4, 2018, the Center sent 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 December 7, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.
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 December 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2019.
The Center appointed Rachel Tan as the sole panelist in this matter on January 10, 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 a part of the group of companies affiliated with Philip Morris International Inc. (“PMI”). PMI is a major international player in the tobacco industry, with products sold in more than 180 countries.
PMI developed an electrically-heated tobacco smoking system branded IQOS. The IQOS products were first launched in Nagoya, Japan, in 2014. To date, the IQOS products are available in key cities in 43 markets across the world. The IQOS products are almost exclusively distributed through PMI’s official stores and websites as well as authorized distributors and retailers. The Complainant claims to have invested USD five billion in international sales and marketing efforts resulting in almost six million adult smokers switching to the IQOS products.
The Complainant holds worldwide registrations of the IQOS trade mark, including a Chinese Registration No. 16314287, registered on May 14, 2016 in class 34, Chinese Registration No. 16314286, registered on May 14, 2016 in class 34, and International Registration No. 1329691, registered on August 10, 2016 in classes 9, 11 and 34, designating China (“IQOS trade marks”).
The disputed domain name was registered by the Respondent on January 6, 2018. The disputed domain name currently resolves to a website which displays the Complainant’s IQOS products and a claim by the Respondent to be a “professional” provider of IQOS accessories and maintenance services.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to its IQOS word mark, which has acquired a considerable degree of fame and recognition. The addition of “002” and the use of the website entitled “iqos维修服务中心 (iqos maintenance service center)” does not serve to differentiate the disputed domain name from the Complainant’s trade mark, but only serves to mislead consumers into believing that this is the official website of the Complainant in China.
The Complainant further contents that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not authorized or licensed by the Complainant to use the IQOS trade marks or to register a domain name incorporating the IQOS word mark. The Respondent seeks to mislead the public by presenting its website as authorized by the Complainant, when in fact the Complainant has yet to commercialize its IQOS products in China.
Lastly, the Complainant contents that the disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name with full knowledge of the Complainant’s IQOS trade marks. The Respondent’s website extensively uses the IQOS trade marks and promotional material produced by the Complainant. The Respondent seeks to unfairly ride on the Complainant’s fame and reputation and to create the false impression that the Respondent’s business is supported by, authorized or endorsed by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The Panel must first address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.
In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding. The Respondent did not comment on the language of the proceeding. The Center proceeded to issue its case-related communications to the Parties in both English and Chinese. The Center decided to accept the Complaint as filed in English, accept a Response in either English or Chinese, and appoint a Panel familiar with both languages.
The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below:
(a) The Complainant is a company incorporated in Switzerland. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;
(b) English is not the native language of either Party;
(c) The Respondent’s choice of Latin characters for the disputed domain name as well as use of English words and phrases on the related website indicate some fluency with the English language;
(d) Even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request; and
(e) The Respondent has failed to reply to the Complainant’s contentions. The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.
6.2 Substantive Issues
On the basis of the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a), (b) and (c) of the Policy, the Panel concludes as follows:
A. Identical or Confusingly Similar
The Complainant submitted extracts of the IQOS trade mark registrations from the official public records of the China Trade Mark Office. The registrations cover, amongst others, class 34 goods such as heating installations for liquids, steam generating installations, heating installations for tobacco and tobacco products and electric evaporators.
The Panel finds that the Complainant has adduced sufficient evidence to demonstrate its established rights in the IQOS trade marks.
By comparing the disputed domain name and the IQOS word mark, the Panel notes that the disputed domain name wholly incorporates the Complainant’s IQOS word mark and deviates only by the addition of the three digits “002”. In this context, “002” lacks any ability to meaningfully differentiate the disputed domain name from the IQOS word mark. The addition of “.com”, a generic Top-Level Domain (“gTLD”), “is a technical requirement of every domain name registration”. Groupon, Inc. v. Whoisguard Protected, Whoisguard, Inc. / Vashti Scalise, WIPO Case No. D2016-2087.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s IQOS trade marks. Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy
B. Rights or Legitimate Interests
The Complainant contends that it has not licensed or authorized the Respondent to use the IQOS trade marks or register the disputed domain name. The Complainant further contends that the Respondent misrepresents itself to be an authorized agent by the statement “iqos维修服务中心 (iqos maintenance service center)” appearing in the title and homepage of the website to which the disputed domain name resolves. Thus, the Respondent’s conduct is clearly to seek profit by driving up its repair services for the IQOS products.
Pursuant to the Policy, the Panel has not found any evidence to suggest that the Respondent has any rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name. Moreover, the Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services, nor making fair or noncommercial use of the name. Rather, the Respondent explicitly claims to be a “professional” provider of IQOS products and repair services. The display of the Complainant’s products and use of promotional images would easily lead consumers to think that it is authorized by the Complainant to commercialize the IQOS products in China.
Therefore, the Panel finds that the Complainant has satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s owns a portfolio of registered trade mark for IQOS globally, including China. The disputed domain name was registered well after the first registration of the Complainant’s IQOS trade marks.
The search results using the keyword “IQOS” on the Baidu search engine reveals a strong and definite link between the IQOS trade marks and the Complainant. This evidences the fact that the IQOS trade marks would have acquired a certain degree of reputation and recognition amongst relevant consumers in China.
The Respondent is a Chinese individual. The term “iqos002” has no meaning in the Chinese language and the IQOS trade mark is clearly recognizable within the disputed domain name. By registering a domain name entirety composed of the term “IQOS”, the Respondent cannot credibly claim not to have knowledge of the Complainant’s trade mark.
The Respondent is offering goods and services solely associated with the Complainant and advertises its services by using the IQOS trade marks and copyrighted materials. This demonstrates that the Respondent is clearly aware of the Complainant, its business, and the IQOS products. Such registration and use of the disputed domain name is meant to intentionally mislead the relevant Internet users into believing that it is authorized, or is somehow connected, with the Complainant, and thus profit from such acts.
Based on the above facts, it is implausible to contemplate of any good faith use to which the disputed domain name may be put by the Respondent.
Taking into account all the circumstances of the case, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, considering the current manner of use, the Respondent has registered and is using the disputed domain name in bad faith.
Therefore, the Panel concludes that the Complainant has satisfied the third element under paragraph 4(a) 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 <iqos002.com> be transferred to the Complainant.
Date: January 23, 2019