WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Lee Kevin
Case No. D2019-2876
1. The Parties
The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Lee Kevin, Taiwan, China.
2. The Domain Name and Registrar
The disputed domain name <iqosshop.org> is registered with Register.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2019. On November 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 29, 2019, 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 December 6, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On December 8, 2019, the Center received an informal email communication from the Respondent in English. The Complainant filed an amended Complaint on December 9, 2019.
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 of the Complaint, and the proceedings commenced on December 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2020. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties on January 6, 2020, that it would proceed to panel appointment. On January 6 and 7, 2020, the Center received two informal email communications in Chinese from the Respondent.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on January 27, 2020. 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 so-called “reduced risk products”, one of which is branded “IQOS”. The IQOS-system consists of a controlled heating device into which a designated tobacco product, branded “HEETS”, is inserted and heated to generate a nicotine-containing aerosol. The Complainant provides materials stating that the IQOS-system has achieved considerable international success and reputation, and that it has an estimated amount of 8 million regular users worldwide.
The Complainant owns a portfolio of trademark registrations for IQOS (word and device marks) in China and throughout the world, for example Chinese trademark registration number 16314286, registered on May 14, 2016 and International trademark registration number 1338099, registered on November 22, 2016. The Complainant also owns a number of other registered trademarks relevant to this proceeding (used on the website linked to the disputed domain name), for instance: HEETS, International trademark registration number 1328679, registered on July 20, 2016, and designating, inter alia, China. 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 October 13, 2019. The Complainant submits evidence that the disputed domain name directed to an active website, which was operated as an e-commerce website for IQOS and HEETS-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. Moreover, the Complainant provides evidence that the disputed domain name was linked to an active website, operating as an e-commerce website, unlawfully using the Complainant’s trademarks and images protected by copyright, and offering goods purported to be produced by the Complainant for sale through an unauthorized channel. 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 submit a Reply on the merits to the Complainant’s contentions. On December 8, 2019, the Center received an informal email communication in English from the Respondent, containing a procedural question. On January 6 and 7, 2020, the Center received two more informal email communications in Chinese from the Respondent, in which he claimed, without substantiating such claims in any way, that the disputed domain name was already “cancelled”. Since no request for suspension of this proceeding was received from the Complainant, the Center appointed the present Panel. The Panel notes that the Respondent did not submit any argument on the merits in its various informal email communications.
6. Discussion and Findings
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 mark IQOS, based on its use and registration of the same as a trademark, incidentally commencing several years prior to the registration of the disputed domain name.
Moreover, as to confusing similarity of the disputed domain name with the Complainant’s marks, the disputed domain name consists of the combination of two elements: the Complainant’s IQOS trademark combined with the descriptive word “shop”. The applicable generic Top-Level Domain (“gTLD”) (“.org” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel, see in this regard the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.11.1. Moreover, according to 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 only distinctive feature. Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s trademarks, and the Complainant has satisfied the requirements for the first element under the Policy.
B. Rights or Legitimate Interests
On the basis of the evidence and arguments submitted, the Panel holds that the Complainant makes out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply. Moreover, reviewing the facts, the Panel notes that the disputed domain name directed to a webpage (before it was taken offline) which showed a clear intent on the part of the Respondent to obtain illegal commercial gains from offering for sale unauthorized products branded with the Complainant’s trademarks for IQOS and HEETS. This shows the Respondent’s intention to divert consumers for commercial gain to its website, by taking unfair advantage of the goodwill and reputation of the Complainant’s trademarks for IQOS.
Furthermore, the Panel notes that the nature of the disputed domain name, being confusingly similar to the Complainant’s trademarks, and using the word “shop”, carries a high risk of implied affiliation with the Complainant (see also WIPO Overview 3.0, section 2.5.1), and that the Respondent is not commonly known by the disputed domain name.
On the basis of the foregoing elements, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element 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. In the Panel’s view, this clearly indicates bad faith on the part 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 disputed domain name directed to a webpage (before it was taken offline) which was used as an e-commerce website, offering unauthorized IQOS and HEETS branded products for sale. On the date of this decision however, the disputed domain name links to an inactive website. In this regard, the WIPO Overview 3.0, section 3.3 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”. The Panel has reviewed all elements of the case at hand, and attaches particular importance to the following: the fact that the only distinctive element in the disputed domain name is the Complainant’s trademark; the fact that the Respondent clearly intended to mislead consumers into believing that the disputed domain name led to an official shop for IQOS products by selecting the disputed domain name including the word “shop”; the use of the website linked to the disputed domain name (before it was taken offline) as an e-commerce website selling allegedly genuine “IQOS” and “HEETS” products produced by the Complainant through an unauthorized channel; and the unauthorized use on such website of the Complainant’s marketing images protected by copyright. On the basis of the foregoing elements, 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 <iqosshop.org> be transferred to the Complainant.
Deanna Wong Wai Man
Date: February 10, 2020