WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Chenyi Zhao, 瑪爾有限公司
Case No. D2020-2193
1. The Parties
The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Chenyi Zhao, 瑪爾有限公司, Taiwan Province of China.
2. The Domain Name and Registrar
The disputed domain name <iqos-free.com> is registered with Net-Chinese Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2020. On August 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 2020, 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 August 24, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On August 24, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 September 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 23, 2020.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on October 7, 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 has developed various products to substitute combustible cigarettes, 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 states that the IQOS system has achieved considerable international success and fame, and that it has an estimated amount of 11 million regular users worldwide.
The Complainant owns a portfolio of trademark registrations for IQOS (word and device marks) in Taiwan Province of China, for example, trademark registration number 01921980 registered on June 16, 2018, and trademark registration 01927293 registered on July 16, 2018, and throughout many other jurisdictions, for example, international trademark registration number 1218246, registered on July 10, 2014. The relevant registered trademarks adduced by the Complainant were successfully registered prior to the date of registration of the disputed domain name, which is May 6, 2019. The Complainant submits evidence that the disputed domain name directs to an active website, which is operated as an e-commerce shop purportedly offering IQOS- and HEETS-branded products for sale.
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 printouts of its official website and of its marketing materials. Moreover, the Complainant provides evidence that the disputed domain name is linked to an active website, operating as an e-commerce shopping, unlawfully using the Complainant’s trademarks and product images protected by copyright, and purportedly offering IQOS and HEETS products for sale, while claiming to be the “IQOS Taiwan [Province of China] online store”. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the disputed domain name and constitutes registration and use in bad faith. The Complainant also contends that the Respondent has engaged in a pattern of bad faith behavior, demonstrated by its actions in earlier UDRP proceedings.
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 the Proceeding
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 the language of the Registration Agreement is Chinese, and provides a copy of the Registration Agreement in Chinese. Nevertheless, the Complainant has filed its Complaint in English, and requests that the language of the proceeding be English.
The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of the proceeding be English, the lack of comment on the language of the proceeding and the lack of response on the merits of the Respondent (the Panel notes that the Center has sent case-related communications in both English and Chinese, and the Respondent had the opportunity to put forward arguments in either English or Chinese), the fact that the disputed domain name is in Latin characters and contains an English term (“free”), the fact that the disputed domain name resolves to a website containing some English words, and the fact that Chinese as the language of the proceeding could lead to unwarranted delays and costs for the Complainant. In view of all these elements, the Panel is of the view that the proceeding can be in English and the Respondent’s rights are not affected.
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 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, namely the Complainant’s IQOS trademark combined with a hyphen, followed by the term “free”. 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, which remains easily recognizable 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 met 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 accepts that the Complainant makes out a prima facie case that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, is not a good faith provider of goods or services under the disputed domain name and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. The Panel also notes that the Respondent is not commonly known by the disputed domain name. 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 directs to a webpage, which shows a clear intent on the part of the Respondent to obtain unlawful commercial gains from purportedly offering IQOS- and HEETS-branded products to consumers. Moreover, the Respondent prominently displays the Complainant’s IQOS logo marks and trademarks and places the following notice “IQOS Taiwan [Province of China] online store” in Chinese on the home page of the website linked to the disputed domain name, thereby clearly misleading consumers, for commercial gain, into believing that it is licensed by or affiliated with the Complainant and its IQOS trademarks.
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 prior trademarks, the registration of the disputed domain name, which incorporates the Complainant’s IQOS trademark in its entirety, was 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 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 directs to a webpage used as an e-commerce shop purportedly offering IQOS- and HEETS- branded products for sale. The website clearly displays the Complainant’s well-known trademark IQOS on the home page and throughout the rest of the website, without the authorization of the Complainant. The Panel concludes that this means that the Respondent intentionally attracts Internet users for commercial gain to the disputed domain name, by creating consumer confusion between the disputed domain name and the Complainant’s trademark (see paragraph 4(b)(iv) of the Policy). Moreover, the Respondent suggests at least an incorrect affiliation with the Complainant and its IQOS trademark, by placing the following notice on the home page of the website linked to the disputed domain name: “IQOS Taiwan [Province of China] online store” in Chinese. This finding of intentional misrepresentation and confusion of Internet users is further reinforced by the fact that the Respondent also reproduces the Complainant’s official product images accompanied with a copyright notice claiming copyright in the images and the website as a whole (“All rights reserved. IQOS TAIWAN [Province of China]”). Finally, the Panel has also reviewed the evidence submitted by the Complainant and concludes that the respective respondent names, addresses, registrar information and the contents of the websites linked to the respective domain names in two prior UDRP cases (namely Philip Morris Products S.A. v. Han Ming (Lin Cheng) / Chenyi Zhao, 瑪爾有限公司, WIPO Case No. D2019-0733 and Philip Morris Products SA v. chenyi zhao, Mar Ltd, WIPO Case No. D2019-0486) are so similar to the facts of the present case. The Panel agrees with the Complainant that the Respondent is the same entity as the respondents in those earlier UDRP cases. The Panel concludes that the Respondent has engaged in a pattern of trademark-abusive domain name registrations. On the basis of all of the foregoing elements, the Panel rules that it has been demonstrated that the Respondent is also 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 <iqos-free.com> be transferred to the Complainant.
Deanna Wong Wai Man
Date: October 19, 2020