WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. 赵波 (ZhaoBo), 上海聿家贸易有限公司 (Shang Hai Yu Jia Mao Yi You Xian Gong Si)

Case No. D2020-2982

1. The Parties

The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.

The Respondent is 赵波 (ZhaoBo), 上海聿家贸易有限公司 (Shang Hai Yu Jia Mao Yi You Xian Gong Si), China.

2. The Domain Name and Registrar

The disputed domain name <iqschn.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 10, 2020. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 2020, 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 30, 2020 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 in English Complaint on December 2, 2020.

On November 30, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on December 2, 2020. The Respondent did not comment on the language of the proceeding.

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, in English and Chinese, the Respondent of the Complaint, and the proceedings commenced on December 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default in English and Chinese on January 6, 2021.

The Center appointed Matthew Kennedy as the sole panelist in this matter on January 19, 2021. 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 belongs to a corporate group owned by Philip Morris International, Inc. (“PMI”), a tobacco company. PMI launched IQOS in 2014, which consists of a device into which tobacco products are inserted and heated to generate a nicotine-containing aerosol. The IQOS system also consists of an IQOS pocket charger designed to charge the IQOS holder. To date, IQOS products have been distributed almost exclusively through PMI’s official IQOS stores and websites and selected authorized distributors and retailers. The Complainant has not yet commercialized its IQOS products in mainland China. The Complainant owns multiple trademark registrations including Chinese trademark registration number 16314286 for IQOS, registered from May 14, 2016 and specifying goods including electronic cigarettes in class 34; International trademark registration number 1329691 for IQOS in a particular script (the “IQOS logo”), registered on August 10, 2016, designating multiple jurisdictions including China, specifying goods including wired vaporizers for electronic cigarettes and electronic smoking devices; and International trademark registration number 1331054 for a device mark (the “hummingbird logo”), registered on October 11, 2016, designating multiple jurisdictions including China, also specifying goods including wired vaporizers for electronic cigarettes and electronic smoking devices. These trademark registrations remain in effect.

The Respondent is an individual and a Chinese company.

The disputed domain name was registered on December 4, 2019. It resolves to an online store in Chinese, and partly in English, that prominently displays the Complainant’s IQOS mark, IQOS logo and hummingbird logo and offers for sale the Complainant’s IQOS products as well as heat herbal sticks produced by a third party. The website also displays the Complainant’s product images and marketing materials. Prices are displayed in RMB and the pick-up address is in Shanghai, China.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s IQOS trademarks. The disputed domain name reproduces a mark highly similar and phonetically almost identical to the Complainant’s registered IQOS trademark, in addition to the non-distinctive three-letter country code for China, i.e. “chn”. The intentional “misspelling” of the IQOS trademark with the non-distinctive three-letter country code for China is not sufficient to avoid a finding of confusing similarity. Given the content of the associated website, it is reasonable to conclude that the Respondent registered the disputed domain name precisely because it believed it to be confusingly similar to the Complainant’s IQOS trademark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating a mark highly similar or phonetically almost identical to its IQOS trademark. The Respondent’s behaviour shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademarks owned by the Complainant.

The disputed domain name was registered and is being used in bad faith. It is evident from the Respondent’s use of the disputed domain name that it knew of the Complainant’s IQOS trademark when registering the disputed domain name and that it registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s registered IQOS trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the website associated with the disputed domain name includes a number of English words, suggesting that the Respondent understands English; and that the Complainant has no knowledge of Chinese.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that in this proceeding the Complaint was filed in English. The disputed domain name resolves to an online store partly in English, which suggests that the Respondent is able to communicate in that language. Further, despite having received an email regarding the language of the proceeding and notice of these proceedings in both Chinese and English, the Respondent has not commented on the issue of language or expressed any interest in responding to the Complaint or otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(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.

A. Identical or Confusingly Similar

Based on the evidence presented, the Panel finds that the Complainant has rights in the IQOS mark.

The disputed domain name incorporates the IQOS mark, except for the “o”, as its initial element. This element is aurally almost identical, and visually similar, to the IQOS mark. It is followed by the letters “chn”, which are likely to be construed as a reference to “China”. As a mere geographic reference, the Panel does not consider that this additional element avoids a finding of confusing similarity to the mark. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

The only other element is the generic Top-Level Domain (“gTLD”) suffix “.com”. A gTLD suffix is a standard registration requirement and generally disregarded for the purposes of assessing confusing similarity between a domain name and a trademark under the Policy. See WIPO Overview 3.0, section 1.11.

Further, the Panel takes note that the website to which the disputed domain name resolves is an online store for the Complainant’s IQOS products that prominently displays the IQOS trademark and logo. This evidence confirms that the Respondent is seeking to target the IQOS trademark through the disputed domain name and affirms the confusing similarity. See WIPO Overview 3.0, section 1.15.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first circumstance above, the disputed domain name, which is confusingly similar to the Complainant’s IQOS trademark, is being used in connection with an online store that offers for sale the Complainant’s IQOS products. The Complainant submits that it has not licensed or otherwise permitted the Respondent to use any of its trademarks. The Panel notes that the website is falsely presented as an online IQOS store operated by, or affiliated with, the Complainant. Further, the website also offers for sale products from a company other than the Complainant. These facts show that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

As regards the second circumstance above, the name of the underlying registrant is recorded in the Registrar’s WhoIs database as “赵波 (ZhaoBo), 上海聿家贸易有限公司 (Shang Hai Yu Jia Mao Yi You Xian Gong Si)”. The company name may be translated as “Shanghai Yujia Trading Co.”. None of these names resembles “iqschn” or even abbreviates to “iqschn”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.

As regards the third circumstance above, the disputed domain name resolves to an online store. That is not a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that case because it did not respond to the Complainant’s contentions.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”

The disputed domain name was registered in 2019, after the Complainant obtained its trademark registrations for IQOS, including in China, where the Respondent is located. The disputed domain name is confusingly similar to the Complainant’s IQOS trademark and resolves to a website that prominently displays the Complainant’s IQOS mark, IQOS logo, hummingbird logo and images of the Complainant’s products. This all gives the Panel reason to find that the Respondent was aware of the Complainant and its IQOS trademark at the time that it registered the disputed domain name and deliberately chose to register it as part of the disputed domain name in bad faith.

The Respondent uses the disputed domain name in connection with a website that is falsely presented as an online IQOS store operated by, or affiliated with, the Complainant. The disputed domain name operates by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website and the products on the website. This use is intentional and for the commercial gain of the Respondent as contemplated by paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

7. Decision

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 <iqschn.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: January 28, 2021