WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. 深圳市云熙智能有限公司 (shen zhen shi yun xi zhi neng you xian gong si)

Case No. D2021-1538

1. The Parties

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

The Respondent is 深圳市云熙智能有限公司 (shen zhen shi yun xi zhi neng you xian gong si), China.

2. The Domain Name and Registrar

The disputed domain name <iqos-sell.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 May 18, 2021. On May 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 19, 2021, 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 May 20, 2021 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 in English on May 21, 2021.

On May 20, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On May 21, 2021, the Complainant confirmed its request that English be the language of the proceeding. On May 24, 2021, the Respondent transmitted by email a request that Chinese be 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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on June 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Parties of the commencement of the panel appointment on June 23, 2021.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on June 29, 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 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 states that the IQOS-system has achieved considerable international success and fame, and that it currently has an estimated amount of 17.6 million regular users worldwide.

The Complainant owns a portfolio of trademark registrations for IQOS (word and device marks) in China, and throughout many other jurisdictions, for example Chinese trademark registration 16314286 registered on May 14, 2016 and international trademark registration 1329691, registered on August 10, 2016 and designating inter alia China. The relevant registered trademarks adduced by the Complainant were successfully registered prior to the date of registration of the disputed domain name by the Respondent, which is March 3, 2021. The Complainant submits evidence that the disputed domain name directed to an active website, which was operated as an e-commerce website selling and offering the Complainant’s IQOS-branded products for sale, as well as competing third party products of other commercial origin. On the date of this decision, the disputed domain name directs to an active website which only mentions “出售本域名，请联系 [email address]”, meaning “this domain name is offered for sale, please contact [email address]”. ¹

5. Parties’ Contentions

A. Complainant

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 among the consumers in the tobacco industry, and provides printouts of its official website and 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 product images protected by copyright, and offering IQOS products and competing third party products for sale to Internet users. 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.

B. Respondent

The Respondent’s communications in this procedure are limited to its email of May 24, 2021 in which it requested that Chinese be the language of the proceeding. The Respondent did not submit any Response on the merits of this proceeding.

6. Discussion and Findings

6.1. Preliminary issue: the language of the administrative 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 the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Complainant stated in its Complaint that, to the best of the Complainant’s knowledge, the language of the Registration Agreement is Chinese, but nevertheless requested that the language of the proceeding be English. On May 20, 2021, the Center transmitted an email communication to the Parties in English and Chinese notifying the Parties that the language of the Registration Agreement is Chinese. On May 21, 2021, the Complainant confirmed its request that English be the language of the proceeding, claiming essentially that the Respondent is capable of communicating in English as the disputed domain name is in Latin letters and the website of the privacy registration service used by the Respondent is also available in English and that translating the Complaint and evidence into Chinese would cause an unnecessary burden to the Complainant and unnecessarily delay the proceeding. On May 24, 2021, the Respondent transmitted by email a request that Chinese be the language of the proceeding, claiming essentially that the website linked to the disputed domain name was built in Chinese rather than in English (“请求将中文作为行政程序语言，谢谢；理由是：iqos-sell.com用中文搭建，并没有英文.”). Given the circumstances of this case, the Center accepted the Complaint as filed in English, accepted the Respondent’s email regarding the language of the proceeding in Chinese, and appointed the present Panel, which is familiar with both English and Chinese.

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 Respondent’s request that the language of proceeding be Chinese, also noting, however, that the Respondent did not submit any Response on the merits of this proceeding, while it was invited to do so in either English or Chinese; the fact that the disputed domain name is in English and is written in Latin letters and not in Chinese characters and the fact that Chinese as the language of the proceeding could lead to unwarranted delays and costs for Complainant. In view of all these elements, the Panel rules that the language of the proceeding shall be English. Nevertheless, in accordance with WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 4.5.1, the Panel accepts the Respondent’s email of May 24, 2021 written in Chinese, and does not require a translation of any document in Chinese in this administrative procedure.

6.2. Discussion and Findings on the merits

The Policy requires the Complainant to prove three elements:

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

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(c) 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.

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 dictionary term ‘sell’. 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, which remains easily recognizable as its only distinctive feature. The Panel also finds that the hyphen may be disregarded as it is considered merely a punctuation mark (see also Accor and SoLuxury HMC v. YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) / Lin Qing Feng, WIPO Case No. D2016-1262). The Panel furthermore accepts that the dictionary term “sell” is a purely descriptive term in this case and as such, does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks (see WIPO Overview 3.0, section 1.8).

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. The Panel rules that the Complainant has satisfied the requirements of 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 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 directed to a webpage which showed a clear intent on the part of the Respondent to obtain unlawful commercial gains from using the Complainant’s IQOS trademark in the disputed domain name to offer unauthorized IQOS-branded products as well as competing third party products to Internet users. Furthermore, the Respondent prominently displayed the Complainant’s IQOS logos and word marks, used the Complainant’s own product images protected by copyright and also placed a copyright notice at the bottom of the home page, thereby misleading consumers into believing that it is licensed by, or affiliated with the Complainant or its IQOS trademarks. The Panel also notes that on the date of this decision, the disputed domain name directs to a website which only contains an email address to send offers to buy the disputed domain name to. The Panel concludes that such use does not confer any rights or legitimate interests in the disputed domain name on the Respondent.

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 such trademarks in their entirety, combined with the highly suggestive and descriptive component “-sell”, clearly and consciously targeted the Complainant’s trademarks, and 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 used by the Respondent as an e-commerce website for unauthorized IQOS-branded products as well as competing third party products. Such website clearly displayed the Complainant’s well-known trademark IQOS on the home page and throughout the rest of the website, without the authorization of the Complainant, and prominently used the Complainant’s official product images throughout such website, combined with elements such as a copyright notice which suggested that the Respondent was affiliated or connected with the Complainant. The Panel concludes that the Respondent intentionally attracted Internet users for commercial gain to the disputed domain name, by creating consumer confusion between the disputed domain name and the Complainant’s trademarks (see paragraph 4(b)(iv) of the Policy). However, on the date of this decision, the disputed domain name directs to a website which only contains an email address to send offers to buy the disputed domain name to. Nevertheless, in view of the above conclusions, the Panel accepts that it has been sufficiently proven that the Respondent’s aim in registering and using the disputed domain name was to profit from, or to unlawfully exploit the Complainant’s trademarks for IQOS. On the basis of all of the foregoing elements, the Panel accepts that it has been demonstrated that the Respondent 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.

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 <iqos-sell.com> be transferred to the Complainant.

Deanna Wong Wai Man
Sole Panelist
Date: July 9, 2021

¹ For privacy reasons, the email address shown on the website linked to the disputed domain name is redacted here.