WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. 杨溪 (Yang Xi)

Case No. D2021-3107

1. The Parties

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

The Respondent is 杨溪 (Yang Xi), China.

2. The Domain Name and Registrar

The disputed domain name <iqoscncn.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2021. On September 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 22, 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 September 24, 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 September 27, 2021.

On September 24, 2021, 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 September 27, 2021. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with 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 September 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2021.

The Center appointed Douglas Clark as the sole panelist in this matter on November 5, 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 part of a group of companies affiliated with Philip Morris International Inc. (“PMI”). PMI is an international tobacco company with products sold in around 180 countries. One of the products developed and sold by PMI is IQOS, a heating device where specially designed tobacco products are inserted and heated to generate a nicotine-containing aerosol, which comes with a corresponding pocket charger. The IQOS system has obtained 20% of the market share in Japan and is available in cities in around 67 markets around the world. As a result of PMI’s sales and marketing efforts, IQOS has achieved international reputation, with approximately 19.1 million relevant consumers worldwide.

The Complainant owns a large portfolio of IQOS trade marks worldwide for its smoke-free products. Among them include the following trade mark registrations:

The disputed domain name <iqoscncn.com> was registered on July 3, 2021. At the date of filing of this Complaint, the disputed domain name resolved to a website purportedly selling the Complainant’s products as well as tobacco products of at least one third party.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(a) The disputed domain name is confusingly similar to its trade mark. The disputed domain name wholly incorporates the IQOS trade mark followed by the terms “cncn” and “.com”. The addition of the terms in the disputed domain name does not eliminate the overall notion that the designation is connected to the trade mark and the likelihood of confusion that the disputed domain name and the trade mark are associated;

(b) The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant in any way and the Complainant has never granted any authorisation or license to use the Complainant’s trade mark. The Respondent is not commonly known by the disputed domain name, and has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name; and

(c) The disputed domain name is registered and is being used in bad faith. The mere fact that the Respondent has registered the disputed domain name incorporating the trade mark of a well-known company gives rise to an inference of bad faith. Based on the use of the disputed domain name, the Respondent registered and is using the disputed domain name to attract Internet users for commercial gain, creating a likelihood of confusion with the Complainant’s trade mark.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

6.1 Preliminary Issue – Language of the Proceeding

According to paragraph 11(a) of the Rules, 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.

In this case, the language of the Registration Agreement for the disputed domain name is in Chinese. Based on the given evidence, there is no agreement between the Complainant and the Respondent regarding the language of the proceeding. The Respondent did not respond as to the language of the proceeding. The Complainant has filed its Complaint in English and has requested that English be the language for the proceeding under the following grounds:

a) the Complainant communicates in English and would be prejudiced if it is required to translate the Complaint and supporting documents into Chinese;

b) in order to proceed in Chinese, the Complainant would have had to retain specialised translation services that would cause an unnecessary burden to the Complainant and delay the proceeding;

c) the Respondent has demonstrated that he or she understands English since the disputed domain name resolves to a website which includes a number of English words and/or phrases;

d) the disputed domain name is in Latin script and not Chinese script; and

e) the English language being a common language in global business and a language in which the Respondent is doing business in.

In accordance with paragraph 11(a) of the Rules, the Panel hereby determines that the language of the proceeding shall be in English after considering the following circumstances:

- the Center has notified the Respondent in both English and Chinese of the language of the proceeding and the Complaint;

- the Respondent has not commented on the language of the proceeding;

- an order for the translation of the Complaint and other supporting documents will result in significant expenses for the Complainant and a delay in the proceeding.

Further, this Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.

6.2 Substantive Issues

The Complainant must satisfy all three elements of paragraph 4(a) of the Policy in order to succeed in its action:

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

(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

The Panel finds that the disputed domain name <iqoscncn.com> is confusingly similar to the Complainant’s trade marks. The disputed domain name incorporates the IQOS trade mark in full and is accompanied with the term “cn”, which is the two letter country abbreviation for China, repeated twice. The addition of the term “cncn” does not prevent a finding of confusing similarity. The disputed domain name is then accompanied with the generic Top-Level Domain (“gTLD”) “.com”. The gTLD is generally disregarded when considering the first element (see section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Complainant has therefore satisfied the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Respondent has not asserted any rights or legitimate interests in relation to the disputed domain name.

Section 2.1 of the WIPO Overview 3.0 provides:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Complainant has asserted that the Respondent has no business with and is in no way affiliated with the Complainant. The Respondent is not authorized nor licensed to use the Complainant’s IQOS trade mark or to apply for registration of the disputed domain name. There is no evidence that the Respondent has used or is planning to use the disputed domain name for a bona fide offering of goods or services. In addition, the Respondent has not responded to any of the Complainant’s contentions.

The Respondent appears to offer for sale the Complainant’s products on the website under the disputed domain name. Panels have recognized that resellers using a domain name containing the complainant’s trademark to undertake sales related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. As set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the panel in that case held that to be “bona fide” within the meaning paragraph 4(c)(i) of the Policy, the offering should meet the following requirements:

- The respondent must actually be offering the goods or services at issue;

- The respondent must use the site to sell only the trade marked goods; otherwise, it could be using the trade mark to bait Internet users and then switch them to other goods;

- The site must accurately and prominently disclose the registrant’s relationship with the trade mark owners; it may not, for example, falsely suggest that it is the trade mark owner, or that the website is the official site; and

- The respondent must not try to corner the market in all domain names, thus depriving the trade mark owner of reflecting its own mark in a domain name.

In this case, the Respondent does not meet, at least, the second and third requirements set out above. Products other than the Complainant’s products are also sold on the website under the disputed domain name. The website under the disputed domain name also does not accurately and prominently disclose the Respondent’s relationship with the Complainant.

The second element of paragraph 4(a) of the Policy is therefore satisfied.

C. Registered and Used in Bad Faith

Based on the given evidence, the disputed domain name was registered and is being used in bad faith.

The disputed domain name was registered long after the Complainant has registered the IQOS trade mark and the use of the Complainant’s IQOS trade mark cannot be a coincidence. The term “Iqos” is an invented term and unique to the Complainant. The Panel is satisfied that the Respondent was aware of the Complainant and its IQOS trade mark when he or she registered the disputed domain name.

The Respondent has registered the disputed domain name to attract Internet users to the website for commercial gain in accordance with paragraph 4(b)(iv) of the Policy. By displaying and reproducing the Complainant’s IQOS trade mark on the website under the disputed domain name, along with the Complainant’s official product images and marketing materials, and offering products for sale, the Respondent is clearly seeking to attract users for commercial gain.

For the above reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith.

The Complainant has therefore satisfied the third element under 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, <iqoscncn.com>, be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: November 20, 2021