ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Luo Hao

Case No. D2018-2693

1. The Parties

The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Simone Intellectual Property Services Asia Limited, China.

The Respondent is Luo Hao of Guang’an, Sichuan, China.

2. The Domain Name and Registrar

The disputed domain name <iqostokyo.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 23, 2018. 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 26, 2018, 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 26, 2018 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 on November 28, 2018.

On November 26, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed, in Chinese, its request that English be the language of the proceeding on November 27, 2018. 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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on December 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2018.

The Center appointed Matthew Kennedy as the sole panelist in this matter on January 14, 2019. 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, a smoke-free product, in Japan in 2014. IQOS consists of an electronically-controlled device into which a tobacco stick is inserted and heated to create a tobacco vapor. 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 and Chinese trademark registration number 16314287 for IQOS in a particular script (the “IQOS logo”), both registered from May 14, 2016 and both specifying goods including electronic cigarettes in class 34. Both trademark registrations remain in effect.

The Respondent is an individual resident in China. The disputed domain name was created on April 24, 2018. It resolves to a website in Chinese titled “IQOS Tokyo” that presents the Complainant’s IQOS products. The website prominently displays the Complainant’s IQOS logo together with photographs of the city of Tokyo. The website displays a QR code that invites Internet users to enquire regarding the purchase of IQOS products via a messaging and mobile payment platform.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to the IQOS word trademark. It contains that trademark in its entirety. The mere addition of the word “Tokyo”, a geographic term for the capital city of Japan, will not serve at all to differentiate the disputed domain name from the trademark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not authorized by the Complainant to use its IQOS trademarks. There is no legitimate non‑commercial or fair use of the disputed domain name made by the Respondent.

The disputed domain name was registered and is being used in bad faith. The Respondent has maliciously registered the disputed domain name with clear knowledge of the Complainant’s registered IQOS trademark. The Respondent’s website falsely claims to be authorized by the Complainant and makes unauthorized use of promotional materials produced by the Complainant itself, which is a clear effort to create the false impression that the Respondent’s business is supported by, associated with, authorized or endorsed by the Complainant.

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 translation of the Complaint would add unnecessary costs and cause delay in the commencement of the proceeding.

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. Despite having received notice of these proceedings in Chinese and English, the Respondent has not 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.

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 submitted, the Panel finds that the Complainant has rights in the IQOS trademark.

The disputed domain name wholly incorporates the Complainant’s IQOS trademark as its initial and only distinctive element. It also includes the city name “Tokyo” but, as a mere geographical term, this additional element is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant’s trademark. See Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768.

The only other element in the disputed domain name is the generic Top-Level Domain (“gTLD”) suffix “.com”. A gTLD suffix is generally disregarded for the purposes of assessing confusing similarity under the Policy. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. Zhanglei, WIPO Case No. D2014‑0080.

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 is being used in connection with a website that offers for sale the Complainant’s IQOS products. The Complainant submits that the Respondent is not authorized by the Complainant to use its IQOS trademarks. The Panel notes that, even if the products offered for sale on the Respondent’s website are genuine, the website is misleadingly presented in such a way that it appears to be an IQOS website operated by, or affiliated with, the Complainant. There is no disclaimer that notes the lack of relationship between the Respondent and 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 “Luo Hao”, not “iqostokyo” or even “iqos”. 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 a website that offers goods for sale. 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 he 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 2018, years after the Complainant obtained its trademark registrations for IQOS, including in China, where the Respondent is resident. The disputed domain name wholly incorporates the Complainant’s IQOS trademark as its only distinctive element. The website to which the disputed domain name resolves displays the Complainant’s IQOS logo and presents the Complainant’s products. This all indicates that the Respondent was aware of the Complainant and its IQOS trademark at the time that he registered the disputed domain name and that he deliberately chose to register that trademark as part of the disputed domain name in bad faith.

The Respondent uses the disputed domain name, which is confusingly similar to the Complainant’s IQOS trademark, in connection with a website that offers for sale the Complainant’s products and gives the false impression that it is 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. This use is intentional and for commercial gain 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 <iqostokyo.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: January 18, 2019