WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. 沈家峰 (Jeffrey sen), 汇联无限（北京）信息技术有限公司 (hui lian wu xian (bei jing) xin xi ji shu you xian gong si)

Case No. D2021-3454

1. The Parties

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

The Respondent is 沈家峰 (Jeffrey sen), 汇联无限（北京）信息技术有限公司 (hui lian wu xian (bei jing) xin xi ji shu you xian gong si), China.

2. The Domain Names and Registrars

The disputed domain name <iqos.wiki> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).

The disputed domain name <iqos9.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd.

(Collectively the “Registrars”.)

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2021. On October 19, 2021, the Center transmitted by email to the Registrars two requests for registrar verification in connection with the disputed domain names. On October 21, 2021, the Registrars transmitted by emails to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 21, 2021 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on October 22, 2021.

On October 21, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On October 22, 2021, 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 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 October 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 17, 2021.

The Center appointed Rachel Tan as the sole panelist in this matter on November 24, 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 the group of companies affiliated with Philip Morris International Inc. (“PMI”). PMI is an international tobacco company with products sold in approximately 180 countries. PMI developed a tobacco heating system called IQOS. It is a controlled heating device into which specially designed tobacco sticks under the brand names “Heets”, “HeatSticks” and “Terea” are inserted and heated to generate a flavourful nicotine-containing aerosol (the “IQOS System”). The IQOS System was first launched in Japan in 2014 and is available in around 66 markets across the world.

The Complainant is the owner of trade marks incorporating the “Iqos”, “Heets” and “” elements in multiple jurisdictions, including:

- China Registration No. 16314286 for IQOS registered on May 14, 2016 in class 34;
- International Registration No. 1218246 for IQOS registered on July 10, 2014, in classes 9, 11 and 34;
- International Registration No. 1338099 for registered on November 22, 2016, in class 35;
- International Registration No. 1328679 for registered on July 20, 2016, designating, inter alia, China, in classes 9, 11 and 34;
- International Registration No. 1332896 for registered on June 28, 2016, designating, inter alia, China, in classes 9, 11 and 34.

The Respondent is 沈家峰 (Jeffrey sen), 汇联无限（北京）信息技术有限公司 (hui lian wu xian (bei jing) xin xi ji shu you xian gong si), China.

The disputed domain name <iqos9.com> was registered on February 16, 2021 and the disputed domain name <iqos.wiki> was registered on March 21, 2021. At the time of filing of the Complaint and at the date of this Decision, both disputed domain names resolved to websites in Chinese which appeared to offer different versions of the IQOS System for sale. The resolved website at the disputed domain name <iqos.wiki> also appeared to offer for sale other brands of heating device and related products. Further, both resolved websites displayed the Complainant’s IQOS and marks together with images of the Complainant’s products.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it is the registered owner of the IQOS mark in numerous jurisdictions, including China. The disputed domain names are confusingly similar to its IQOS mark. The disputed domain names reproduce the IQOS mark in its entirety, with a non-distinctive numeral “9” or the domain extension “wiki”. Any Internet user when visiting a website provided under the disputed domain names will reasonably expect to find a website commercially linked to the owner of the IQOS mark.

The Complainant further alleges that it has made a prima facie case that the Respondent lacks any right or legitimate interest in the disputed domain names. The Respondent is not licensed or otherwise permitted to use any of the Complainant’s marks or to register a domain name incorporating the IQOS mark. The Respondent is not making a bona fide offering of goods or services as a reseller, distributor, or repair services operator because the disputed domain names suggest at least an affiliation with the Complainant and its IQOS mark. The Respondent is not only offering the Complainant’s products but also competing tobacco products and accessories of other commercial origin under the disputed domain name <iqos.wiki>. Further, the Respondent is using the Complainant’s registered marks and official product images without authorization and falsely claiming copyright in the product images.

The Complainant finally asserts that Respondent knew of the Complainant’s IQOS mark when registering the disputed domain names. The Respondent registered and used the disputed domain names with the intention to attract, for commercial gain, Internet users to the websites by creating a likelihood of confusion with the Complainant’s registered IQOS mark as to the source, sponsorship, affiliation, or endorsement of its websites or locations or of a product or service on its websites or locations. The Respondent is not only using the Complainant’s IQOS mark for the purposes of offering for sale the IQOS System, but also for purposes of offering for sale third party products of other commercial origin, which is abusive use of the Complainant’s IQOS mark.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.

In this case, the Registrars have confirmed to the Center that the language of the Registration Agreements as used by the registrants for the disputed domain names is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding for the reasons summarized below:

(a) the disputed domain names are in Latin script, which indicate that the websites provided under the disputed domain names are directed to, at the very least, an English-speaking public;

(b) the fact that the websites under the disputed domain names also include a number of English words and/or phrases, suggesting the Respondent understands English;

(c) the Complainant being a Swiss entity has no knowledge of Chinese;

(d) the Registrars appear to conduct its business in English; and

(e) English is a common language in global business.

It is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.

The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below:

(a) the Complainant is a company based in Switzerland. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;

(b) English is not the native language of either Party;

(c) even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request;

(d) the Respondent has failed to participate in the proceeding even though the Center sent the notification in English and Chinese of the Complaint, and has been notified of its default; and

(e) the Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.

Accordingly, the Panel will proceed with issuing this Decision in English.

6.2 Substantive Issues

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the IQOS mark.

The Panel notes that the IQOS marks is wholly encompassed within each of the disputed domain names. The positioning of the IQOS mark makes it instantly recognizable as the most distinctive elements of the disputed domain names. In cases where a domain name incorporates the entirety of a trade mark, 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 section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Further, it is accepted by previous UDRP panels that the addition to the complainant’s trade mark of other words or terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not affect the confusing similarity of the domain name from the registered trade mark under the first element of the Policy. As such, the Panel finds the additional number “9” does not preclude a finding of confusing similarity between the IQOS mark and the disputed domain name <iqos9.com>. See section 1.8 of the WIPO Overview 3.0.

Lastly, it is permissible for the Panel to disregard the generic Top-Level Domain (“gTLD”) in the disputed domain names, i.e., “.com” in the disputed domain name <iqos9.com> and “.wiki” in the disputed domain name < iqos.wiki>. It is accepted by UDRP panels that the practice of disregarding the gTLD in determining identity or confusing similarity is applied irrespective of the particular gTLD (including with regard to “new gTLD”) and the ordinary meaning ascribed to a particular gTLD would not necessarily impact the assessment of the first element. See sections 1.11.1 and 1.11.2 of the WIPO Overview 3.0.

Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

In circumstances where the Complainant possesses exclusive rights to the IQOS mark, whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain names. See section 2.1 of the WIPO Overview 3.0.

The Respondent has not provided evidence of a legitimate noncommercial or fair use of the disputed domain names or reasons to justify the choice of the term “iqos”. There is no indication to show that the Respondent is commonly known by the disputed domain names or otherwise has rights or legitimate interests in it. In addition, the Complainant has not granted the Respondent a license or authorization to use the Complainant’s IQOS mark or register the disputed domain names.

The Panel notes that the disputed domain names both resolve to websites in Chinese which allegedly offer the IQOS System for sale. The websites display the Complainant’s IQOS and marks together with images of the Complainant’s products. The websites do not accurately and prominently disclose a lack of a commercial relationship between the Complainant and the Respondent. The website at the disputed domain name <iqos.wiki> also offers for sale other brands products. Therefore, the facts do not support a claim of a bona fide offering of goods or services under the “Oki Data test”. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Moreover, the disputed domain names carry a risk of implied affiliation with the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

None of the circumstances in paragraph 4(c) of the Policy are present in this case. For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.

Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Complainant’s IQOS mark was registered well before the registration of the disputed domain names. Through use and advertising, the Complainant’s IQOS mark is known throughout the world, including China. Moreover, “iqos” is not merely a term. Search results using the term “iqos” on the Internet search engines direct Internet users to the Complainant and its products, which indicates that an exclusive connection between the IQOS mark and the Complainant has been established. As such, the Respondent either knew or should have known of the Complainant’s IQOS mark when registering the disputed domain names or have exercised “the kind of willful blindness that numerous panels have held support a finding of bad faith”. See eBay Inc. v. Renbu Bai, WIPO Case No. D2014-1693; Barclays Bank PLC v. Andrew Barnes, WIPO Case No. D2011-0874.

The Panel notes that the disputed domain names both resolve to websites allegedly offering for sale the Complainant’s IQOS branded system accompanied by images of the products, and on which the Complainant’s IQOS and marks prominently appear. The resolved website of the disputed domain name <iqos.wiki> also offers for sale other brands of heating devices and related products. The lack of a disclaimer that the Respondent is not affiliated with the Complainant is noticeably absent. Conversely, the content on the websites leads consumers to think that the online stores are authorized by the Complainant.

The Panel is satisfied that the Respondent intends to take advantage of the reputation of the Complainant’s trade mark to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s mark as to source, affiliation or endorsement of its websites. This demonstrates bad faith registration and use of the disputed domain names, as provided in paragraph 4(b)(iv) of the Policy.

Given all the circumstances of the case, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain names and, considering the Respondent’s lack of rights or legitimate interests, and by registering and using the disputed domain names as discussed above, the Panel is led to conclude that the disputed domain names were registered and are being used in bad faith.

Accordingly, the Panel finds that the Complainant has 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 names, <iqos.wiki> and <iqos9.com>, be transferred to the Complainant.

Rachel Tan
Sole Panelist
Date: December 7, 2021