WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. 上海揽檀实业有限公司 (Shang Hai Lan Tan Shi Ye You Xian Gong Si)

Case No. D2017-2419

1. The Parties

The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.

The Respondent is上海揽檀实业有限公司 (Shang Hai Lan Tan Shi Ye You Xian Gong Si) of Shenzhen, Guangdong, China, self-represented.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2017. 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 December 7, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On December 8, 2017, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. On December 11, 2017, the Complainant requested 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 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 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2018. The Respondent sent an email in English to the Center on December 14, 2017 querying “what can I do for you”, but it did not file a formal Response. On January 4, 2018, the Center informed the Parties of the commencement of the panel appointment process.

The Center appointed Matthew Kennedy as the sole panelist in this matter on January 10, 2018. 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 2014 and distributes it exclusively through its official IQOS stores and websites. IQOS consists of an electronically-controlled device into which a tobacco stick is inserted and heated to create a tobacco vapor. The Complainant owns multiple trademark registrations including international trademark registration number 1218246 for IQOS, registered from July 10, 2014; and international trademark registration number 1329691 for IQOS in a particular script and colors (the “IQOS logo”), registered from August 10, 2016, designating multiple jurisdictions including China. These registrations both specify goods including electronic vaporizers in class 11, and they remain in effect.

The Respondent is a company established in China. The disputed domain name was registered on September 21, 2017. It resolves to a website headed “IQOS wholesale” and titled “IQOS Health Service”, that sells what are alleged to be the Complainant’s IQOS products. The website prominently displays the Complainant’s IQOS logo and the Complainant’s photographs of its products and official stores. Prices are quoted in Chinese yuan. The contact telephone number is a Chinese mobile number.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s IQOS trademark. The disputed domain name is composed of that trademark and a Top-Level Domain (“TLD”) suffix.

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 the disputed domain name incorporating the IQOS trademark. The Respondent is not an authorized reseller of the Complainant’s products but the disputed domain name and the website give the impression that it has a commercial relationship with the Complainant. The website provides no information as to the true identity of the website provider.

The disputed domain name was registered and is being used in bad faith. The Respondent started offering the Complainant’s IQOS products immediately after registering the disputed domain name. The Respondent is using the disputed domain name in an intentional attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.

B. Respondent

Apart from sending a general email query to the Center, the Respondent did not respond 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 disputed domain name is in Latin characters; the website to which the disputed domain name resolves is in Chinese and English; and 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 Respondent’s email of December 14, 2017 to the Center was written in English, and the disputed domain name resolves to a website that is partly in English, from which it is reasonable to conclude that the Respondent is able to communicate in that language. 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 the 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. Its only additional element is the TLD suffix “.red”. A TLD 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 an online store that offers for sale what are alleged to be the Complainant’s IQOS products. The Complainant submits that it has not licensed or otherwise authorized the Respondent to use any of its trademarks or to register a domain name incorporating its IQOS trademark. Regardless of whether the products offered for sale on the Respondent’s website are counterfeit or genuine, the Panel notes that the website is misleadingly presented in such a way that it appears to be an IQOS website operated by, or affiliated with, 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 “上海揽檀实业有限公司” (Shang Hai Lan Tan Shi Ye You Xian Gong Si), which does not resemble “iqos” or even abbreviate to “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 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 2017, after the Complainant obtained its trademark registration for IQOS, including in China, where the Respondent is located. The disputed domain name incorporates the Complainant’s IQOS trademark in its entirety as its only distinctive element. The website to which the disputed domain name resolves displays the Complainant’s IQOS logo and the Complainant’s photographs of its products and official stores and offers for sale what are alleged to be the Complainant’s IQOS 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, which is confusingly similar to the Complainant’s IQOS trademark, in connection with a website that is an online store giving 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 <iqos.red> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: January 19, 2018