WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. 深圳市元雾科技有限公司 (shen zhen shi yuan wu ke ji you xian gong si)

Case No. D2021-1039

1. The Parties

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

The Respondent is 深圳市元雾科技有限公司 (shen zhen shi yuan wu ke ji you xian gong si), China.

2. The Domain Names and Registrar

The disputed domain names <iqosin.com> and <iqosspace.com> are 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 April 6, 2021. On April 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 7, 2021, the Registrar transmitted by email to the Center its verification response 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 April 15, 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 April 19, 2021.

On April 15, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On April 19, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondents 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 May 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2021. The Respondent sent a short email in Chinese on April 21, 2021 in relation to both disputed domain names. The content is set out below. Other than its email dated April 21, 2021, the Respondent did not submit any substantive response. On May 28, 2021, the Center notified the Parties that it would proceed to panel appointment.

The Center appointed Douglas Clark as the sole panelist in this matter on June 9, 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 64 markets around the world. As a result of PMI’s sales and marketing efforts, IQOS has achieved international reputation, with approximately 17.6 million consumers worldwide.

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

The disputed domain name <iqosin.com> was registered on March 6, 2021 and the disputed domain name <iqosspace.com> was registered on December 4, 2020. At the date of this Complaint, the disputed domain names respectively resolve to websites selling third party tobacco products and accessories.

The registrant of the disputed domain names was identified by the Registrar as 深圳市元雾科技有限公司 (shen zhen shi yuan wu ke ji you xian gong si) (or, translated into English, Shenzhen City Yuanwu Science and Technology Co Ltd). The contact person was identified as an individual, 野又骅 (ye you hua). The company and the individual have both named as the Respondent in the amended Complaint but according to the Registrar’s verification, the registrant should be 深圳市元雾科技有限公司 (shen zhen shi yuan wu ke ji you xian gong si). The panel refers to this company below as the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(a) The disputed domain names are confusingly similar to its trade marks. The disputed domain name <iqosin.com> wholly incorporate the IQOS and IQOS IN trade marks. The disputed domain name <iqosspace.com> wholly incorporate the IQOS trade mark and the addition of the term “space”. The additional term “space” in the disputed domain name <iqosspace.com> and generic Top-Level Domain (“gTLD”) “.com” in the disputed domain names do not eliminate the overall notion that the designations are connected to the trade marks and the disputed domain names are confusingly similar to the trade marks in which the Complainant has rights;

(b) The Respondent has no rights or legitimate interests in the disputed domain names. 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 marks. The Respondent is not commonly known by the disputed domain names, and have not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names; and

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

The Complainant requests the transfer of the disputed domain names.

B. Respondent

The Respondent contended in relation to both disputed domain names in an email dated April 21, 2021 that:

(a) The Registrar did not indicate that the disputed domain names were occupied when the Respondent registered the disputed domain names, which means that the disputed domain names were released to the public;

(b) The Respondent was not aware that the disputed domain names were previously registered by the Complainant or by other companies; and

(c) There was no malicious intent on part of the Respondent in the registration of the disputed domain names.

6. Discussion and Findings

6.1 Preliminary Issues – 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 Agreements for the disputed domain names 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 to 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 it understands English since the disputed domain names resolve to websites available in English;

d) the disputed domain names are 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 above matters (and in particular that the websites under the disputed domain names are in English) and the following circumstances:

- the Center has notified the Respondent of the proceeding in both English and Chinese.

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

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

6.2 Preliminary Issues – Multiple Domain Names

According to paragraph 10(e) of the Rules, the Panel has the power to consolidate multiple domain name disputes. Paragraph 3(c) of the Rules also provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. The Panel has the authority to consolidate multiple domain names into one dispute provided that (i) the domain names are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. See section 4.11.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).

In this case, the Complainant relied in its original Complaint on the following facts to show that the disputed domain names are subject to common control:

- the Registrar for the disputed domain names are identical;

- the websites linked to the respective disputed domain names are substantially identical; and

- the websites associated with the disputed domain names feature an identical FAQ and telephone contact number.

Given the Registrar has identified the registrant of each of the disputed domain names as the same company, the Panel accepts the Complainant’s application to consolidate the disputed domain names in the present proceeding.

6.3 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 names are 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 names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain names <iqosin.com> and <iqosspace.com> are confusingly similar to the Complainant’s trade marks. The disputed domain name <iqosin.com> incorporates the IQOS IN trade mark in full. The disputed domain name <iqosspace.com> incorporates the IQOS trade mark in full and accompanied with the term “space” which does not prevent a finding of confusing similarity. Both disputed domain names are then accompanied with the gTLD “.com”. The gTLD is generally disregarded when considering the first element. See section 1.11 of the WIPO Overview 3.0.

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

B. Rights or Legitimate Interests

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.”

To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defenses under UDRP, paragraph 4(c) include the following:

(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

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 and IQOS IN trade marks or to apply for registration of the disputed domain names. The disputed domain names respectively resolve to websites selling competing third party tobacco products and accessories. Further, there is no evidence on record that the Respondent has been commonly known by the disputed domain names.

Therefore, the Panel finds that the Complainant has made 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 disputed domain names.

The Respondent has not asserted any rights or legitimate interests in relation to the disputed domain names (other than that the Registrar did not indicate the disputed domain names were occupied).

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 names were registered and are being used in bad faith.

The disputed domain names were registered after the Complainant has registered the IQOS and IQOS IN trade marks and the use of the Complainant’s IQOS and IQOS IN trade marks cannot be a coincidence. The terms “iqos” and “iqos in” are invented terms. In addition, the Respondent began offering the competing products advertised as “compatible” with the Complainant’s IQOS system immediately after registering the disputed domain names. The Panel is satisfied that the Respondent was aware of the Complainant and its IQOS and IQOS IN trade marks when it registered the disputed domain names.

The Respondent has registered the disputed domain names to attract Internet users to the websites for commercial gain in accordance with paragraph 4(b)(iv) of the Policy. By reproducing the Complainant’s IQOS and IQOS IN trade marks in the disputed domain names the Respondent is clearly seeking to target the Complainant and its trade marks.

For the above reasons, the Panel finds that the disputed domain names were registered and are 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 names, <iqosin.com> and <iqosspace.com>, be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: June 23, 2021