WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. 赵波 (zhao bo), 上海聿讯贸易有限公司 (shang hai yu xun mao yi you xian gong si)

Case No. D2021-4088

1. The Parties

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

Respondent is 赵波 (zhao bo), 上海聿讯贸易有限公司 (shang hai yu xun mao yi you xian gong si), China.

2. The Domain Name and Registrar

The disputed domain name <iqqscn.com> is 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 December 7, 2021. On December 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 9, 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 named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 10, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in English on December 15, 2021.

On December 10, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On December 15, 2021, Complainant confirmed its request that English be the language of the proceeding. 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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on December 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 7, 2022.

The Center appointed Yijun Tian as the sole panelist in this matter on January 17, 2022. 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

A. Complainant

Complainant, Philip Morris Products S.A, is a company incorporated in Neuchâtel, Switzerland. It is part of a group of companies affiliated with Philip Morris International Inc. (“PMI”). PMI is a leading international tobacco company, which has business in approximately 180 countries.

Complainant has innovated, developed, and sold a number of products, including smoke-free products. One of such products is branded as “IQOS”, a controlled heating device into which specially designed tobacco products under the trademarks HEETS and HEATSTICKS are inserted and heated to generate a flavourful nicotine-containing aerosol.

Complainant has exclusive rights in the IQOS and IQOS related marks. Complainant is the exclusive owner of numerous IQOS trademarks worldwide, including the Chinese trademark for IQOS, registered on May 14, 2016 (registration number 16314286).

B. Respondent

Respondent is 赵波 (zhao bo), 上海聿讯贸易有限公司 (shang hai yu xun mao yi you xian gong si), China. The disputed domain name was registered on May 22, 2021. According to the Complaint and relevant evidence provided by Complainant, the disputed domain name was resolving to a website purporting to be an authorized online store for Complainant’s products.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is confusingly similar to the IQOS trademark. Employing an obvious or intentional “misspelling” of the IQOS trademark by replacing the letter “o” with the letter “q” in the word “iqos” to create the word “iqqs” and adding the suffix “cn” are not sufficient to avoid a finding of confusing similarity.

Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Complainant contends that Respondent has registered and used the disputed domain name in bad faith.

Complainant requests that the disputed domain name be transferred to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreements for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following main reasons:

a) The disputed domain name is in Latin script and not in Chinese script indicating that the website provided under the disputed domain name is directed to, at the very least, an English-speaking public.

b) The website under the disputed domain name also includes a number of English words and/or phrases, suggesting Respondent understands English.

c) Complainant being a Swiss entity has no knowledge of Chinese and, in the light of above considerations regarding Respondent’s knowledge of English, decided to file the Complaint in English being a common language in global business and obviously also a language, in which Respondent is doing business.

d) The Registrar in respect of the disputed domain name appears to also conduct its business in English, which can be seen at its website “whois.aliyun.com”. The website appears to be a multi-language website as one is able to select “English” at the language plugin located at the top right of the website.

e) The above further supports Complainant’s contention that Respondent is capable of communicating in English, and that English is a common language in global business.

Respondents did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) of the Rules allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, 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 other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in its abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). Section 4.5.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) further states:

“Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.

Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.” (See also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from Switzerland, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain name include Latin characters “iqqs” and the term “cn” (which is the English abbreviation of “China”), and is registered in the generic Top-Level Domain (“gTLD”) space comprising of the Latin characters “.com” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent 赵波 (zhao bo), 上海聿讯贸易有限公司 (shang hai yu xun mao yi you xian gong si), appears to be a Chinese resident and is thus presumably not a native English speaker. However, considering the following, the Panel has decided that English should be the language of the proceeding: (a) the disputed domain name includes Latin characters and the abbreviation of an English word, rather than mere Chinese scripts; (b) the gTLD of the disputed domain name is “.com”, so the disputed domain name seems to be prepared for users worldwide, including English speaking countries; (c) the disputed domain name resolved to a website, which is in both Chinese and English language, and contains English words, such as “Starter Kit”, “Warm White”, “Copyrightã2021 IQOS”, and “Contact Us”;¹ (d) the Center has notified Respondent of the proceeding in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; and (e) the Center informed the Parties, in English and Chinese, that it would accept a Response in either English or Chinese. The Panel would have accepted a response in either English or Chinese, but none was filed.

Accordingly, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Substantive Issues

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a)-(c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the IQOS marks. The Panel finds that the essential part of the disputed domain name “iqqs” is a mere misspelling of Complainant’s trademark IQOS by replacing the letter “o” with the letter “q”. In addition to this, the disputed domain name only differs from Complainant’s trademarks by the addition of the term “cn”, and the gTLD suffix “.com” to the IQOS marks. These do not compromise the recognizability of Complainant’s marks within the disputed domain name, nor eliminate the confusing similarity between Complainant’s registered trademarks and the disputed domain name (Walgreen Co. v. Lin yanxiao / Linyanxiao, WIPO Case No. D2016-1605; and Decathlon v. Zheng Jianmeng, WIPO Case No. D2019-0234).

Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”. (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Moreover, as to “typosquatting”, section 1.9 of WIPO Overview 3.0 states: “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.”

As the essential part of the disputed domain name (“iqqs”) is a mere misspelling of Complainant’s IQOS marks – by replacing the letter “o” with the letter “q”, the Panel finds the disputed domain name must be considered a typical example of typosquatting. Such a typosquatting and the addition of the letters “cn” are not sufficient to negate the confusing similarity between the disputed domain name and the IQOS marks.

Further, in relation to the gTLD suffix, section 1.11.1 of WIPO Overview 3.0 further states: “The applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”

The Panel, therefore, holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or

(iii) 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 Complainant’s trademarks.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein).

According to the Complaint, Complainant is a leading international tobacco company, which has business in approximately 180 countries. Complainant has innovated, developed, and sold a number of products, including smoke-free products, and one of such products is branded as IQOS. The IQOS marks have been registered internationally, including China since 2016, which precede Respondents’ registration of the disputed domain name (in 2021).

Moreover, Respondent, while not affiliated with Complainant, is offering purported “IQOS” branded products and services, and using IQOS trademark and product images from Complainant’s official website, and using the disputed domain name to claim it is an official website (“Copyright ã 2021 IQOS”) of Complainant’s IQOS products. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Philip Morris Products S.A. v. Lin Cheng, Han Ming, WIPO Case No. D2018-2688).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of legitimate use of the disputed domain name or reasons to justify the choice of the term “iqqscn” in the disputed domain name in their business operations. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the IQOS marks or to apply for or use any domain names incorporating the IQOS marks, and Respondent has, through the use of the disputed domain name and its webpage contents, created a likelihood of confusion with the IQOS marks.

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name in 2021, after the IQOS marks became internationally known. The disputed domain name is confusingly similar to the IQOS marks.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, the Panel finds that the disputed domain name resolved to a website selling purported “IQOS” products. It seems that Respondent made profits through the Internet traffic attracted to the website under the disputed domain name. (See BKS Bank AG v. Jianwei Guo, WIPO Case No. D2017-1041; BASF SE v. Hong Fu Chen, Chen Hong Fu, WIPO Case No. D2017-2203.)

The Panel notes that Respondent has not produced any evidence to establish its rights or legitimate interests in the disputed domain name.

Accordingly, Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name. The Panel, therefore, holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances, which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on the website or location.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and is using the disputed domain name in bad faith.

(a) Registration in Bad Faith

The Panel finds that Complainant has a widespread reputation in the IQOS marks with regard to its products and services. Complainant is a leading international tobacco company, which has business in approximately 180 countries. As mentioned above, IQOS marks are registered internationally, including in China (since 2016). It is not conceivable that Respondent would not have had actual notice of the IQOS marks at the time of the registration of the disputed domain name (in 2021) particularly given that Respondent has claimed it is an authorized website (“Copyright ã 2021 IQOS”) of Complainant’s “IQOS” products through the disputed domain name, and is selling purported “IQOS” products. The Panel, therefore, finds that the IQOS mark is not one that a trader could legitimately adopt other than for the purpose of creating an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondent has chosen not to respond to Complainant’s allegations. According to the UDRP decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of Respondent to respond to the Complaint further supports an inference of bad faith”. See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

Thus, the Panel concludes that the disputed domain name was registered in bad faith.

(b) Use in Bad Faith

Respondent is using the website resolved by the disputed domain name to sell purported “IQOS” products. Thus, the Panel concludes that Respondent is currently using the disputed domain name with the intention to attract, for commercial gain, Internet users to Respondent’s website.

Given the reputation of the IQOS marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website to which the disputed domain name resolves. In other words, Respondent has through the use of the disputed domain name created a likelihood of confusion with the IQOS marks. Moreover, as mentioned above, Respondent is selling purported “IQOS” products via the website to which the disputed domain name resolves, presumably for commercial gain.

The Panel, therefore, concludes that the disputed domain name was registered and is being used by Respondent in bad faith. Such use of the disputed domain name is also disruptive in relation to the interests of Complainant.

In summary, Respondent, by choosing to register and use the disputed domain name, which is confusingly similar to the IQOS marks, intended to ride on the goodwill of this trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conducts of Respondent as far as the website to which the disputed domain name resolves are indicative of registration and use of the disputed domain name in bad faith.

The Panel, therefore, holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all 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 <iqqscn.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: February 8, 2022

¹ See “http://iqqscn.com/”