WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Shen Zhen Shi Wei Ya Tuo Mao Yi You Xian Gong Si

Case No. D2019-1512

1. The Parties

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

The Respondent is Shen Zhen Shi Wei Ya Tuo Mao Yi You Xian Gong Si, China.

2. The Domain Name and Registrar

The disputed domain names <iqos.link> and <99iqos.com> are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2019. On July 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 2, 2019, 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 July 3, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed the first amended Complaint in English on July 5, 2019. The Center sent the Complaint Deficiency Notification regarding the Registrar information on July 9, 2019. The Complainant filed the second amended Complaint in English on the same day.

On July 3, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. On July 5, 2019, 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 Complaints 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 of the Complaint in English and Chinese, and the proceedings commenced on July 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2019.

The Center appointed Rachel Tan as the sole panelist in this matter on August 7, 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 is a part of the group of companies affiliated with Philip Morris International Inc. (“PMI”). PMI is a major international player in the tobacco industry, with products sold in more than 180 countries.

PMI developed an electrically-heated tobacco smoking system branded IQOS. The IQOS products were first launched in Nagoya, Japan, in 2014. To date, the IQOS products are available in key cities in 44 markets across the world. The IQOS products are almost exclusively distributed through PMI’s official stores and websites as well as authorized distributors and retailers. The Complainant claims that as a result of USD 6 billion investment and extensive international sales and marketing efforts, the IQOS products have achieved considerable international success and reputation.

The Complainant holds worldwide registrations of the IQOS trademark, including International Registration No. 1218246, registered on July 10, 2014 in classes 9, 11 and 34, and International Registration No. 1329691, registered on August 10, 2016 in classes 9, 11 and 34.

The disputed domain name <iqos.link> was registered on August 17, 2017 and <99iqos.com> was registered on August 27, 2017. The disputed domain names resolve to websites allegedly offering repair and maintenance services for the Complainant’s IQOS System.

5. Parties’ Contentions

A. Complainant

Procedural Issue

The Complainant wishes to rely on paragraph10(e) of the Rules to consolidate <iqos.link> and <99iqos.com> in one dispute based on below facts:

(a) The registrant of the disputed domain names is identical;

(b) Each of the respective websites associated with the disputed domain names contain the identical logo / designation at the top of the websites;

(d) Each of the respective websites associated with the disputed domain names contain the identical telephone contact number.

Substantive Issues

The Complainant contends that the disputed domain names, <iqos.link> and <99iqos.com>, are identical or confusingly similar to its IQOS trademark, which has acquired a considerable degree of fame and recognition. For <99iqos.com>, the addition of “99” in the disputed domain name is not sufficient to distinguish the disputed domain name from the Complainant’s IQOS trademark. “.link” and “.com” are viewed as standard registration requirement and are disregarded under the first element confusing similarity test.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its IQOS trademark. The disputed domain names resolve to websites presenting the Complainant’s official copyright protected material, to mislead the public, which cannot be considered a bona fide offering of goods and does not establish legitimate interests on the part of the Respondent.

The Complainant finally contends that the disputed domain names were registered and are being used in bad faith. From the Respondent’s use of the disputed domain names that the Respondent knew of the Complainant’s IQOS trademark when registering the disputed domain names. The Respondent is using the disputed domain names with the intention to attract, for commercial gain, interest users to the websites by creating a likelihood of confusion with the Complainant’s IQOS trademark.

B. Respondent

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

6. Discussion and Findings

6.1 Procedural Issues

A. Language of the Proceeding

The Panel must first 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 regarded 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 Registrar has confirmed to the Center that the language of the Registration Agreement is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding. The Respondent did not comment on the language of the proceeding. The Center proceeded to issue its case-related communication to the Parties in both English and Chinese. The Center decided to accept the Complaint as filed in English, accept a response in either English or Chinese, and appoint a Panel familiar with both languages. The appointed panel has the discretion to decide the language of 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 incorporated in Switzerland. Requiring the Complainant to submit the Complaint in Chinese would lead to delay and impose an unreasonable burden on the Complainant;

(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 reply to the Complainant’s contentions. 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.

B. Consolidation of Multiple Disputed Domain Names in One Dispute

Pursuant to paragraph 10(e) of the Rules: “[a] Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.”

In this case, the two disputed domain names are <iqos.link> and <99iqos.com>. The Panel notes that the disputed domain names share common features:

(a) The disputed domain names are both registered in the name of Shen Zhen Shi Wei Ya Tuo Mao Yi You Xian Gong Si;

(b) The disputed domain names share the same email address: […]@foxmail.com;

The above facts lead the Panel to find that the disputed domain names are under the common control of the same registrant, and can be consolidated in one dispute.

6.2 Substantive Issues

A. Identical or Confusingly Similar

The Complainant is the owner of IQOS International Registration No. 1218246, registered on July 10, 2014 and International Registration No. 1329691, registered on August 10, 2016. The registrations cover, amongst others, class 34 goods such as heating installations for liquids, steam generating installations, heating installations for tobacco and tobacco products and electric evaporators.

The Panel finds that the Complainant’s IQOS trademark is wholly encompassed within the two disputed domain names, <iqos.link> and <99iqos.com>. In respect of <99iqos.com>, the mere incorporation of two numbers “99” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s IQOS trademark. The addition of the suffixes, “.link” and “.com”, which are generic Top-Level Domain (“gTLD”), can be disregarded as a technical requirement of every domain name registration. See Groupon, Inc. v. Whoisguard Protected, Whoisguard, Inc. / Vashti Scalise, WIPO Case No. D2016-2087. Therefore, the Panel finds that the disputed domain names are identical or confusingly similar to the Complainant’s IQOS trademark.

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

B. Rights or Legitimate Interests

The Panel notes that the Respondent is not commonly known by the disputed domain names. Moreover, there is no evidence to demonstrate that the Respondent is using the disputed domain names in connection with a bona fide offering goods or services or making legitimate noncommercial or fair use of the disputed domain names. Rather, the Respondent explicitly claims to be a “professional” provider of IQOS repair and maintenance services. The display of the Complainant’s IQOS trademark and product images could easily confuse the public into thinking that the Respondent is authorized by the Complainant, when no such authorization exists. The Respondent has failed to submit a reply to rebut the Complainant’s contentions. Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. See OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, WIPO Case No. D2015-1149.

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

C. Registered and Used in Bad Faith

The Complainant owns worldwide registrations for the IQOS trademark. Both of the disputed domain names were registered later than the Complainant’s IQOS trademark.

The search results using the keyword “IQOS” on the Baidu search engine directs Internet users to news about the Complainant and its IQOS products, which indicate an exclusive connection between the IQOS trademark and the Complainant. This evidences the fact that the Complainant and its IQOS trademark have gained a degree of reputation and recognition in China. The disputed domain names resolve to websites displaying the Complainant’s IQOS trademark and IQOS product images. This demonstrates an awareness of the Complainant and its IQOS trademark by the Respondent.

On the websites accessed through the disputed domain names, the content “IQOS 维修” (“IQOA maintenance”), “IQOS 介绍” (“IQOS introduction”) appears prominently at the top, and “iqos©2018” at the bottom. This evidences the fact that the Respondent has an intention to attract, for commercial gain, Internet users to the two websites by creating a likelihood of confusion with the Complainant’s IQOS trademark as to the source, sponsorship, affiliation, or endorsement of its websites or location of its products and services.

Therefore, the Panel finds that the disputed domain names were registered and are being used in bad faith. See Booking.com BV v. Chen Guo Long, WIPO Case No. D2017-0311.

Accordingly, the Panel concludes 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.link> and <99iqos.com>, be transferred to the Complainant.

Rachel Tan
Sole Panelist
Date: August 21, 2019