WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Lu Kuan, Fu Zhen Bao

Case No. D2018-1659

1. The Parties

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

The Respondent is Lu Kuan, Fu Zhen Bao of China.

2. The Domain Names and Registrar

The disputed domain names <iqosiejr.top> and <iqosshop.top> are registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2018. On July 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 25, 2018, 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 July 26, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on July 30, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.

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 August 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2018.

The Center appointed Jonathan Agmon as the sole panelist in this matter on September 5, 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, Philip Morris Products S.A., is part of a corporate group owned by Philip Morris International, Inc. (“PMI”), a tobacco company. PMI developed and distributes a product under the trademark IQOS, which is a controlled heating device in which specially designed tobacco sticks, called “Heets” and “HeatSticks” are inserted and heated to create a tobacco vapor. The IQOS system also consists of an IQOS Pocket Charger, which is designed to charge the IQOS Holder (hereinafter collectively referred to as the “IQOS Products”). The IQOS Products were first launched by PMI in Japan in 2014 and are being sold in around 38 countries worldwide today through PMI’s official IQOS stores and websites and selected authorized distributors and retailers.

The Complainant is the owner of numerous trademarks worldwide for the mark IQOS, including:

- IQOS (International Reg No. 1218246) registered on July 10, 2014 in numerous countries, including in China;

- (International Reg No. 1329691) registered on August 10, 2016;

- HEETS (International Reg No. 1326410) registered on July 19, 2016 designating numerous countries, including China;

- (International Reg No. 1328679) registered on July 20, 2016 designating numerous countries, including in China.

Further to the above, the Complainant also provided a list of the Complainant’s other IQOS trademarks.

The disputed domain names <iqosiejr.top> and <iqosshop.top> were registered on May 14, 2018 and April 16, 2018 respectively and both domain names resolve to websites selling the goods of the Complainant at extremely discounted prices.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions include the following:

The Complainant argues that the disputed domain names are confusingly similar to the Complainant’s registered mark IQOS as the disputed domain names wholly incorporate the IQOS trademark and only differs from the IQOS trademark by the addition of the descriptive term “shop” and a generic term “iejr”. The Complainant states that it has rights in the trademarks through numerous trademark registrations in many jurisdictions and that the Respondent’s use of its marks in the disputed domain names, and websites would mislead Internet users to believe that the Respondent is an official reseller of the Complainant.

The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names as it has not licensed or permitted the Respondent to use any of its trademarks or register the disputed domain names. Despite not being authorized by the Complainant, the Respondent is purportedly selling products of the Complainant on its websites at highly discounted prices, likely for fraudulent purposes.

The Complainant further argues that the disputed domain names were registered and are being used in bad faith as the Respondent is using the disputed domain names with the intention to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s mark.

B. Respondent

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

6. Discussion and Findings

6.1 Procedural Issues

6.1.1 Language of the Proceeding

Paragraph 11 of the Rules provides that:

“(a) 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 language of the Registration Agreements for the disputed domain names is Chinese.

The Complainant requested that the language of the proceeding be English.

The Respondent did not comment on the language of the proceeding.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding.

However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (see Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

“Indeed, in the Panel’s view a Respondent’s failure to respond to these notices should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint. That is not to say, there will not be cases, where the Panel will not consider this appropriate and after balancing all the factors of the case make other determinations as to the appropriate language of the proceeding or how to proceed. However, a clear default by a Respondent who has been informed in its own language of the proceedings, and of the preliminary acceptance of the Complaint in a particular language, would certainly be a strong factor in support of a Panel subsequently determining that there should be consistency between the language of the Complaint as originally accepted and the language of proceedings as ultimately determined by the Panel.” (see Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191)

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:

(i) The disputed domain names consist of Latin letters, rather than Chinese characters, and the websites to which the disputed domain names resolve are in English;

(ii) To require the Complainant to translate the Complaint and all other supporting documents in Chinese would cause an unnecessary burden to the Complainant and unnecessary delay the proceeding;

(iii) The Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language;

(iv) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.

Upon considering the above, the Panel determines that English be the language of the proceeding.

6.1.2 Filing a Complaint against Multiple Respondents

Paragraphs 3(c) and 10(e) of the Rules respectively provide that:

“The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.”

“A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.”

As neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative procedure, the Panel looks to past UDRP decisions for guidance.

The Panel cites the following with approval:

“The Panel concludes from its review of the relevant UDRP panel decisions discussed above that the consolidation of multiple domain name disputes under paragraph 3(c) or 10(e) of the Rules may be appropriate, even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve. As noted above, indicia of common control have been found based on commonalities in registrant information, such as shared administrative or technical contacts and shared postal or email addresses, as well as other circumstances in the record indicating that the respondents are related or that a sufficient unity of interests otherwise exists that they may be essentially treated as a single domain name holder for purposes of paragraph 3(c) of the Rules.”

The Panel also finds it appropriate to look in certain respects for guidance to panel decisions under paragraph 10(e) regarding the consolidation of multiple complaints and multiple domain name disputes against a single domain name registrant. With a view to the general principles articulated in these decisions, even where common control of the disputed domain names is established, in this Panel’s view the disputes must still be appropriate for consolidation in the context of the summary administrative proceeding provided for under the Policy. Thus, it is incumbent upon panels to determine that any consolidation of multiple respondents under paragraph 10(e) will be both procedurally efficient and fair and equitable to all parties. See, e.g., National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, WIPO Case No. DAU2008-0021.

In view of the foregoing, the Panel concludes that the consolidation of multiple registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraph 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel, having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.” (see Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2)

In the present case, the registrants of the disputed domain names appear to be different from the WhoIs database at first glance. The registrant for <iqosiejr.top> is “fu zhen bao” and the registrant for <iqosshop.top> is “lu kuan”. However, the Complainant has submitted evidence that the contact phone numbers of both registrants, country of origin and name servers are the same for both registrants. Further, the Panel has identified a very similar pattern of irregularities in both registrants’ postal and email address information in which the former consist of fake addresses with random inconclusive Chinese words and disorderly or accidental alphabets and the latter are inconclusive as to the identity of their owners. Lastly, the websites which both disputed domain names resolve to are identical websites with respect to the content and layout. These websites are identical down to the identical privacy notice and shipping & return policies.

From the foregoing, and especially given the identity of the websites to which the disputed domain names resolve and in the particular circumstances of the present case, the Panel is of the view that there is common control being exercised over the disputed domain names and websites and it is very likely that the disputed domain names belong to the same owner, or are being controlled by the same person or entity.

Accordingly, having regard to the above circumstances, the Panel is of the view that the consolidation of the multiple domain name disputes asserted by the Complainant against the Respondent is consistent with the Policy and Rules, and is in line with prior relevant UDRP decisions in this area. The Panel will proceed to a decision on the merits of these domain name disputes.

6.2 Substantive Issues

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant has provided evidence of its numerous trademarks’ registrations in various jurisdictions worldwide, including China, where the Respondent seems to be based and registered the disputed domain names.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The disputed domain names <iqosiejr.top> and <iqosshop.top> integrate the Complainant’s IQOS trademark in its entirety (see Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345).

The insertion of the term “iejr”, which appears to have no meaning and the descriptive term “shop” respectively do not differentiate the disputed domain names from the Complainant’s IQOS mark as the primary element in the disputed domain names is IQOS. Further, the additions of the generic Top-Level Domain (“gTLD”) “.top” to the disputed domain names also do not differentiate the disputed domain names from the Complainant’s trademark. As such, these additions do not avoid confusing similarity (see Compagnie Générale des Etablissements Michelin v. PrivacyDotLink Customer 1197652 / Alex Hvorost, WIPO Case No. D2016-1923; AB Electrolux v. ID Shield Service, Domain ID Shield Service CO., Limited / Maksim, zanussi-shop.com, WIPO Case No. D2015-2027; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Volkswagen AG v. Hui Min Wang, Wang Hui Min, WIPO Case No. D2017-0860).

In the particular circumstances of the present case, the Panel is of the view that the disputed domain names are identical or confusingly similar to the Complainant’s trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name. See WIPO Overview 3.0, section 2.1.

In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests.

The Complainant has provided evidence that it owns numerous trademark registrations in multiple jurisdictions before the disputed domain names were registered and that it has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks. See LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138.

The Complainant has also provided evidence that the Respondent is not commonly known by the disputed domain names. The WhoIs records show that the disputed domain names are registered under “fu zhen bao” and “lu kuan” which bear no resemblance to the disputed domain names <iqosiejr.top> and <iqosshop.top> in any way. (see Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875; WIPO Overview 3.0, section 2.3)

The Complainant also submitted evidence that the Respondent is not engaging in a bona fide offering of goods and services. The Respondent is offering what the Complainant has argued are goods bearing the Complainant’s IQOS and HEET trademarks on websites which show the IQOS mark at the top header “SHOP IQOS” prominently, suggesting affiliation with the Complainant. The Respondent is also using what the Complainant identified as texts, advertisements and images belonging to the Complainant, on the websites under the disputed domain names. Moreover, the goods offered on the websites to which the disputed domain names resolve are being priced at very low prices, with prices showing some 70% lower than the cost of the same products when sold by the Complainant. Such low prices are indicative of sales of counterfeit products and of the intent to induce Internet users into making a purchase.

By engaging in such acts, the Respondent is free riding on the Complainant’s reputation and goodwill to mislead unsuspecting Internet users to the disputed domain names’ websites and creating a false impression that the Respondent is affiliated with and an authorized distributor or reseller of the Complainant when the Complainant’s IQOS products are mainly distributed through official stores. There is also no information on the Respondent’s websites clarifying the Respondent’s relationship (or lack thereof) to the Complainant. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.

Further, past UDRP Panels have held that use of domain names for illegal activities of this nature cannot confer rights or legitimate interests on a respondent. See Philipp Plein v. Privacy Protection Service INC d/b/a PrivacyProtect.org / Norma Brandon, cheapphilippplein, WIPO Case No. D2015-1050; Karen Millen Fashions Limited v. Belle Kerry,WIPO Case No. D2012-0436; WIPO Overview 3.0, section 2.13.1. The Panel therefore finds that these acts by the Respondent do not amount to legitimate noncommercial use or fair use of the disputed domain names.

In the present case, the Respondent did not submit a Response to the Complaint and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain names sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

The Complainant must also show that the Respondent registered and are using the disputed domain names in bad faith (see Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant has submitted evidence which shows that the Respondent registered the disputed domain names after the Complainant registered and used its trademarks. According to the evidence filed by the Complainant, the Complainant owned registrations for its trademarks in various jurisdictions from 2016 and these registrations are active at the time the Respondent registered the disputed domain names in 2018. The Complainant has also showed evidence that the Complainant has been selling the IQOS products in many countries and has significant online presence. Therefore, the Panel draws the inference that the Respondent knew or should have known about the Complainant’s trademarks. Further, it is the Complainant’s evidence that the IQOS trademark does not correspond to a descriptive or generic word and is a purely imaginative term which has no inherent meaning. The Panel therefore finds it inconceivable that the Respondent could have registered the disputed domain names without knowledge of the Complainant’s trademarks and intention of benefiting from confusion with such trademarks. (See Leite’s Culinaria, Inc. v. Gary Cieara, WIPO Case No. D2014-0041; WIPO Overview 3.0, section 3.2.2)

The Complainant also provided evidence that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademarks. As abovementioned, the Respondent is selling what are likely are counterfeit goods of the Complainant on the websites under the disputed domain names and using the Complainant’s trademarks on such goods and on these websites. This demonstrates intent on the Respondent’s part to specifically target Internet users who wish to buy goods from the Complainant. Internet users seeking to purchase goods under the Complainant’s trademark would very likely mistakenly believe that the Respondent is either connected to or associated with the Complainant. However, no such connection exists, and there is nothing on the Respondent’s websites that would clarify that the Respondent is not affiliated with or endorsed by the Complainant. Taking these into consideration, the Panel finds that under the particular circumstances of this case, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademarks under paragraph 4(b)(iv) of the Policy.

Moreover, in respect of the Respondent’s likely offerings of the counterfeit goods on its websites, past UDRP Panels have found that such use of a domain name for per se illegitimate activity is manifest behavior of bad faith on the part of the Respondent. (See Barclays Bank PLC v. PrivacyProtect.org / Sylvia Paras,WIPO Case No. D2011-2011; WIPO Overview 3.0, section 3.1.4)

Lastly, as abovementioned, the Complainant submitted evidence that the Respondent has provided false contact information in the registration of the disputed domain names. In the particular circumstances of the present case, the Panel is of the view that this is an indication of bad faith registration and use of the disputed domain names on the Respondent’s part.

Based on the evidence presented to the Panel, including the registration of the disputed domain names after the registration of the Complainant’s trademarks, the confusing similarity between the disputed domain names and the Complainant’s trademarks, the Respondent’s use of the disputed domain names, the Respondent’s provision of false contact details in the disputed domain names’ registrations, the Panel concludes that the disputed domain names were registered and are being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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 <iqosiejr.top> and <iqosshop.top> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: September 19, 2018