WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Chen Xian

Case No. D2018-1707

1. The Parties

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

The Respondent is Chen Xian of Guangzhou, Guangdong, China.

2. The Domain Names and Registrar

The disputed domain names <iqos5.com> and <iqos6.com> are registered with eName 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 27, 2018. On July 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 30, 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 31, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on August 2, 2018. On the same day, the Complainant submitted an amendment to the Complaint regarding the Respondent’s information. The Respondent did not comment on the language of the proceeding by the specified due date.

The Center verified that the Complaint together with the amendment to 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 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2018.

The Center appointed Jonathan Agmon as the sole panelist in this matter on September 3, 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 distributed “IQOS” which is a device in which specially designed tobacco sticks, namely, “HEETS” or “HeatSticks”, are inserted and heated to create a tobacco vapor. The “IQOS” system also consists of an “IQOS Pocket Charger”, which is specially 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 (Registration No. 16314286) registered in China on May 14, 2016;

- Registration No. 16314287) registered in China on May 14, 2016;

- (International Registration No. 1329691) registered on in August 10, 2016, in multiple countries, including China;

- HEETS (International Registration No. 1326410) registered on July 19, 2016;

- (International Registration No. 1328679) registered on July 20, 2016 in multiple countries, including China;

- (International Registration No. 1331054) registered on October 11, 2016 in multiple countries, including China; and

THIS CHANGES EVERYTHING (International Registration No. 1343294) registered on December 12, 2016, in multiple countries, including China.

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

The disputed domain names <iqos5.com> and <iqos6.com> were registered on March 3, 2018 and February 26, 2018 respectively and both disputed domain names resolve to websites selling what appears to be goods of the Complainant and of competitors.

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 incorporate the IQOS trademark in its entirety and only differs from the IQOS trademark by the addition of numerals “5” and “6” respectively. The Complainant states that it has rights in the trademarks through its numerous trademark registrations and that by the Respondent’s use of the and marks(hereinafter referred to as the “Collective Marks”) in a prominent location on the disputed domain names’ websites and offering products for sale under the Complainant’s marks IQOS and HEETS, Internet users may be misled to think that the Respondent is an official distributor or 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 selling the Complainant’s products in addition to competing products of other brands on its websites.

The Complainant further argues that the disputed domain names were registered and are being used in bad faith as the Respondent used the disputed domain names with the intention to attract, for commercial gain, Internet users to its websites.

B. Respondent

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

6. Discussion and Findings

6.1 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 Agreement for the disputed domain name 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.” (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 their 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.” (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;

(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.

6.2 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 trademark registrations in various jurisdictions worldwide, including China, where the Respondent is 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 <iqos5.com> and <iqos6.com> 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 numerals “5” and “6” respectively do not avoid a finding of confusing similarity with the Complainant’s trademarks (see 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, 王慧敏, WIPO Case No. D2017-0860) and is without significance in the present case.

Consequently, the Panel finds that the Complainant has shown that the disputed domain names are identical or confusingly similar to a 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 names, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain names. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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 various trademark registrations in various 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 or a variation thereof. (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 as the WhoIs records show that the disputed domain names are both registered under the name “Chen Xian” which bears no resemblance to the disputed domain names <iqos5.com> and <iqos6.com> 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 has also provided evidence that the Respondent is not engaging in a bona fide offering of goods and services. The Respondent is offering goods bearing the Complainant’s IQOS and HEET trademarks along with products of competitors on its websites which prominently display the Complainant’s trademarks (by placing the Collective Trademarks next to each other at the top left-hand corner of each webpage) and using the Complainant’s official marketing materials and registered slogan trademark THIS CHANGES EVERYTHING under the Complainant’s IQOS trademark on the websites’ homepage. By engaging in such acts, the Respondent is freeriding 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 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. The Panel therefore finds that these acts by the Respondent cannot and 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 is 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 has 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’s prior registration and use in various jurisdictions of the IQOS trademarks, as well as the Respondent’s use of the IQOS and other trademarks of the Complainant on the websites under the disputed domain names, suggest that the Respondent registered the disputed domain names with knowledge of the Complainant and its IQOS trademark (see Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

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 goods with the trademark of the Complainant on its websites and using the Complainant’s trademarks on its websites without disclosing the Respondent’s relationship (or lack hereof) to the Complainant. In addition, the Respondent is selling goods which compete with those of the Complainant’s on the websites under the disputed domain names. 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 seems to exist. Having reviewed the evidence, and taking these into consideration the particular circumstances of this case, 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.

Under the particular circumstances of this case, the Panel also 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 WIPO Overview 3.0, section 3.2.2)

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 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 <iqos5.com> and <iqos6.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: September 15, 2018