WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Zhan Zhijie, Zhan Zhijie

Case No. D2018-2697

1. The Parties

The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Simone Intellectual Property Services Asia Limited, China.

The Respondent is Zhan Zhijie, Zhan Zhijie, Huizhou, China.

2. The Domain Names and Registrar

The disputed domain names <iqos10.com>, <iqos13.com>, <iqos16.com>, <iqos17.com>, <iqos19.com>, <iqos20.com> and <iqos21.com> are registered with 1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2018. On November 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 27, 2018, 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 November 27, 2018 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 on November 28, 2018.

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 of the Complaint, and the proceedings commenced on December 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default December 26, 2018.

The Center appointed Jonathan Agmon as the sole panelist in this matter on January 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, 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 43 markets 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. 15098769) registered in China on June 28, 2015;

- (Registration No. 15098772) registered in China on June 21, 2015;

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

- IQOS (Registration No. 16314286) registered in China on May 14, 2016;

- (Registration No. 16314289) registered in China on May 14, 2016;

- (Registration No. 01845937) registered in Taiwan Province of China on June 1, 2017;

- (Registration No. 01718978) registered in Taiwan Province of China on July 16, 2015;

- IQOS (Registration No. 01718976) registered in Taiwan Province of China on July 16, 2015;

All of the disputed domain names <iqos10.com>, <iqos13.com>, <iqos16.com>, <iqos17.com>, <iqos19.com>, <iqos20.com> and <iqos21.com> were registered on August 15, 2018 and all of them presently resolve to inactive websites. Previously, the disputed domain names resolved to websites that generally represented that they were the official store of the Complainant and offering Complainant’s products for sale.

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 differ from the IQOS trademark by the addition of the two numerals behind the IQOS mark. The Complainant asserts that it has rights in the trademarks through numerous trademark registrations 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.

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. Consolidation of a Complaint for more than one disputed domain name

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.”

It is established 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 all appear to be the same individual from the information provided by the Registrar. The registration dates of all the disputed domain names are also the same. The Panel also notes a pattern in the disputed domain names that is the Complainant’s IQOS mark followed by two numerals in a mostly sequential order which is strongly indicative that the disputed domain names are registered by the same registrant.

From the foregoing, 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 Taiwan Province of China and 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 <iqos10.com>, <iqos13.com>, <iqos16.com>, <iqos17.com>, <iqos19.com>, <iqos20.com> and <iqos21.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 two numerals “10”, “13”, “16”, “17”, “19”, “20”, “21” into the disputed domain names do not differentiate the disputed domain names from the Complainant’s IQOS mark as the primary element in the disputed domain names is IQOS and such 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; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Volkswagen AG v. Hui Min Wang, Wang Hui Min, 王慧敏, 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 some 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 “zhan zhijie” which bear no resemblance to the disputed domain names <iqos10.com>, <iqos13.com>, <iqos16.com>, <iqos17.com>, <iqos19.com>, <iqos20.com> and <iqos21.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 also provided evidence that the Respondent had misrepresented the disputed domain names websites as “official websites” for the Complainant’s IQOS products in Taiwan Province of China when in fact, the Complainant has not yet commercialised its IQOS Products in Taiwan Province of China or China. Such behaviour suggests affiliation with the Complainant when the Respondent is in no way affiliated with the Complainant.

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 claim to be “official websites” of the Complainant, misleading consumers to think that the Respondent is affiliated 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.

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 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 registered the disputed domain names after the Complainant registered and used its trademarks on its websites and on infringing products. According to the evidence filed by the Complainant, the Complainant owned registrations for its trademarks in Taiwan Province of China and China from 2015 and these registrations were 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 is a coined term that 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. The Respondent is selling what are likely 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 in the Taiwan Province of China and China market 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.

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 <iqos10.com>, <iqos13.com>, <iqos16.com>, <iqos17.com>, <iqos19.com>, <iqos20.com> and <iqos21.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: January 20, 2019