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. The disputed domain name was registered on; (iii)...
WIPO Case No. D2024-5127
•10-03-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION Philip Morris Products S.A. v. Digital KK Case No. D2024-5127
1. The Parties
Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
Respondent is Digital KK, Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <iqosheatersaga.com> is registered with eNom, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2024. On December 13, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Private Registration) and contact information in the Complaint. The Center sent an email communication to Complainant on December 17, 2024, 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 on December 17, 2024.
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 of the Complaint, and the proceedings commenced on December 20, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2025. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 21, 2025.
The Center appointed Yijun Tian as the sole panelist in this matter on January 29, 2025. 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.
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On February 6, 2025, Respondent sent an email communication to the Center indicating that it is a web services provider, and its client was willing to transfer the disputed domain name. The Panel issued the Administrative Panel Procedural Order No. 1 on February 20, 2025, inviting Complainant’s comments on Respondent’s communication for possible settlement and if Complainant would agree to suspend the
proceeding. Complainant provided no comment within the specified due date. On February 27, 2025, the
Center informed the Parties that the decision due date had been extended to March 6, 2025.
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 an 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 marks. Complainant is the owner of numerous IQOS trademarks worldwide, including the Chinese trademark registered on May 14, 2016 (the Chinese Trademark registration number 16314286), the Chinese trademark registered on May 7, 2021 (the Chinese Trademark registration number 49264074), and the International trademark registered on July 10, 2014 (the Trademark registration number 1218246).
B. Respondent
Respondent is Digital KK, Hong Kong, China.
The disputed domain name <iqosheatersaga.com> was registered on October 9, 2024. According to the
Complaint and the evidence provided by Complainant, the disputed domain name resolved to an online shop
offering purported IQOS-branded products and competing third party products of different commercial origin.
The website is currently inactive.
5. Parties’ Contentions
A. Complainant
Complainant contends that the disputed domain name is confusingly similar to Complainant’s IQOS trademark. The disputed domain name incorporates the IQOS trademark in its entirely. The mere addition of the non-distinctive and descriptive words “heater” and “saga” does not provide adequate distinction to negate the conclusion that the disputed domain name is confusingly similar to the trademark IQOS.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name.
Complainant contends that the disputed domain name was registered and is being used in bad faith.
Complainant requests that the disputed domain name be transferred to it.
B. Respondent
Respondent did not formally reply to Complainant’s contentions; however, it stated that it is a web services
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provider and its client was willing to transfer the disputed domain name to Complainant. Respondent ceased
activity on the website in the meantime.
6. Discussion and Findings
A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement. The standing (or
threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between
Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on
Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
Based on the available record, the Panel finds Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.
The Panel finds Complainant’s IQOS mark is recognizable within the disputed domain name. Accordingly,
the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview
3.0, section 1.7.
While the addition of other words “heater”, and “saga” as the suffixes, may bear on the assessment of the second and third elements, the Panel finds the addition of such words does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.
Based on the available record, the Panel finds the first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a disputed domain name.
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
Having reviewed the record, the Panel finds Complainant has established a prima facie case that Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.
More specifically:
| connection with a bona fide offering of goods or services. There is no provided reasons to justify the choice | (i) there has been no evidence adduced to show that the disputed domain name has been used in marks; |
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(ii) there has been no evidence adduced to show that Respondent has been commonly known by the confusingly similar to Complainant’s IQOS marks; and
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. The disputed domain name was registered on
(iii) there has been no evidence adduced to show that the disputed domain name has been used for a
legitimate noncommercial or fair use. By contrast, the disputed domain name resolved to a website of an
online store purportedly offering to sell Complainant’s and Complainant’s competitors’ products. The website
contained product images copied from Complainant’s official website. It seems likely that profits were made
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; and Pet Plan Ltd. v. 权中俊 and 李金梁 (Li Jin Liang), WIPO
Case No. D2020-3358.)
Based on the available record, the Panel finds the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
In the present case, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.
Based on the information provided by Complainant, the Panel finds that Complainant has a reputation in the IQOS marks with regard to its products and services. It is not conceivable that the disputed domain name was registered without the knowledge of Complainant’s trademark. This is reinforced by the fact that the disputed domain name incorporates Complainant’s IQOS trademark in its entirety, and that Complainant’s trademark is used on the website at the disputed domain name.
Respondent asserts without documentation in its email communication to the Center that it is a web services provider, and its client is willing to transfer the disputed domain name. Except for an email address of its client, no further information is provided by Respondent with regard to this client. There is no communication received from this client during the proceeding. Even if the Panel were to assume that Respondent registered the disputed domain name for someone else, and is not the creator of the content on the website at the disputed domain name – the Panel’s determination would be unchanged. The Respondent remains the named registrant pursuant to paragraph 1 of the Rules. As such, it is responsible for any use of the disputed domain name.
The website resolved by the disputed domain name has displayed product images copied from the official website of Complainant, and has purported to offer Complainant’s and their competitors’ goods for sale, and has prominently displayed Complainant’s IQOS mark.
Thus, the Panel concludes that the confusingly similar disputed domain name has been used to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with Complainant. Such use constitutes bad faith pursuant to paragraph 4(b)(iv) of the Policy.
Based on the available record, the Panel finds the third element of the Policy has been established.
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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 name <iqosheatersaga.com> be transferred to Complainant.
/Yijun Tian/
Yijun Tian
Sole Panelist
Date: March 10, 2025
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