Philip Morris Products S.A. v iuwagamom iu

WIPO Case No. D2024-3216

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. iuwagamom iu

Case No. D2024-3216

1. The Parties

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

Respondent is iuwagamom iu, China.

2. The Domain Name and Registrar

The disputed domain name <iqostore.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2024. On August 6, 2024, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On August 6, 2024, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the disputed domain name which differed f rom the named Respondent (Private Registration or IQOSHOP IQ補給站) and f rom the Respondent identif ied by reference to Annex 1 to the Complaint (Redacted for Privacy) and contact

information in the Complaint. The Center sent an email communication to Complainant on August 8, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant f iled an amended Complaint on August 14, 2024.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 August 16, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2024. Respondent did not submit any response. Accordingly, the Center notif ied Respondent’s default on September 6, 2024.

The Center appointed Yijun Tian as the sole panelist in this matter on September 16, 2024. The Panel f inds 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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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 af f iliated with Philip Morris International Inc. (“PMI”). PMI is a leading 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 f lavourful nicotine-containing aerosol.

Complainant has exclusive rights in the IQOS and IQOS related marks. Complainant is the exclusive owner of numerous IQOS trademarks worldwide, including the Chinese trademark registered on May 14, 2016 (the Chinese Trademark registration number 16314286), and the International trademark registered on August 10, 2016 (the International Trademark registration number 1329691).

B. Respondent

Respondent is iuwagamom iu, China.

The disputed domain name <iqostore.com> was registered (with NameSilo, LLC) by Respondent on July 15, 2024. According to the Complaint and the evidence provided by Complainant, the disputed domain name resolved to a website purporting to be an authorized online store for Complainant’s IQOS system and third- party competing tobacco products. The website also includes a copyright notice that specif ically states: “copyright 2023 IQOSHOP IQ補給站 | IQOS全部皆為正品代購” (English translation: “copyright 2023 IQOSHOP IQ supply station | All IQOS products are genuine”).

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 non-distinctive and descriptive word “store” 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 reply to Complainant’s contentions.

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6. Discussion and Findings
A. Identical or Confusingly Similar

It is well accepted that the f irst 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 f inds 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 characters here, “store”, may bear on the assessment of the second and third elements, the Panel finds the addition of such characters 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 f inds the f irst 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 f inds 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 specif ically:

(i) there has been no evidence adduced to show that Respondent used the disputed domain name in marks;
connection with a bona fide offering of goods or services. Respondent has not provided evidence of reasons
to justify the choice of the term “iqos”, the distinctive part of Complainant’s IQOS trademark, in the disputed
domain name. There has been no evidence to show that Complainant has licensed or otherwise permitted

(ii) there has been no evidence adduced to show that Respondent has been commonly known by the 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. Respondent registered the disputed domain

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name on July 15, 2024, after the IQOS mark was registered in China (since 2016). The disputed domain
name is confusingly similar to Complainant’s IQOS marks; and

(iii) there has been no evidence adduced to show that Respondent was making a legitimate noncommercial or fair use of the disputed domain name. By contrast, the disputed domain name resolved to a website purporting to be an authorised online store for Complainant’s products and third-party competing tobacco products. The website contained content copied from Complainant's official website and purported to of fer Complainant's goods for sale. Additionally, the website featured a copyright notice stating: 'copyright 2023 IQOSHOP IQ補給站 | IQOS全部皆為正品代購' (translated to: 'copyright 2023 IQOSHOP IQ supply station | All IQOS products are genuine'), further increasing the likelihood of consumer confusion. It seems likely that Respondent was making prof its through the Internet traf f ic 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).

Panels have held that the use of a domain name for illegal activity (i.e., impersonation/passing off) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

Based on the available record, the Panel f inds 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 notes that Respondent has registered and used the disputed domain name 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 Respondent would not have had Complainant’s trademark in mind at the time of the registration of the disputed domain name (in July 2024). This has been reinforced by the fact that the disputed domain name incorporates the distinctive part of Complainant’s IQOS trademark, “iqos”, entirely, and the use of Complainant’s trademark on the website of the disputed domain name.

Respondent has used the website resolved by the disputed domain name for displaying the contents copied f rom the original website of Complainant, purporting to offer Complainant’s goods for sale, and prominently displaying Complainant’s IQOS mark. Moreover, the website contained a copyright notice stating: 'copyright 2023 IQOSHOP IQ補給站 | IQOS全部皆為正品代購' (translated to: 'copyright 2023 IQOSHOP IQ supply station | All IQOS products are genuine').

Thus, the Panel concludes that Respondent is using a confusingly similar disputed domain name with the intention to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant. Such use constitutes bad faith pursuant to paragraph 4(b)(iv) of the Policy.

UDRP panels have held that the use of a domain name for illegal activity (i.e., impersonation/passing of f ) constitutes bad faith. WIPO Overview 3.0, section 3.4.

Based on the available record, the Panel f inds 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 <iqostore.com> be transferred to Complainant.

/Yijun Tian/
Yijun Tian
Sole Panelist
Date: October 16, 2024