Swedish Match North Europe and Philip Morris International, Inc. v Pan Gao

WIPO Case No. D2025-3289

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Swedish Match North Europe and Philip Morris International, Inc. v. Pan Gao
and zyn fy, zynunique.com

Case No. D2025-3289

1. The Parties

The Complainants are Swedish Match North Europe, Sweden (the “First Complainant”) and Philip Morris
International, Inc., United States of America (“United States”) (the “Second Complainant”), represented by

D.M. Kisch Inc., South Africa.

The Respondents are Pan Gao, China, and zyn fy, zynunique.com, United States.

2. The Domain Names and Registrars

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

The disputed domain name <zynunique.com> (collectively, the “disputed domain names”) is registered with

Hostinger Operations, UAB (collectively, the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2025. On August 18, 2025, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. On August 18 and August 19, 2025, the Registrars transmitted by email to the Center their verification responses, disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Domain Admin / Registration Private, Domains By Proxy, LLC) and contact information in the Complaint.

The Center sent an email communication to the Complainants on August 19, 2025 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainants to either file a separate complaint for the disputed domain name associated with a different underlying registrant or alternatively, demonstrate that the underlying registrants are in fact the same entity

and/or that all domain names are under common control. The Complainants filed an amended Complaint on
August 27, 2025. The Respondent zyn fy, zynunique.com sent an email communication to the Center on
August 26, 2025.

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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 August 29, 2025. In accordance with the Rules, paragraph
5, the due date for Response was September 18, 2025. The Respondent zyn fy, zynunique.com filed a
Response on September 2, 2025.

The Center appointed Nicholas Weston as the sole panelist in this matter on September 16, 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.

4. Factual Background

The First Complainant, established in 1992, operates a business manufacturing, marketing and selling smoke free tobacco products, such as snus and nicotine pouches, which are sold in several countries, and has been owned by the Second Complainant, a multinational nicotine product company, since 2022. The First and Second Complainant are hereinafter referred individually and collectively as the “Complainant”.

The Complainant holds registrations for the trademark ZYN, including International Trademark Registration No. 1421212 for ZYN (word) registered on April 18, 2018 and European Union Registration No.015272487 for ZYN (word) registered on July 8, 2016.

The disputed domain name <zynfy.com> was registered on July 5, 2025, and the disputed domain name <zynunique.com> was registered on July 8, 2025. The disputed domain name <zynfy.com> resolved to a parking page and is currently inactive. The disputed domain name <zynunique.com> resolves to an e-

commerce website offering the Complainant’s products for sale alongside competitor products.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

Notably, the Complainant cites its trademark registrations for the mark ZYN, in several jurisdictions, as prima facie evidence of ownership.

The Complainant contends that its rights in that the mark ZYN mark predate the Respondent’s registration of the disputed domain names. It submits that the disputed domain names are confusingly similar to its trademark, because each is comprised of the ZYN trademark, followed by terms such as “fy” and “unique” under the generic Top-Level Domain (‘gTLD”) “.com”, and that these elements are not sufficient to avoid a finding of confusing similarity under the Policy.

The Complainant contends that the Respondents have no rights or legitimate interests in respect of the disputed domain names because it has not authorized the use of its trademarks and “the Respondent[s are] not only offering the Complainant’s products but also competing nicotine products of other known and unknown commercial origin” and that none of the circumstances set out in paragraph 4(c) of the Policy apply.

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Finally, the Complainant alleges that the registration and use of the disputed domain names were, and currently are, in bad faith, contrary to the Policy and the Rules having regard to the prior use and distinctive nature of the Complainant’s trademark, and on the issue of registration states that “it is therefore beyond the realm of reasonable coincidence that the Respondent[s] chose the disputed domain names, without the intention of invoking a misleading association with the Complainant.” On the issue of use the Complainant contends, in relation to the disputed domain name <zynunique.com>, that “the Respondent’s use of the Complainant’s official product images accompanied by a copyright notice claiming the copyright for the [w]ebsite and its contents” amounts to use in bad faith. In relation to the disputed domain name <zynfy.com>, the Complainant contends that the use of this disputed domain name to resolve to a landing page, or inactivity, does not prevent a finding of bad faith.

B. Respondents

The Respondent zyn fy, zynunique.com filed a response that contains several rolled-up points in reply, contending that “[t]he Complainant has not provided evidence that I have actively used the domains in bad faith, sold infringing products, or attempted to target the Complainant’s brand.

It states that it is “the legitimate registrant of both domain names” and states “I acknowledge that registrar- provided contact details for and may appear inconsistent due to different registration platforms and administrative settings. However, both domains are under my control and ownership, and no third party has control of these domains.”

On the issue of rights and legitimate interests it contends “The unused domain can be clarified as inactive,
and has been used for independent purposes without intention to harm or exploit another party’s brand.”
And contends that “[m]ere ownership or registration does not constitute infringement”.

On the issue of rights and legitimate interests it contends “[t]he domain has been associated with my independent project, while has not been developed or used. There has been no attempt to exploit these domains for misleading, commercial gain, or in conflict with any known trademark rights.

On the issue of bad faith registration “it contends that at the time of registering both domains, I had no intention to infringe upon or misappropriate any third-party trademark rights. The registrations were done independently and lawfully via established registrars”.

On the issue of bad faith use, it contends “I registered an email address under ([...]@zynfy.com) for basic communication and account management purposes. This address has not been used for infringing activity or commercial misuse.” It also states: “I respectfully submit that I have acted in good faith regarding both domains”.

6. Discussion and Findings

6.1. Preliminary Issue

A. Consolidation: Multiple Respondents

The amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant requests the consolidation of the disputes against the multiple domain name registrants pursuant to paragraph 10(e) of the Rules.

The domain name registrants reply admits that it is “the legitimate registrant of both domain names” and states “I acknowledge that registrar-provided contact details for and may appear inconsistent due to different registration platforms and administrative settings. However, both domains are under my control and ownership, and no third party has control of these domains”.

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Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.

In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or
corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable
to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0”), section 4.11.2.

As regards common control, the Panel notes the following:

- the disputed domain names were registered in a short time frame;

- the disputed domain names share a similar pattern using the Complainant’s ZYN trademark, with one
followed by the letters “fy”, the other followed by the word “unique”;

- the disputed Domian Name <zynfy.com> resolves to a webpage which is inactive but is used, by the address on the website the disputed domain name <zynunique.com> resolves to; and

- according to the information provided by the Respondent, it admits it owns both of the disputed domain

names.

The evidence submitted points to the fact that all the disputed domain names are subject of common control. or inequitable to any Party.

Accordingly, the Panel decides to consolidate the disputes regarding the nominally different domain name registrants (referred to below as “the Respondent”) in a single proceeding.

6.2. Substantive Issues

Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii)       that the Respondent has no rights or legitimate interests in respect of the disputed domain names;

and
(iii)	that the disputed domain names have been registered and are being used in bad faith.

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 the Complainant’s trademark and the disputed domain names. WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any jurisdiction. WIPO Overview 3.0, section 1.2.1. The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark ZYN in several jurisdictions.

Turning to whether the disputed domain names are identical or confusingly similar to the ZYN trademark, the
Panel observes that:

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- the disputed domain name <zynfy.com> is comprised of: (a) the Complainant’s trademark ZYN; (b) followed by the letters “fy”; (c) followed by the gTLD “.com”.

- the disputed domain name <zynunique.com> is comprised of: (a) an exact reproduction of the

Complainant’s trademark ZYN; (b) followed by the word “unique”; (c) followed by the gTLD “.com”.

It is well established that the gTLD used as part of a domain name is generally disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11. The relevant comparison to be made is with the second-level portion of each of the two disputed domain names, specifically: “zynfy” and “zynunique”, respectively.

The Panel finds the mark is recognizable within each of the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy also. WIPO Overview 3.0, section 1.7.

Although, the addition of terms such as “fy” and “unique”, may bear on assessment of the second and third elements in relation to the disputed domain names, the Panel finds the addition of those terms does not prevent a finding of confusing similarity between that disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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 the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although 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 difficult 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 disputed domain names (although the burden of proof always remains on the complainant). 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 available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

The Panel notes the evidence that the disputed domain name <zynfy.com> resolved to a parking page and now resolves to an inactive webpage, and finds that this does not represent a bona fide offering of goods or services, or a legitimate noncommercial or fair use, given the substantial reputation and goodwill of the

Complainant’s mark or capacity to otherwise mislead Internet users.

The Panel also notes the Complainant’s evidence in relation to the disputed domain name <zynunique.com> that the Respondent is not only offering the Complainant’s products on the website that it resolves to “but also competing nicotine products of other known and unknown commercial origin”. The use of the Complainant’s mark for offering competing third-party products is not a bona fide offering.

In its reply, the Respondent contends “[t]he domain has been associated with my independent project, while has not been developed or used. There has been no attempt to exploit these domains for misleading, commercial gain, or in conflict with any known trademark rights.” However, this bald assertion is directly

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contradicted by evidence of commercial activity of a nature that numerous previous panels have found is not

bona fide activity. WIPO Overview 3.0, section 2.5.3.

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.

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.

In the present case, the Panel finds that the evidence in the case shows the Respondent registered and has used the disputed domain names in bad faith.

On the issue of registration, taking into account the composition of the disputed domain names and the distinctive nature of the Complainant’s trademark, the Panel is satisfied that the Respondent knew of and targeted the Complainant’s trademark ZYN when it registered the disputed domain names.

This Panel finds that there is no reason for the Respondent to have registered the disputed domain names
other than to trade off the reputation and goodwill of the Complainant’s well-known trademark. WIPO
Overview 3.0, section 3.1.4.

Further, a gap of several years between registration of a complainant’s trademark and respondent’s registration of a disputed domain name (containing the trademark) may indicate bad faith registration. In this case, the Respondent registered the disputed domain names some 9 years after the Complainant established registered trademark rights in the ZYN mark. The Respondent did not offer any credible explanation.

On the issue of use, the disputed domain name <zynfy.com> does not resolve to an active website and was previously used to resolve to a landing page. The Respondent’s evidence on this disputed domain name is that “I registered an email address under “[…]@zynfy.com” for basic communication and account

management purposes”.

To the extent that it remains unclear to the Panel whether that disputed domain name was used for email purposes, panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Although panelists will look at the totality of the circumstances in each

case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the
degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to provide
any evidence of actual or contemplated good-faith use, and (iii) the implausibility of any good faith use to
which the domain name may be put. WIPO Overview 3.0, section 3.3. Having reviewed the available
record, the Panel notes the Complainant’s well-known ZYN trademark, the composition of the disputed
domain name <zynfy.com>, and the Respondent’s failure to provide any evidence of actual or contemplated
good-faith use and finds that in the circumstances of this case the passive holding of the disputed domain
name does not prevent a finding of bad faith under the Policy.

Turning to the disputed domain name <zynunique.com>, the evidence is that it was used to host a webpage that offered not only the Complainant’s products but those of third parties, including images and artwork sourced from the Complainant’s website. The evidence directly contradicts the Respondent’s contention that “[t]here has been no attempt to exploit these domains for misleading, commercial gain, or in conflict with any known trademark rights”. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name <zynunique.com>, also constitutes bad faith under the Policy.

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The Panel finds that the Complainant has established the third element 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 <zynfy.com> and <zynunique.com> be transferred to the

Complainant.

/Nicholas Weston/
Nicholas Weston
Sole Panelist
Date: September 22, 2025