Technology Limited

WIPO Case No. DIO2024-0003

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Eddie Lee, Synergy Marketing

Technology Limited

Case No. DIO2024-0003

1. The Parties

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

Respondent is Eddie Lee, Synergy Marketing Technology Limited, Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <iqoshk.io> (the “Domain Name”) is registered with NameCheap, Inc.

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14,

2024. On February 14, 2024, the Center transmitted by email to the Registrar a request for registrar

verification in connection with the Domain Name. On February 14, 2024, the Registrar transmitted by email

to the Center its verification response disclosing registrant and contact information for the Domain Name

which differed from the named Respondent (Privacy service provided by Withheld for Privacy ehf) and

contact information in the Complaint. The Center sent an email communication to Complainant on February

15, 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

February 19, 2024.

The Center verified that the Complaint together with the amended Complaint satisfied the formal

requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain

Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO 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 February 22, 2024. In accordance with the Rules, paragraph 5, the due

date for Response was March 13, 2024. Respondent did not submit any response. Accordingly, the Center

notified Respondent’s default on March 14, 2024.

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The Center appointed Marina Perraki as the sole panelist in this matter on March 19, 2024. 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

Complainant is part of the Philip Morris International Inc. group of companies (“PMI group”), active in the

tobacco industry, with products sold in approximately 180 countries. PMI group has been transforming its

business from combustible cigarettes to Reduced Risk Products (“RRP”), which PMI group defines as

products that present, are likely to present, or have the potential to present less risk of harm to smokers who

switch to those products versus continued smoking. One of these products, developed and sold by PMI

group, is a tobacco heating system branded as IQOS. IQOS is a controlled heating device into which

specially designed tobacco sticks under the brand names “Heets”, “HeatSticks” or “Terea” are inserted and

heated to generate a flavourful nicotine-containing aerosol (together “the IQOS System”). IQOS was first

launched by PMI group in 2014. Today the IQOS System is available in approximately 71 markets across

the world. Per Complainant, PMI group has invested USD 9 billion into the science and research of

developing smoke-free products and extensive international sales and as a result the IQOS brand has

gained considerable international reputation, with almost 19.1 million users. Per Complainant, the IQOS

System products have been almost exclusively distributed through PMI group’s official IQOS stores and

websites and selected authorized distributors and retailers.

Complainant is the owner of numerous IQOS trademark registrations. These include:

- International registration No. 1218246 (word mark), registered on July 10, 2014 designating, inter alia,

European Union, for goods in International Classes 9, 11, and 34;

- International registration No. 1338099 (word and device mark), registered on November 22, 2016,

designating, inter alia, European Union, for goods in International Class 35;

- Chinese trademark registration No. 16314286 IQOS (word), registered on May 14, 2016, for goods in

International Class 34; and

- Chinese trademark registration No. 49264074 (word and device mark), registered May 7, 2021, for goods in

International Class 34.

The Domain Name was registered on November 6, 2023, and resolves to a website (the “Website”),

allegedly selling and offering Complainant’s IQOS System, as well as competing third party products of

other, known and unknown, commercial origin. On the Website, the IQOS trademark of Complainant is

prominently displayed. Complainant’s IQOS trademark appears also at the top of the Website and within the

tab interface of the Website, locations where users usually expect to find the name of the online shop

provider. The Website also prominently displays a sign highly similar to Complainant’s HEATS DOESN’T

BURN trademark at the top of the Website (i.e., “HEAT NOT BURN”).

The Website is in Chinese language. It includes the address “油麻地彌敦道 285號” (with informal translation

in English per Complainant “No. 285 Nathan Road, Yau Ma Tei”) which is located in Yau Ma Tei, a

residential district in Hong Kong, China, which suggests that the Website is addressed to Chinese

consumers, however Complainant’s IQOS System is not currently sold in China. The Website does not

show any details regarding the provider of the Website nor does it acknowledge Complainant as the brand

owner of the IQOS System. The Website is further using a number of Complainant’s official product images

and marketing materials without Complainant’s authorization. The Website has also altered a number of

Complainant’s official product images without authorization by Complainant. At the bottom of the Website,

the following copyright notice appears: © 2023 IQOS香港。版權所有。 (informal translation per

Complainant “© 2023 IQOS Hong Kong. all rights reserved.”)

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5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for

a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the

Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant

has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered or is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has demonstrated rights through registration and use on the IQOS mark.

The Panel finds that the Domain Name that incorporates Complainant’s IQOS mark in its entirety plus the

additional letters “hk”, short for Hong Kong, is confusingly similar to the IQOS trademark of Complainant.

The addition of the letters “hk” does not prevent a finding of confusing similarity.

The country code Top-Level Domain (“ccTLD”) “.io” is disregarded, as ccTLDs typically do not form part of

the comparison on the grounds that they are required for technical reasons only.. WIPO Overview of WIPO

Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.[1]

[1]The Panel, noting the similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”), follows

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the

Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to

use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering

of goods or services; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the Domain

Name, even if it has acquired no trademark or service mark rights; or

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(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for

commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with

respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain

Name.

Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a

trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.

On the contrary, as Complainant demonstrated, the Domain Name resolves to the Website, which suggests

falsely that it is of an affiliated entity or of an authorized partner of Complainant.

Per Complainant, Respondent is not an affiliated entity or an authorised distributor, or reseller of

Complainant and no agreement, express or otherwise, exists allowing the use of Complainant’s trademarks

on the Website and the use of the Domain Name by Respondent.

Further, per Complainant, Complainant’s IQOS branded products are not sold in China.

A distributor or reseller can be making a bona fide offering of goods and thus have a legitimate interest in a

domain name only if the following cumulative requirements are met (Oki Data Americas, Inc. v. ASD, Inc.,

WIPO Case No. D2001-0903; WIPO Overview 3.0, section 2.8.1: (i) respondent must actually be offering

the goods at issue; (ii) respondent must use the site to sell only the trademarked goods; (iii) the site must

accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) respondent must not try to “corner the market” in domain names that reflect the trademark.)

These requirements are not cumulatively fulfilled in the present case. The composition of the Domain Name

falsely suggests that the Website is an official site of Complainant or of an entity affiliated to or endorsed by

Complainant. WIPO Overview 3.0, section 2.5.1. At the time of filing the Complaint, the Website extensively

reproduces, without authorization by Complainant, Complainant’s trademark and product photos, or

unauthorized altered photos, without any disclaimer of association (or lack thereof) with Complainant.

The Website includes a copyright notice: © 2023 IQOS香港。版權所有。 (informal translation per

Complainant “© 2023 IQOS Hong Kong. all rights reserved.”) which strengthens the false impression of

affiliation to Complainant. Currently, the Panel notes that the Website incorporates a disclaimer at the very

end of the webpage and that the Internet visitors are not likely to see it.

Noting the composition of the Domain Name and that the Website offers for sale IQOS branded products as

well as competing third party products, the Panel finds that the addition of such disclaimer cannot cure

Respondent’s bad faith as the overall appearance of the Website induces to believe that it belongs to

Complainant or suggests sponsorship or endorsement by Complainant.

Furthermore, the use of a domain name which intentionally trades on the fame of another and suggests

affiliation with the trademark owner cannot constitute a bona fide offering of goods or services (Madonna

Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847; AB Electrolux v.

Handi Sofian, Service Electrolux Lampung, WIPO Case No. D2016-2416; WIPO Overview 3.0, section 2.5).

The Website furthermore creates the false impression that Complainant has officially introduced the IQOS

System into the Chinese market.

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in

respect of the Domain Name.

Complainant has established Policy, paragraph 4(a)(ii).

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C. Registered or Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”,

are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for

the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is

the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration

in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) Respondent has registered the Domain Name in order to prevent the owner of the trademark or service

mark from reflecting the mark in a corresponding Domain Name, provided that Respondent has engaged in a

pattern of such conduct; or

(iii) Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a

competitor; or

(iv) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain,

Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with

Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or

location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As per

Complainant, Complainant’s IQOS trademark is well-known for RRP smoking devices. Furthermore, “iqos” is

a fictitious word. Because the IQOS mark had been widely used and registered at the time of the Domain

Name registration by Complainant, the Panel finds it more likely than not that Respondent had Complainant’s

mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID

No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO

Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case

No. D2000-0226).

As regards bad faith use of the Domain Name, Complainant has demonstrated that the Domain Name was

used to create the Website, which prominently displays Complainant’s registered trademarks, logos, and

official product images, even altered ones, thereby giving the false impression that it is operated by

Complainant, or a company affiliated to Complainant, or an authorised dealer of Complainant. The Domain

Name operates therefore by intentionally creating a likelihood of confusion with Complainant’s trademark

and business as to the source, sponsorship, affiliation or endorsement of the website it resolves to.

This can be used in support of bad faith registration and use (Booking.com BV v. Chen Guo Long, WIPO

Case No. D2017-0311; Ebel International Limited v. Alan Brashear, WIPO Case No. D2017-0001;

Walgreen Co. v. Muhammad Azeem / Wang Zheng, Nicenic International Group Co., Limited, WIPO Case

No. D2016-1607; Oculus VR, LLC v. Sean Lin, WIPO Case No. DCO2016-0034; and WIPO Overview 3.0,

section 3.1.4).

The bad faith use of Respondent is further indicated by the fact that the Website creates the false impression

that Complainant offers for sale its IQOS products in China, while it is not.

The Panel considers the following factors: (i) the reputation of Complainant’s mark, (ii) the failure of

Respondent to submit a response, (iii) the fact that the Website displays Complainant’s IQOS official product

images without authorisation, even altered ones, (iv) the fact that the Website includes competing third party

products and a copyright notice: © 2023 IQOS香港。版權所有。(informal translation per Complainant

“© 2023 IQOS Hong Kong. all rights reserved.”) and (v) the implausibility of any good faith use to which the

Domain Name may conceivably be put, given that, as Complainant has demonstrated, the Domain Name

resolves to the Website which gives the false impression that it is operated by Complainant or an official

retailer of Complainant and that the IQOS Products are offered for sale in China.

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Under these circumstances and on this record, the Panel finds that Respondent has registered and is using

the Domain Name in bad faith.

Complainant has established Policy paragraph 4(a)(iii).

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 Domain Name <iqoshk.io> be transferred to Complainant.

/Marina Perraki/

Marina Perraki

Sole Panelist

Date: April 2, 2024

prior decisions under the UDRP and refers to UDRP jurisprudence, including reference to the WIPO Overview 3.0.