Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
Respondent is Nguyen Duy Tuong of Ho Chi Minh, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name is registered with P.A. Viet Nam Company Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2018. On March 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On April 3, 2018, the Center notified the Parties in both English and Vietnamese that the language of the Registration Agreement for the disputed domain name was Vietnamese. On April 4, 2018, Complainant requested for English to be the language of the proceeding, to which Respondent did not reply.
The Center verified that the 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 in English and Vietnamese of the Complaint, and the proceedings commenced on April 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 3, 2018.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on May 22, 2018. 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 an affiliate of Philip Morris International, Inc. (“PMI”), a company selling tobacco products under various brands including the widely-known MARLBORO cigarettes. Complainant and its sister companies have developed a “precisely controlled heating device” used for “vaping” tobacco substitutes. Complainant markets its device under the trademark IQOS, which was first introduced in Japan in 2014. Users fill the IQOS device with “Reduced Risk Products”, tobacco substitutes. Complainant obtained International Registration No. 1329691 (registered on August 10, 2016) for IQOS, which included designations for 43 jurisdictions including Viet Nam. Complainant also owns international trademark registrations for HEETS (for the nicotine products) and hummingbird logo associated with the IQOS brand. These registrations designate many countries including Viet Nam.
Respondent, a resident of Viet Nam, registered the disputed domain name on October 25, 2017. The disputed domain name resolves to a website displaying Complainant’s hummingbird logo and offering IQOS devices and HEETS products. Complainant does not know whether these products are authentic. 5. Parties’ Contentions A. Complainant
According to Complainant, the disputed domain name is confusingly similar to Complainant’s IQOS trademark as it clearly adopts the IQOS trademark and the addition of the term “chinh hang”, meaning “genuine” in Vietnamese, underscores the confusing similarity.
Complainant also contends that Respondent has no rights or legitimate interests with respect to the disputed domain name because Complainant has not given Respondent permission to use Complainant’s trademarks and Respondent is not an authorized reseller of Complainant’s branded products. Complainant further alleges that Respondent’s use of Complainant’s IQOS mark is not bona fide under the test outlined in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”), because Respondent uses the disputed domain name to sell not only Complainant’s IQOS products but also competing products, which Respondent falsely represents to be “the new IQOS 2018 model” and, Respondent uses Complainant’s official marketing material and its hummingbird logo to reinforce the false impression that Respondent is affiliated with Complainant.
For the same reasons, Complainant argues, Respondent is using Complainant’s trademark in bad faith. As for bad faith registration, Complainant maintains that its IQOS trademark is purely imaginative and Respondent’s incorporation of the mark into the disputed domain name could not have been coincidental, especially considering that Respondent has used the disputed domain name to offer Complainant’s products. B. Respondent
Respondent did not file a response to the Complaint. 6. Discussion and Findings 6.1. Preliminary Matter: Language of proceedings
Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” Here, the Registration Agreement is in Vietnamese.
Complainant requests that English be the language of the proceeding as English is a common language in international business and as Complainant is not able to communicate in Vietnamese.
In light of Respondent’s failure to object to Complainant’s request, which the Center communicated to Respondent in Vietnamese, the Panel determines that the language of the proceedings is English. This is especially appropriate in the case of a default, where the focus is on the sufficiency of Complainant’s allegations, arguments and evidence. Had Respondent answered in Vietnamese, or responded to any of the notices with a request that the case proceed in Vietnamese, the Panel may have required that case proceed in Vietnamese. A. Identical or Confusingly Similar
In view of Complainant’s trademark registrations, Complainant has rights in the IQOS mark, which the disputed domain name incorporates in its entirety. The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark as it incorporates the entirety of the trademark and the inclusion of the term “chinh hang”, which Complainant translates as “genuine”, does not dispel the confusing similarity.
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The evidence of record supports Complainant’s allegations that it has not authorized or licensed Respondent to register or use the disputed domain name or to use its IQOS trademark, in which Complainant had rights prior to Respondent’s registration of the disputed domain name.
Moreover, Respondent’s use of the disputed domain name is not bona fide under the Oki Data test. Respondent’s website does not disclaim a relationship with Complainant. On the contrary, Respondent adopts VIQOS, a confusingly similar variation of Complainant’s mark, which it uses alongside the phrase “IQOS Viet Nam”, thereby suggesting that it is a Vietnamese affiliate of Complaint, which relationship Complainant denies.
Respondent also prominently displays the VIQOS mark and the abovementioned hummingbird logo together:
Importantly, as a final nail in the Oki Data coffin, Respondent also offers a competitor’s product, the “IBUDDY”, which Respondent confusingly identifies as “the new IQOS 2018 model”. Complainant does not offer such a model.
For these reasons, Respondent’s webpage does not satisfy Oki Data. The Panel accordingly finds that Complainant has carried its burden and satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and used the IQOS mark in bad faith. The record reflects Respondent’s awareness of Complainant’s mark and rights when it registered the disputed domain name. Respondent is plainly fully aware of Complainant’s IQOS mark and intends to offer its customer’s Complainant’s products. Respondent intended to take advantage of the disputed domain name’s confusing similarity to Complainant’s mark to sell Complainant’s products as well as other third-party products. Respondent’s use of Complainant’s IQOS mark in conjunction with the confusingly similar VIQOS mark and Complainant’s hummingbird logo exacerbates the likelihood of confusion and falsely suggests that Respondent is affiliated with Complainant. Respondent’s manifest purpose is to attract Internet users to its website based on the goodwill associated with the Complainant’s trademark.
The Panel therefore finds that Complainant has carried its burden and satisfied 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 name be transferred to Complainant.
Lawrence K. Nodine
Sole Panelist
Date: June 5, 2018
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