The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Pham Huu Thanh of Hanoi, Viet Nam, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount-D and O (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2018. On July 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 25, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name. The Center sent an email communication to the Complainant on July 26, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email in English and Japanese regarding the language of the proceeding. The Complainant filed an amendment to the Complaint and requested that English be the language of the proceeding on July 27, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amendment to 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 the Respondent in English and Japanese of the Complaint, and the proceedings commenced on August 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 24, 2018.
On August 24, 2018, the Respondent submitted an email in English. On August 29, 2018, the Complainant requested to suspend the proceeding. The Center notified the Parties that the proceeding was suspended until September 28, 2018. On September 18, 2018, the Complainant requested to reinstitute the proceeding. Accordingly, the Center notified the Parties that the proceeding was reinstituted as of September 18, 2018 and the Center would proceed with panel appointment.
The Center appointed Teruo Kato as the sole panelist in this matter on September 20, 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
According to the Complainant, the Complainant Philip Morris Products S.A. is a company which is part of the group of companies affiliated to Philip Morris International Inc. (PMI), an international tobacco company, with products sold in approximately 180 countries. Their portfolio includes certain products branded as “IQOS” first launched in Japan in 2014, which are “available in key cities in around 38 markets across the world”.
The Complainant owns, inter alia, International trademark IQOS (device) No. 1329691, registered on August 10, 2016, International trademark (device) No. 1331054, registered on October 11, 2016, and International trademark IQOS (word) No. 1218246, registered on July 10, 2014, as set out in paragraph 6. B below.
The disputed domain name was registered on April 23, 2018.
The Respondent is Pham Huu Thanh, whose address is given as being in Hanoi, Viet Nam. The disputed domain name was registered using a privacy service.
According to the Complainant, the website at the disputed domain name “is linked to an alleged online shop offering the Complainant’s IQOS Products” and “thereby suggesting that the website is an official IQOS store” which the Complainant denies.
The Complainant requests that the disputed domain name be transferred to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that it is the owner of various trademarks including IQOS.
The Complainant also contends that the disputed domain name is confusingly similar to the Complainant’s IQOS trademark and that the geographical term “vietnam” and generic and descriptive term “shop” should be disregarded in considering the confusing similarity.
The Complainant further contends that the Respondent is not a licensee, an authorized agent of the Complainant, or in any other way authorized to use the Complainant’s trademark IQOS, and that the Respondent is not commonly known by the disputed domain name as an individual, business, or other organization, and that the Respondent does not make any bona fide use or trade under the disputed domain name.
The Complainant also contends that the Respondent has registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent submitted an informal email on August 24, 2018, indicating that it “was shutdown that page”, but did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
The Complaint has been submitted in English. The Registrar confirmed that the language of the Registration Agreement is Japanese. The Center sent an email communication in both Japanese and English regarding the language of the proceeding. The Panel notes that the Respondent has not submitted an objection for English to be the language of the proceeding and has not submitted any reply in this regard. The Panel also notes that the Respondent sent an email to the Center in English language dated August 24, 2018 and that at present the website resolves a text message in English language, being “Please check back soon”.
In view of the circumstances of this case and in accordance with paragraph 11(a) of the Rules the Panel decides that English will be the language of the proceeding. B. Identical or Confusingly Similar
The Panel must determine whether (a) the Complainant has a trademark or service mark; and (b) whether the disputed domain name is identical or confusingly similar to that trademark or service mark.
The Complainant submitted evidence of various trademark registrations and the Panel is satisfied that the Complainant is the owner of IQOS registered trademarks, including inter alia:
- International trademark IQOS (device) No. 1329691, registered on August 10, 2016, designating multiple jurisdictions, including Japan and Viet Nam, covering goods and services in classes 9, 11 and 34;
- International trademark IQOS (word) No. 1218246, registered on July 10, 2014, designating multiple jurisdictions, including Viet Nam, covering goods and services in classes 9, 11 and 34.
As to the confusingly similar element for the purposes of the Policy, the Panel has proceeded to compare the disputed domain name to the trademark rights which have been proved.
Section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”, and the Panel finds no reason why this established practice should not be applied to the present case.
Apart from the generic Top-Level Domain (“gTLD”), the disputed domain name consists of the Complainant’s trademark IQOS and the term “vietnam”. The Panel finds that that the distinctive element of the disputed domain name is the term “iqos”.
It is well established that, where a disputed domain name incorporates, as here, the entirety of a complainant’s trademark, the addition of common terms does not prevent a finding of confusing similarity. (See Salvatore Ferragamo S.p.A v. Ying Chou,WIPO Case No. D2013-2034; Salvatore Ferragamo S.p.A. v. Haonan Hong,WIPO Case No. D2013-2040; Salvatore Ferragamo S.p.A. v. Brian E. Nielsen,WIPO Case No. D2014-1123; and Salvatore Ferragamo S.p.A. v. Wei Huan,WIPO Case No. D2014-1290).
The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. C. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) before any notice to it of the dispute, the 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the 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 consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of a domain name rests with the complainant in as far as making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0).
In the present case the Complainant contends that “[t]he Respondent is in no way related to the Complainant or any PMI affiliate and is not authorized to use the IQOS trademark”, “The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the Domain Name incorporating its IQOS trademark”, and “Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of the Complainant”.
The Complainant submitted to the Panel documentary materials to support its contentions as above and the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
By not submitting a response, the Respondent has failed to overturn such prima facie case and has also failed to invoke any of the defenses as set out in paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
To fulfill the third requirement, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
In order to assess whether the Respondent registered and uses the disputed domain name in bad faith, paragraph 4(b) of the Policy provides non-exhaustive examples constituting evidence of bad faith, which includes the following:
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on that website or location.
The Panel notes and accepts that the trademark IQOS was registered and extensively used internationally, including in Japan and Viet Nam, before the disputed domain name was registered on April 23, 2018. Therefore, the Panel holds that the Respondent is most likely to have known of the Complainant, its products and trademarks prior to registering the disputed domain name.
As to the use in bad faith, the Complainant contends that the disputed domain name “is linked to an alleged online shop offering the Complainant’s IQOS Products. The website under the disputed Domain Name is clearly presenting itself as an official / endorsed dealer. It is not only using the Complainant’s registered IQOS trade mark in the Disputed Domain Name, accompanied by the merely geographical term ‘vietnam’ but also prominently presents the Complainant’s registered trademarks at the top of the website, where users expect to find the name of the website or of the website provider, together with the descriptive term ‘shop’ thereby suggesting that the website is an official IQOS store. The website is further using the Complainant’s official marketing material without authorization.”
The Complainant submitted materials to support such contention. The Respondent was given an opportunity to raise its objection to the contention made by the Complainant but has not done so.
The Panel considers such use to amount to bad faith use of the disputed domain name.
The Panel notes that at present the website resolves a text message “Please check back soon”, accompanied by the marks which appear identical to the two trademark devices owned by the Complainant, being the International Registration No. 1329691 and International Registration No. 1331054.
As regards this use, the Panel notes that “coming soon” page would not prevent a finding of bad faith, and, in applying this, “panelists will look at the totality of the circumstances in each case” (See section 3.3 of WIPO Overview 3.0). In this case, considering the nature of the disputed domain name and the use of the Complainant’s trademark at the current website, the Panel is satisfied that the overall circumstances of the case suggest that the Respondent’s use is in bad faith.
Such circumstances include, among others, the strength and renown of the Complainant’s IQOS trademark, the Respondent’s failure to reply to the Complainant’s contentions, the email message dated August 24, 2018 sent by the Respondent stating “Sr, I was shutdown that page”, the fact that the Respondent continues to display two trademark devices owned by the Complainant as mentioned above, and the apparent concealment of the Respondent’s identity and contact details until the same were disclosed by the Registrar on July 25, 2018. (See “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. G, Inc.,WIPO Case No. D2017-0246.)
In the premises the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith. The third requirement of the Policy has been met. 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 the Complainant.
Teruo Kato
Sole Panelist
Date: September 21, 2018
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