The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Nguyen Minh Hoang of TP HCM, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name (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 August 30, 2018. On August 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 31, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On September 4, 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 September 6, 2018, the Complainant requested for English to be the language of the proceeding, to which the 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 the Respondent of the Complaint, and the proceedings commenced on September 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2018.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on October 25, 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
The Complainant Philip Morris Products S.A. is an affiliated company of Philip Morris International Inc. (jointly referred to as “PMI”), a leading international tobacco company, with products sold in approximately 180 countries.
IQOS is one of PMI’s brands, which are developed and used for smoke-free tobacco products. IQOS was first introduced in Nagoya, Japan in 2014 and now is available in around 40 markets across the world. The IQOS products have been almost exclusively distributed through PMI’s official IQOS stores, websites, selected authorized distributors and retailers.
The trademark IQOS has been registered for goods in Class 34 in a variety of countries, including in Vietnam, where the Respondent resides, under International Registrations No. 1218246 dated July 10, 2014, and 1329691 dated August 10, 2016. The Complainant also registered trademarks HEETS, THIS CHANGES EVERYTHING and the hummingbird logo under International Registrations No. 1328679, 1343294 and 1332896 designating Viet Nam.
The Respondent registered the Disputed Domain Name on 18 August, 2018. As of the date of this Decision, the Disputed Domain Name is resolving to an inactive website. However, the Disputed Domain Name used to resolve to a web shop of the Respondent, via which the Complainant’s products under the IQOS and HEETS brands are advertised and offered for sale. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.
First, the Complainant contends that the Complainant is the registered owner of trademark registrations for IQOS in a variety of countries all over the world.
Second, the Complainant contends that the Disputed Domain Name is confusingly similar to mark owned by the Complainant since the Disputed Domain Name reproduces entirely the registered trademark IQOS, and the addition of the geographic term “vietnam” with a hyphen mark “-” could not dispel any likelihood of confusion.
Finally, the Complainant submits that the addition of the generic Top-Level Domain “gTLD” suffix “.com” in the Disputed Domain Name does not add any distinctiveness to the Disputed Domain Name.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant submits that the elements set forth in Policy, paragraph 4(c) are not fulfilled.
First, the Respondent is neither a licensee of the Complainant, nor otherwise authorized to use the Complainant’s IQOS trademark.
Second, the Complainant contends that the Respondent has not made use of, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. Particularly, the use of Disputed Domain Name does not meet the requirements described in the decision Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903:
- The Disputed Domain Name itself suggests an affiliation with the Complainant and its IQOS trademark, as the domain name reproduces the IQOS trademark in its entirety together with the geographical indication Viet Nam, in an attempt to indicate that the Website provided under the Disputed Domain Name is the official online store for IQOS branded products in Viet Nam.
- Further, the Respondent also uses the Complainant’s registered trademarks IQOS, THIS CHANGES EVERYTHING and the hummingbird logo as well as official marketing material and product images on the Website.
- The Website includes no information clarifying the Respondent’s relationship to the Complainant, but, to the contrary, uses the indication “IQOS Store Viet Nam” on the landing page, and further uses the term “Thuốc lá Iqos Việt Nam” (Tobacco Iqos Viet Nam) to refer to the provider of the Website.
Third, the 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.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
The Complainant asserts that it is evident from the Respondent’s use of the Disputed Domain Name that the Respondent knew of the Complainant’s IQOS trademark when registering the Disputed Domain Name.
Furthermore, the word “iqos” is a purely imaginative term, it has no inherent meaning and it was invented by the Complainant specifically for the commercialization of its new and innovative reduced-risk tobacco heating system. Thus, it is highly unlikely that the Respondent registered the Disputed Domain Name without prior knowledge of the IQOS trademarks of the Complainant.
It is also evident from the Respondent’s use of the Disputed Domain Name that the Respondent registered and used the Disputed Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s IQOS trademark as to the source, sponsorship, affiliation or endorsement of its website or a product/service. Additionally, the website does not provide any information on the true identity of the website provider.
With such arguments, the Complainant submits that the Complainant intends to mislead users on the source of the website and thereby attract, for commercial gain, Internet users to the website. Therefore, the Complainant considers that the Respondent registered and is using the Disputed Domain Name in bad faith.
With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Issues Language of the Proceeding
The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement was Vietnamese.
As the Complaint was filed in English, the Center, in its notification dated September 4, 2018, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) a translation of the Complaint in Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding.
On September 06, 2018, the Complainant submitted the supplemental filing, requesting that English be the language of the proceeding. The Respondent submitted neither request nor comment.
According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the 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.
Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679).
In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to:
(i) the fact that the Complainant, a Swiss business entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation; and
(ii) the English language is quite popular in Viet Nam, where the Respondent is located, and the website under the Disputed Domain Name contains English contents; these suggest that the Respondent has ample knowledge of the English language and be able to communicate quite well in English.
For the purpose of easy comprehension of the Complainant (the only party actively taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English. B. Identical or Confusingly Similar
The Complainant is required to establish the following: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Name is identical or confusingly similar to its trademark.
First of all, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to IQOS, well before the Disputed Domain Name was registered.
Second, the Disputed Domain Name comprises the Complainant’s IQOS mark, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the suffix “vietnam”, evidently refers to the name of the country where the Respondent resides, i.e., Viet Nam, and a hyphen “-”, which is a punctuation mark.
The Panel finds that “iqos” remains the dominant element in the Disputed Domain Name. It is well established that the addition of a geographic term (such as “vietnam”) and a hyphen mark to a trademark does not prevent confusing similarity. Thus, in the Panel’s view, the addition of the said suffix does nothing to distinguish the Disputed Domain Name from the trademark, nor to dispel confusing similarity, as it was found in previous UDRP decisions (see, e.g., Royal Canin SAS v. Ong Pham Duc Thang, WIPO Case No. D2017-2567).
Third, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the Disputed Domain Name does not constitute an element as to avoid confusing similarity for the Policy purposes (see, e.g., Volkswagen AG v. Privacy Protection Services,WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc.,WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s IQOS trademark, and the first element of the Policy is established. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 finds that the Complainant has presented sufficient evidence that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions.
Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction. Thus, the Panel finds that the Respondent has no rights in the trademark IQOS.
A reseller or distributor may be making a bona fide offering of goods and services and thus have rights or legitimate interests in a domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc,WIPO Case No. D2001-0903 (“Oki Data”), including:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
In this particular case, the Panel finds the Respondent does not place any statement or disclaimer disclosing accurately its relationship with the Complainant. Further, the website under the Disputed Domain Name also contains the Complainant’s trademarks IQOS, HEETS and the hummingbird logo as well as official marketing material and product image
In addition, the website under the Disputed Domain Name also comprises some indications such as “IQOS Store Việt Nam” and “THUOCLAIQOS VIỆT NAM” (in English “VIETNAM IQOS TOBACCO”). These indications may mislead consumers into believing in a connection or association between the Respondent and the Complainant, where such connection or association does not exist in reality.
With such a view, the Panel finds that the unauthorized use of the Disputed Domain Name wholly incorporating the Complainant’s IQOS trademarks does not meet the Oki Data criteria and thus, does not constitute a bona fide use within paragraph 4(c)(i) of the Policy.
Regarding paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name, or that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name, the Respondent had full knowledge of the IQOS trademark and had an intention to gain profit by riding on the goodwill and reputation of the Complainant.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element, paragraph 4(a)(ii) of the Policy is established. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, 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 reads:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”.
The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.
The Panel further finds that the Complainant’s IQOS trademark has been registered in numerous countries. The Complainant’s IQOS trademark has been registered and used in, among other countries, Viet Nam where the Respondent resides. These trademark registrations well predate the registration of the Disputed Domain Name.
The Disputed Domain Name comprises the IQOS trademark in its entirety, adding only the geographical term “vietnam” and a hyphen mark. Given the extensive use of the IQOS trademark for tobacco products by the Complainant, which occurs in numerous countries, including in Viet Nam, where the Respondent resides, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. Also, in consideration of the use of the Disputed Domain Name and the contents of the website thereunder, the Panel is of the view that the Respondent obviously knew of the Complainant and its IQOS trademark when it registered the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill.
On the date of this Decision, the Panel accesses the Disputed Domain Name and finds that it resolves to an inactive website. However, it is well proved and evidenced by the Complainant that the website under the Disputed Domain Name used to offer for selling the tobacco products branded with the Complainant’s IQOS trademark. In addition to the adoption of the Complainant’s IQOS trademark as a uniquely distinctive part in the Disputed Domain Name, the Respondent used the Complainant’s trademarks, official marketing material and product images on the website and falsely represented itself like an affiliate or distributor of the Complainant. Hence, the Respondent’s subsequent taking down of the website does not alter the Panel’s finding.
With the said facts, the Panel finds that the Respondent intentionally registered and used the Disputed Domain Name for commercial gain and that the Respondent’s actual use of the Disputed Domain Name appears to mislead consumers and confuse them by making them believe that the website is associated, fostered or recommended by the Complainant. Such misleading behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent.
Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, and the third element under paragraph 4(a)(iii) of the Policy is established. 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.
Pham Nghiem Xuan Bac
Sole Panelist
Date: 6 November 2018
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