The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by DM Kisch Inc., South Africa.
The Respondent is Domain Admin, Domain Whois Protection Service of Ho Chi Minh City, Viet Nam / Phan Van Dung of Ho Chi Minh City, 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 March 1, 2019. On March 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 2, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 5, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center notified the Parties in both English and Vietnamese that the language of the registration agreement for the Disputed Domain Name is Vietnamese. On March 7, 2019, the Complainant requested English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding. The Complainant filed an amended Complaint on March 12, 2019.
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 March 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2019.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on April 16, 2019. 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”). PMI is one of the world’s leading providers of tobacco products, with tobacco and smoking-related products sold in approximately 180 countries.
IQOS is one of PMI’s brands, which is developed and used for smoke-free tobacco products. IQOS was first introduced in Nagoya, Japan in 2014 and now is available in around 43 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 Complainant holds several trademark registrations for IQOS in multiple jurisdictions worldwide. In Viet Nam, where the Respondent resides, the IQOS trademarks are currently protected under International Registration No. 1218246, registered on July 10, 2014; International Registration No. 1338099, registered on November 22, 2016, International Registration No. 1329691, registered on August 10, 2016 (hereinafter the “IQOS Trademarks”). The Complainant also registered trademarks HEETS (word/ figurative mark) under International Registrations No. 1328679 and 1326410 designating Viet Nam, amongst others.
The Disputed Domain Name was registered on October 4, 2018 and is resolving to a website offering the Complaint’s IQOS and HEETS branded products. 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 a trademark in which the Complainant has rights.
Firstly, the Complainant contends that the Complainant is the registered owner of the IQOS Trademarks in numerous jurisdictions, including, but not limited to, Viet Nam.
Secondly, the Complainant asserts that the Disputed Domain Name is confusingly similar to IQOS Trademarks owned by the Complainant since the Disputed Domain Name reproduces entirely the registered IQOS Trademarks, and the addition of the descriptive term “chính hang” which means “genuine” in Vietnamese could not dispel any likelihood of confusion.
Finally, the Complainant submits that the addition of the Top-Level Domain (“TLD”) suffix “.net” 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.
As to legitimacy, the Complainant argues that it did not license or otherwise permit the Respondent to use or register the Disputed Domain Name incorporating the IQOS Trademarks. Besides to this, by evidencing that the Respondent is not authorized to distribute or resell the IQOS products, as well as the website provided under the Disputed Domain Name (referred to as the “Website”) does not meet the requirements for a bona fide offering of goods, the Complainant accordingly asserts that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
As to bad faith, the Complainant states that: (i) the Respondent has started offering the Complainant’s IQOS and HEETS branded products immediately after the trademark registration; (ii) the term “iqos” is a purely imaginative term and has no inherent meaning; and (iii) the Complainant has earned a widespread reputation for the IQOS Trademarks as acknowledged in numerous UDRP decisions, as such it is difficult to conceive that the Respondent was not aware of the Complainant’s IQOS Trademarks when registering the Disputed Domain Name.
Further, by identically adopting the IQOS Trademarks in the Disputed Domain Name and displaying it at the top left of the website at the Disputed Domain Name (the “Website”), as well as using the Complainant’s official product images and marketing materials without authorization, the Respondent is claimed to intentionally attract Internet users to the Website for an aim to gain profit from consumer’s confusion by creating false impression that (i) the Website belongs to the Complainant or is an official affiliated deader endorsed by the Complainant; and (ii) the Complainant has officially introduced the IQOS products in Viet Nam, which it is not.
Furthermore, the Complainant asserts that the Respondent’s use of a privacy protection service to hide its true identity may be an indication of bad faith.
On the basis of the above assertions, the Complainant requests transfer of the Disputed Domain Name. B. Respondent
The Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Procedural Issues (i) 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 March 5, 2019, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings 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 administrative proceedings.
On March 7, 2019, the Complainant submitted a request that English be the language of the proceeding. The Respondent submitted neither request nor comment on the language of the proceeding.
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 comfort 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 case at hand, the Panel takes the circumstances of the proceeding into account, 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;
(ii) English is a common language in global business and quite popular in Viet Nam, where the Respondent is located, and it is also evidenced to the Panel that the Website under the Disputed Domain Name contains English contents; these suggest that the Respondent has knowledge of the English language and be able to communicate in English; and
(iii) the Respondent had ample opportunity to raise objections in relation to the language of the proceeding or make known its preference, but it did not provide any response in this regard.
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. (ii) The Respondent’s Failure to Respond
The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010‑1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.
In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether each of the following three elements is present:
(i) the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (1) that it has trademark rights, if so, (2) that the Disputed Domain Name is identical or confusingly similar to its trademark.
First of all, the Panel finds that the Complainant has established rights in the IQOS Trademarks based on the trademark registrations cited above, well before the Disputed Domain Name was registered.
Secondly, the Disputed Domain Name is confusingly similar to the Complainant’s IQOS Trademarks as it incorporates the Complainant’s registered distinctive word mark IQOS in its entirety. The difference between the Disputed Domain Name and the trademark is the addition of the suffix “chinhhang”, which is a Vietnamese term for “genuine” or “authentic”, after to the word “iqos”. Despite the fact that “chinhhang” itself has no meaning in English, Vietnamese customers are likely to perceive it as “chính hãng” (“genuine” or “authentic” in English). Thus, this element should be considered as a descriptive term and, consequently, the Panel finds that IQOS is the dominant element in the Disputed Domain Name and that the addition of the word “chinhhang” does nothing to distinguish the Disputed Domain Name from the IQOS Trademark, nor to dispel the risk of confusing similarity, as it was found in previous UDRP decisions (see, e.g., Playboy Enterprises International Inc. v. Joao Melancia,WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassM,WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoNIC.com / Domain for Sale,WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Midas Search Limited,WIPO Case No. D2004-0986; Six Continents Hotels, Inc., Inter-Continental Hotels Corporation v. South East Asia Tours,WIPO Case No. D2004-0388).
Thirdly, the Panel finds, similarly to other UDRP panels, that the addition of the applicable TLD “.net” to the Disputed Domain Name is viewed as a standard registration requirement and as such can be disregarded in the determination of confusing similarity (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, the Panel has no hesitation in finding that the Disputed Domain Name is confusingly similar to the Complainant’s registered IQOS Trademarks, and the first element under paragraph 4(a)(i) 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 consensus of previous decisions is that while the overall burden of proof in UDRP proceedings is on the complainant, once a prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating its rights or legitimate interests in the Disputed Domain Name (See e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; Julian Barnes v. Old Barn Studios,WIPO Case No. D2001-0121).
In this instant case, the Panel finds that the Respondent has failed to meet that burden since no response was timely submitted for evidence to the contrary, while the Complainant has presented sufficient evidence to the Panel that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
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 IQOS Trademarks.
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.
According to other prior UDRP panels, the Oki Data criteria is appropriate even when the respondent is not an authorized reseller.
In this particular case, the Panel finds that the Respondent did not place anywhere in the Website any statement or disclaimer disclosing accurately its relationship with the Complainant. Further, the Website also contains/displays the Complainant’s registered IQOS and HEETS Trademarks and the hummingbird logo, together with official images and marketing materials of the Complainant’s products.
In addition, the Website also comprises some indications such as “IQOS Store Việt Nam” (in English: “IQOS Store Viet Nam”) and “Iqos Chính Hãng - Thuốc lá điện tử Iqos Chính Hãng Nhập Khẩu Từ Nhật Bản” (in English: Genuine Iqos – Genuine Iqos e-cigarette imported from Japan”). 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 paragraph 4(c)(ii) of the Policy, the Panel finds that there is no indication that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name. As stated by the Complainant, the Respondent is not known or in any way related to the Complainant or any PMI affiliate and is not authorized to use the Complainant’s registered IQOS Trademarks. Furthermore, according to the WhoIs database, the registrant of the Disputed Domain Name was previously revealed as Domain Admin of Domain Whois Protection Service, which is a privacy registration service provider. It suggests that the Respondent would like to hide its identity. In response to the Center’s request for verification, the Registrar revealed that the Disputed Domain Name registrant standing behind the privacy registration service is Phan Van Dung, whom the Panel finds to bear no resemblance to the Disputed Domain Name. Consequently, similar to previous UDRP decisions, the Panel finds that the Respondent is not commonly known by the Disputed Domain Name.
Regarding paragraph 4(c)(iii) of the Policy, the Panel finds that no evidence has been presented 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 Complainant’s IQOS Trademarks when registering the Disputed Domain Name and had an intention to gain profit by riding on the good reputation of the Complainant.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The second element under 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 web site 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 web site or location or of a product or service on your web site 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 concurs with the views expressed by the Panel in Philip Morris Products S.A. v. Hristo Aleksandrov,WIPO Case No. D2018-1939, where it found that the Respondent would have unquestionably known the IQOS Trademarks based on several factors, namely (i) the well-known character of the Complainant, (ii) the extensive presence of IQOS products over the Internet and internationally, including Viet Nam (where the Respondent is located), (iii) the inherent distinctive character of the IQOS Trademarks (not having any meaning in Viet Nam, language of the Respondent and its website), and (iv) its identical reproduction in the Disputed Domain Name, adding the descriptive letters “chinhhang”, which means “genuine” or “authentic” in English. From such view, the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill.
Further, on the records before the Panel, it is well proved and evidenced that the Respondent registered and used the Disputed Domain Name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks. The Respondent is offering for selling the tobacco products bearing the Complainant’s IQOS Trademarks and using 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. On the date of this Decision, the Panel accesses the Website under the Disputed Domain Name and finds the indications that “IQOS Store Việt Nam” (in English: IQOS Store Viet Nam”), and “Iqos Chính Hãng - Thuốc lá điện tử Iqos Chính Hãng Nhập Khẩu Từ Nhật Bản” (in English: Genuine Iqos – Genuine Iqos e-cigarette imported from Japan”). The Panel takes the view that any Internet users seeking to purchase goods under the Complainant’s trademark would very likely mistakenly believe that the Respondent is either connected to or associated with the Complainant. However, no such connection exists in fact. 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, 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: April 24, 2019
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