The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Whois Privacy Protection Service by , Japan / Tran Xuan Quy, Viet Nam. 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 June 14, 2019. On June 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 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 June 20, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on June 21, 2019.
On June 20, 2019, the Center sent a communication to the Parties, in English and Japanese, regarding the language of the proceeding. On June 21, 2019, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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, in English and Japanese, of the Complaint, and the proceedings commenced on July 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2019.
The Center appointed Haig Oghigian as the sole panelist in this matter on August 7, 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 Administrative Panel finds the following as uncontested facts:
- The Complainant is the owner the IQOS trademark in word (first registered on July 10, 2014, International registration number 1218246) and various other device formats (since August 10, 2016, International registration number 1329691) in multiple jurisdictions, including Viet Nam.
- The Complainant has used these trademarks in association with its “Reduced Risk Products” of vapor cigarettes.
- The Complainant offers these products in 44 markets across the world, with 7.3 million current customers, through official IQOS stores, websites and authorized distributors and retailers. Complainant has yet to have an authorized distributor in Viet Nam.
- The Respondent registered the disputed domain name on August 15, 2018 and is using it to operate a website selling IQOS branded cigarettes (whether original or counterfeit is unknown). 5. Parties’ Contentions A. Complainant
The Complainant claims the Respondent’s use of the disputed domain name to sell IQOS branded products in Viet Nam is confusingly similar to their own trademarks and ownership rights. It further claims the Respondent has no rights or legitimate interests in the disputed domain name. It argues that the use of the disputed domain name by the Respondent is in bad faith and, therefore, requests the disputed domain name be transferred to the Complainant accordingly. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The first item to address is the language of this administrative proceeding. The principle established under the Rules, paragraph 11(a), is that “unless 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”. Based on communications from the Registrar, Japanese is the language of the Registration Agreement. Accordingly, the initial starting place for the language of the proceeding should be in Japanese, subject to the authority of the Panel to determine otherwise.
In this instance, the Panel notes that the Center sent the Respondent case-related communications emails in English and Japanese and gave the Respondent chances to respond in either language of its preference. The Panel also notes the Complainant’s request that the language of the proceeding be English. The Panel would have accepted a Response in either English or Japanese, but none was filed.
Moreover, the Panel notes that the Respondent’s name (“Tran Xuan Quy”) does not appear to be a Japanese name and that the disputed domain name incorporates English words, which suggests that the Respondent has certain knowledge of English. Accordingly, the Panel determines it proper to go forward in the proceeding in English. A. Identical or Confusingly Similar
The disputed domain name incorporates the entirety of the Complainant’s IQOS trademark. It differs from the Complainant’s trademark merely by the addition of “viet” after “iqos”. The Panel finds the mere addition of a geographic descriptor “viet” does not avoid a finding of confusing similarity under the first element (see AB Electrolux v. ID Shield Service,WIPO Case No. D2015-2027 and its progeny).
Under the principles set forth in section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), this Panel determines that the disputed domain name is confusingly similar to the Complainant’s IQOS trademark. B. Rights or Legitimate Interests
The Complainant indicates it has never authorized the Respondent to register or use any domain name by using its trademark. There is no business relationship between the Parties, and the Respondent is not commonly known by the disputed domain name. Noting the nature of the disputed domain name, the fact that the disputed domain name is being used to host a site selling the Complainant’s product (whether genuine and/or counterfeit) further negatively reflects on the Respondent’s use. The Respondent has not responded to provide any evidence of legitimate use. Accordingly, based on the available record and Policy, paragraph 4(a)(ii), the Panel finds that the Complainant has made out a prima facie case, which has not been rebutted by the Respondent, and that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Panel finds that the Complainant has established a global brand for its products and finds it difficult to believe that the Respondent was unaware of the brand, and just happened to register a confusingly similar disputed domain name . Noting the nature of the disputed domain name, the fact that the disputed domain name resolves to a website featuring the sale of the Complainant’s IQOS products further reveals a financial motive of misleading Internet users, who are trying to find the Complainant’s website, to instead visit the Respondent’s website for its own financial gain. The Panel further notes the Respondent’s notice of copyright on the website as to the images and content depicting the Complainant’s brands and product, shows an intention to mislead consumers into believing it is an authorized site. The fact that the Respondent has failed in any way to challenge the Complainant’s contentions further leads the Panel to the conclusion that its registration and use of the disputed domain name has been done in bad faith as set forth under Policy, paragraphs 4(a)(iii) and 4(b)(iv). 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.
Haig Oghigian
Sole Panelist
Date: August 21, 2019
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