The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Domain Admin, Domain Whois Protection Service, Viet Nam / Tran Minh Bao, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2019. On September 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 21, 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 September 23, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center has also indicated to the Complainant that the language of the Registration Agreement was Vietnamese, and invited the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of proceeding, a Complaint translated into Vietnamese, or a request for English to be the language of proceeding. The Complainant filed a request for English to be the language of proceeding and filed an amended Complaint on September 25, 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, in English and Vietnamese, the Respondent of the Complaint, and the proceedings commenced on October 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2019. The Center appointed Pablo A. Palazzi as the sole panelist in this matter on November 19, 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 is part of the group of companies affiliated with Philip Morris International Inc. (“PMI”). PMI is an international tobacco company, with products sold in more than 180 countries. The Complainant has developed a specific line of products under the brand IQOS. The IQOS products were first launched in Nagoya, Japan, in 2014. To date, the IQOS products are available in 48 markets across the world, specifically precisely controlled heating devices into which specially designed tobacco products are inserted and heated to generate a flavorful nicotine-containing aerosol. The IQOS products are almost exclusively distributed through PMI’s official stores and websites as well as authorized distributors and retailers. The Complainant claims to have invested USD 6 billion in international sales and marketing efforts resulting in approximately 8 million consumers have converted to the IQOS System. The Complainant is the owner of the following International Trademark Registrations, among others: - IQOS, International Trademark Registration No. 1218246 registered on July 10, 2014; and - IQOS (& Design), International Trademark Registration No. 1329691, registered on April 27, 2017. The Disputed Domain Name The Disputed Domain Name redirects to an online shop allegedly offering the Complainant’s IQOS System, as well as competing third party products. The website is directed to Vietnamese users. It is important to highlight that the Complainant’s IQOS System is not currently sold in Viet Nam. 5. Parties’ Contentions A. Complainant Identical or confusingly similar The Complainant states that the Disputed Domain Name is confusingly similar to its IQOS trademark, since the Disputed Domain Name identically adopts the Complainant’s IQOS trademark. The Complainant further alleges that addition of the terms “jk” is insufficient in itself to avoid finding of confusing similarity. Consequently, any Internet user when visiting a website provided under the Disputed Domain Name will reasonably expect to find a website commercially linked to the Complainant. Rights or legitimate interests The Complainant states that the Respondent lacks any rights or legitimate interests in the Disputed Domain Name. In addition, the Complainant has not licensed or otherwise authorized the Respondent to use any of its trademarks or to register a domain name with the IQOS trademark. Furthermore, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, due to the fact that the Respondent is not an authorized distributor or reseller of the Complainant’s products. The Complainant further states that, the Respondent’s website uses the Complainant’s official product images without authorization. Finally, the Respondent is not only offering the Complainant’s products but also competing tobacco products and accessories of other unknown commercial origin. Registered and used in bad faith The Complainant states that the Respondent knew of the Complainant’s trademark when registering the Disputed Domain Name. Furthermore, the Complainant states that it is also evident from the Respondent’s use of the Disputed Domain Name that he registered and used the Disputed Domain Name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name in this case: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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. A. Language of the proceedings Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the Parties, the language of the proceeding is the language of the registration agreement, subject to the authority of the Panel to determine otherwise. The Complainant has requested the proceeding to be conducted in English for the following reasons: - The Respondent is capable of communicating in English since the Disputed Domain Name is in Latin script and not in Vietnamese script. In addition, the website under the Disputed Domain Name includes a number of English words, suggesting that the Respondent understands English. - The website under the Disputed Domain Name appears to be a multi-language website as one is able to select “English” at the language menu. - The Complainant has no knowledge of Vietnamese. It should be pointed out that the Respondent did not make any comment in this regard. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5 states the following: “[…], panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.” Therefore, taking into consideration the Complainant’s arguments, the Panel decides that the language of the proceedings will be English, and that the decision will be rendered also in English. The Panel would have accepted a Response in Vietnamese, but none was filed. B. Identical or Confusingly Similar Based on the evidence submitted, the Panel finds that the Disputed Domain Name Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name: (i) before any notice to you of the dispute, your use of, 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 at issue. There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark. The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods and services. In addition, in the website related to the Disputed Domain Name, the Respondent is allegedly offering the Complainant’s IQOS System as well as third party products. The Respondent had the opportunity to demonstrate his rights or legitimate interests, but he did not reply to the Complainant’s contention. As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith. The Disputed Domain Name was registered in 2019; five years after the Complainant obtained its International registration for the trademark IQOS. The fact that the Respondent started offering the Complainant’s products in a website connected to the Disputed Domain Name immediately after registering the Disputed Domain Name clearly demonstrates that the Respondent was aware of the Complainant’s IQOS trademark when registering the Disputed Domain Name. Furthermore, the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the Disputed Domain Name incorporating its IQOS trademark. Neither the Respondent is an authorized reseller of the Complainant. In addition, the Complainant submitted evidence that the Respondent’s website creates the impression that the online shop is an official dealer of the IQOS System in Japan and Korea this is why the Respondent added the letter “jk” after the Complainant’s trademark. Thus, Internet users might have well been under the impression that it is a website created and operated by an official distributor or reseller of the Complainant. The circumstances in the case before the Panel indicate that the Respondent was aware of the Complainant’s trademark when registering the Disputed Domain Name and that he has intentionally created likelihood of confusion with the Complainant’s IQOS trademark and website in order to attract Internet users for his own commercial gain. In addition, the fact that the Respondent uses a privacy registration service in order to hide his real identity is an additional evidence of the bad faith of the Respondent (SeeWIPO Case No. D2006-0696, Fifth Third Bancorp v. Secure Whois Information Service). Due to this conduct, it is obvious that the Respondent intentionally created likelihood of confusion with the Complainant’s trademarks and its website in order to attract Internet users for his own commercial gain, as described by paragraph 4(b)(iv) of the Policy. Therefore, taking all circumstances into account and for all above reasons, the Panel concludes that the Respondent has registered and using the Disputed Domain Name in bad faith. 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 Pablo A. Palazzi
Sole Panelist
Date: November 29, 2019
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