Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
Respondent is Chavarung Tien, Thailand. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2020. On February 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 9, 2020, 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 Complainant on February 10, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 12, 2020. 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 Respondent of the Complaint, and the proceedings commenced on February 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 9, 2020. The Center appointed Lawrence K. Nodine as the sole panelist in this matter on March 13, 2020. 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 Complainant is a subsidiary of a large tobacco company, Philip Morris International Inc. (“PMI”), whose history traces back over 170 years. PMI and its subsidiaries sell products in approximately 180 countries and employ around 81,000 people worldwide. PMI offers numerous well-known tobacco brands, including MARLBORO®, the leading international cigarette brand. Since 2014, Complainant has offered a controlled heating device for nicotine products under the trademark IQOS. Complainant owns several trademark registrations for IQOS, including Thai Registration No. TM416024, registered on May 14, 2014, and International Registration No. 1461017, registered on July 25, 2016. Complainant’s IQOS products have generated extensive revenues and are offered in approximately 51 markets around the world. Complainant’s IQOS products are not offered in Thailand. Respondent registered the Disputed Domain Name on January 9, 2020. The Disputed Domain Name resolves to a website which offers IQOS products, third-party accessories for IQOS products, and products bearing other marks owned by Complainant or PMI. The website features both Thai and English wording. All prices are listed in Thai baht currency. The statement “If You interesting my product please addme from QR code or line 11 @bkkiqos” appears at the top of the website. The website does not contain a disclaimer of affiliation with Complainant. 5. Parties’ Contentions A. Complainant Complainant alleges that the Disputed Domain Name is confusingly similar to Complainant’s mark because the Disputed Domain Name consists of the entire IQOS trademark and the term “bkk.” Complainant further alleges that Respondent lacks any right or legitimate interests in the Disputed Domain Name. Complainant asserts that Respondent’s use of IQOS has not been licensed or otherwise permitted by Complainant. Additionally, Complainant asserts that Respondent’s use of the Disputed Domain Name to offer Complainant’s products and Complainant’s competitors’ products is not a bona fide offering of goods. As for Respondent’s bad faith, Complainant alleges that Respondent registered and is using the Disputed Domain Name with the intention to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s IQOS trademark. According to Complainant, the facts that Respondent began offering Complainant’s tobacco products immediately after it registered the Disputed Domain Name, that Complainant’s IQOS trademark is an imaginative term, and that Respondent sells IQOS products and competing products demonstrate that Respondent registered the Disputed Domain Name to intentionally created a false association with Complainant. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Complainant has demonstrated its rights in the IQOS trademark by way of its trademark registrations. The Disputed Domain Name incorporates the entire IQOS mark. Thus, the Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s mark. The addition of the term “bkk”, which in the view of the Panel corresponds to the International Air Transport Association’s 3-letter airport code for the Suvarnabhumi Airport in Thailand, does not prevent a finding of confusing similarity. Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Complainant has presented a prima facie case for Respondent’s lack of rights or legitimate interests in the Disputed Domain Name, which Respondent has failed to rebut. Complainant does not allege that the goods sold on Respondent’s website are counterfeit. Even if the goods are authentic and Respondent is a reseller of Complainant’s IQOS products, Respondent is still not using the Disputed Domain Name in connection with a bona fide offering of goods. For a reseller’s offering to be bona fide, the reseller must only sell the trademarked goods on its website. See Golden Lady Company S.p.A. v. v. C. Contact Privacy Inc. Customer 0148913115 / Avi Sharifi, Philippe Matignon,WIPO Case No. D2018-0650;and Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Additionally, the website associated with the disputed domain name must accurately disclose the relationship between the reseller and the trademark owner. See Golden Lady Company S.p.A. v. v. C. Contact Privacy Inc. Customer 0148913115 / Avi Sharifi, Philippe Matignon,WIPO Case No. D2018-0650; and Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Here, Respondent not only offers goods bearing Complainant’s IQOS trademark, but also offers third-party accessories for Complainant’s products and several products bearing Complainant’s other trademarks. Further, Respondent does not disclose its lack of relationship with Complainant on its website. On the contrary, Respondent’s statement “If You interesting my product please addme from QR code or line 11 @bkkiqos” implies that the products sold on its website are its own. Thus, Respondent’s offering of products is not bona fide within the meaning of the Policy. Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Respondent registered the Disputed Domain Name in bad faith. Given the distinctiveness of the IQOS trademark, Respondent must have registered the Disputed Domain Name with the intent to create a false association with Complainant. The addition of the geographic term “bkk” affirms Respondent’s intention to mislead consumers into believing Complainant’s products were offered in Thailand with Complainant’s authorization. Respondent has also used the Disputed Domain Name in bad faith. Respondent is using the Disputed Domain Name, which is confusingly similar to Complainant’s IQOS mark, to sell Complainant’s products without authorization. This evidence establishes that Respondent is using the Disputed Domain Name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s IQOS mark. See Golden Lady Company S.p.A. v. v. C. Contact Privacy Inc. Customer 0148913115 / Avi Sharifi, Philippe Matignon,WIPO Case No. D2018-0650. Complainant has satisfied paragraph 4(a)(iii) of the Policy. 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 Lawrence K. Nodine
Sole Panelist
Date: March 27, 2020
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