The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Domains By Proxy, LLC/ Quoc Bao Trinh, Viet Nam. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2020. On July 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name 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 August 14, 2020. On August 17, 2020, the Center received three email communications. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2020. The Respondent did not submit any formal response. Accordingly, the Center informed the parties that it would proceed to Panel Appointment on September 4, 2020. On September 9, 2020, the Center received an email communication from an entity connected to the Respondent. The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on September 17, 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 The Complainant is part of an international group of companies affiliated to Philip Morris International Inc., which is an international tobacco company, with products sold in approximately 180 countries, and a large brand portfolio including the globally-known trademark MARLBORO. The Complainant and its group have developed various products to substitute combustible cigarettes, one of them identified by the trademark IQOS, which was launched in Japan in 2014 and now is sold in around 53 markets across the world (but not in Viet Nam). The product identified by the mark IQOS is a controlled heating device, collectively referred as IQOS System, consisting of a pocket charger specially designed to charge a specific holder, into which specially designed tobacco products (identified by the marks HEETS or HEAT STICKS) are inserted and heated to generate a flavored nicotine-containing aerosol. The Complainant holds a large portfolio of registered trademark rights in the marks IQOS and HEETS in many jurisdictions, denominative or with a specific graphic representation, including International Registration No. 1218246 IQOS, word mark, registered on July 10, 2014, in classes 9, 11 and 34, designating, among other jurisdictions, the European Union and Viet Nam; International Registration No. 1461017 IQOS, figurative, registered on January 18, 2019, in classes 9 and 34, designating, among other jurisdictions, the Russian Federation and Viet Nam; International Registration 1329691 IQOS, figurative, registered on August 10, 2016, in classes 9, 11 and 34, designating, among other jurisdictions, China, the European Union, the Russian Federation and Viet Nam; International Registration No. 1326410 HEETS, word mark, registered on July 19, 2016, in classes 9, 11, and 34, designating, among other jurisdictions, China, the European Union, the Russian Federation, the United States of America and Viet Nam; and International Registration No. 1328679 HEETS, figurative, registered on July 20, 2016, in classes 9, 11 and 34, designating, among other jurisdictions, China, the European Union, the Russian Federation, the United States of America and Viet Nam (collectively the “IQOS mark” and the “HEETS mark”). The Complainant further holds a large portfolio of registered trademark rights in the mark consisting of a hummingbird logo, including International Registration No. 1331054, registered on October 11, 2016, in classes 9 and 34, designating, among other jurisdictions, China, the European Union, the Russian Federation and Viet Nam. The disputed domain names were registered on September 16, 2019, and are linked to similar websites, in the Vietnamese language, allegedly offering for sale the Complainant’s IQOS System and HEETS products as well as competing third party products of other commercial origin. The website provided under the disputed domain name Key contentions of the Complaint may be summarized as follows: The Complainant request the addition of the disputed domain name Through its intensive use and promotion, with a USD 6 billion investment, the IQOS System has achieved considerable international success and reputation with approximately 10 million relevant consumers. The IQOS System has been almost exclusively distributed through the Complainant’s IQOS stores and websites, as well as selected authorized distributors and retailers. The disputed domain names reproduce the Complainant’s IQOS mark in its entirety, with the addition of the non-distinctive and descriptive terms “store” and “cuahang” (the equivalent to “store” or “shop” in Vietnamese), which does not avoid confusing similarity. Any Internet user visiting any of the websites provided under the disputed domain nameswill reasonably expect to find a website commercially linked to the owner of the IQOS mark. This unlawful association is exacerbated by the use of the Complainant’s official product images without authorization. The Respondent lacks any rights or legitimate interests in the disputed domain names. The Complainant has not licensed or otherwise permitted the Respondent to use its trademarks not being an authorized distributor or reseller of the IQOS System, and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. The Respondent shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the Complainant’s trademarks. The websites provided under the disputed domain names do not meet the requirements for a bona fide offering of goods by resellers or distributors established in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The Respondent is not only offering the Complainant’s products but also competing tobacco products of other commercial origin, and the disputed domain names, in themselves, as well as the content of the websites linked to the disputed domain names, suggest affiliation with the Complainant and its trademarks. The false impression of an official commercial relationship between these websites and the Complainant is amplified by the fact that the Complainant’s products are primarily distributed through official or endorsed distributors, and the fact that the Complainant is not currently selling its IQOS System in Viet Nam. The disputed domain names create the false impression that the Complainant has officially introduced its products into the Vietnamese market. The disputed domain names were registered and are being used in bad faith. The term “iqos” is purely imaginative and unique, not being commonly used in the tobacco electronic devices sector, and as the Respondent started offering the Complainant’s products immediately after registering the disputed domain names, it is evident the Respondent knew of the Complainant’s trademarks when registering the disputed domain names. The use of the disputed domain names reveals the Respondent’s intention to attract, for commercial gain, Internet users to his websites by creating a likelihood of confusion with the Complainant and its registered trademarks. The Respondent’s websites clearly suggest the Complainant or an affiliated dealer of the Complainant as the source of the websites. Furthermore, the Respondent is not only using the disputed domain names for offering for sale the IQOS System, but also third party products of other commercial origin, which constitutes an evidence of the Respondent’s bad faith and a trademark infringement. The fact that the Respondent is using a privacy protection service to hide his identity is a further factor indicating bad faith. The Complainant has cited previous decisions under the Policy as well as various sections of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) that it considers supportive of its position. The Complainant requests the transfer of the disputed domain names. B. Respondent The Respondent did not reply to the Complainant’s contentions. The Center received various email communications from a person identifying himself as the website designer and online advertising agent for the websites related to the disputed domain names. These communications in essence indicated that the disputed domain names could not be monopolized by the Complainant as they include not only the IQOS mark but also other terms (“store” and “cuahang”), and the Respondent had helped to promote the Complainant’s mark, developing new business markets for its products and increasing its sales, so the Complainant should be thankful. 6. Discussion and Findings The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules. A. Preliminary Issue: Addition of a Domain Name to the Proceeding The Panel accepts the addition of the disputed domain name In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. In such cases, the addition of terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. It is further to be noted that the applicable generic Top-Level Domain (“gTLD”) in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test. See sections 1.7, 1.8, and 1.11.1, WIPO Overview 3.0. The Complainant indisputably has rights in the registered IQOS mark. The disputed domain names incorporate this mark in its entirety followed by the term “store” or preceded by the equivalent Vietnamese term “cuahang”, which does not avoid confusing similarity with the trademark. The Complainant’s IQOS mark is clearly recognizable in the disputed domain names, and the gTLDs “.net” and “.com” are a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. Accordingly, this Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied. C. Rights or Legitimate Interests Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain names, once the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests. The Complainant’s assertions and evidence effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain names, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain names in order to rebut the Complainant’s prima facie case. However, the Respondent has not replied to the Complainant’s contentions, not providing any explanation and evidence of rights or legitimate interests in the disputed domain names. As the disputed domain names are used in connection with online stores related to the Complainant’s IQOS System products addressed to the Vietnamese market, the Panel considers relevant the analysis of the requirements commonly known as the “Oki Data test” (referring to Oki Data Americas, Inc. v. ASD, Inc., supra). It is to be noted that resellers or distributors, using a domain name containing the complainant’s trademark to undertake sales related to the complainant’s goods or services, may be making a bona fide offering of goods and services and thus have a right or legitimate interest in such domain name, if the following cumulative requirements are meet: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to “corner the market” in domain names that reflect the trademark. See section 2.8, WIPO Overview 3.0. The evidence in the file shows the disputed domain names are linked to websites that commercialize alleged original IQOS System products – as well as competing tobacco products other commercial origin – and do not disclose the lack of relationship with the Complainant. On the contrary, the content of these websites lead to create an affiliation with the Complainant and its IQOS mark. The tap interfaces of these websites include the Complainant’s IQOS mark or its hummingbird logo, these websites include prominently the IQOS figurative mark in left side of its heading (where the origin of the site is normally located) and contain various official images of the Complainant’s products as well as links to various social media platforms’ pages that further reproduce the Complainant’s IQOS mark and its official products’ images. The Panel considers that all these circumstances contribute to a risk of affiliation and confusion. Furthermore, a core factor in assessing fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain names incorporate the Complainant’s IQOS mark in its entirety adding terms (“store” and its equivalent in Vietnamese “cuahang”), which also may point to the Complainant and its notorious IQOS mark, as an indication of one of its official stores or distributors. Therefore, the Panel considers that there is a high risk of implied affiliation. It is further remarkable that the Respondent has not replied to the Complaint or provided any explanation connected to any of the circumstances included in paragraph 4(c) of the Policy or any other circumstance that may be considered as a right or legitimate interest in the disputed domain names. All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not produced evidence to rebut the Complainant’s prima facie case, and all these case cumulative facts and circumstances point to consider that the Respondent lacks of any rights or legitimate interests in the disputed domain names. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established. D. Registered and Used in Bad Faith The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain names have been registered and are being used in bad faith. The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0. The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain names: (i) the disputed domain names incorporate the Complainant’s IQOS mark in its entirety adding terms (“store” and its equivalent in Vietnamese “cuahang”) that reinforce the likelihood of confusion or implied affiliation, creating the impression that the disputed domain names refer to one of the Complainant’s official stores or distributors for the Vietnamese market, suggesting sponsorship or endorsement by the Complainant; (ii) the Complainant’s trademark is notorious in its sector and the Complainant operates internationally; (iii) the Respondent used a privacy protection service to hide his identity in the WhoIs record of the disputed domain names; (iv) the websites linked to the disputed domain names include prominently the Complainant’s figurative IQOS mark (in the left side of its heading), as well as various official product images of the IQOS System products, not disclosing the lack of relationship with the Complainant; (v) the tap interfaces of the websites linked to the disputed domain names include respectively the Complainant’s IQOS mark or its hummingbird logo reinforcing the association or affiliation with the Complainant and its trademarks; and (vi) the Respondent has not offered any acceptable explanation of any rights or legitimate interests in the disputed domain names and has not come forward to deny the Complainant’s assertions of bad faith. Therefore, on the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the disputed domain names were very likely registered targeting the IQOS mark with the intention of obtaining a free ride on the established reputation of the Complainant, seeking to mislead Internet users to believe that there is a connection between the disputed domain names and the Complainant, which constitutes bad faith. All of the above-mentioned circumstances lead the Panel to conclude that the disputed domain names were registered and are being used in bad faith. Accordingly, the Panel considers that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain names in bad faith under the third element 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 names Reyes Campello Estebaranz 1 The following circumstances are relevant: (i) the Registrants of the disputed domain names are identical; (ii) the disputed domain names were registered on the same date; (iii) each of the respective websites associated with the disputed domain names contain identical designation at the top of their headings and identical contact details; and (iv) the website designer for the websites related to both disputed domain names is allegedly the same person, and has corroborated the common control of both disputed domain names.
Sole Panelist
Date: September 23, 2020
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