The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Nguyen Sy Manh, Nguyen Sy Manh, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2020. On July 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 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 the Complainant on August 7, 2020 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 August 7, 2020. On August 7, 2020, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding, as the Registrar confirmed that the language of the Registration Agreement was Japanese. On August 7, 2020, 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 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 August 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2020. The Center appointed Keiji Kondo as the sole panelist in this matter on September 24, 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 Philip Morris Products S.A. is a company, which is part of the group of companies affiliated to Philip Morris International Inc. (jointly referred to as “PMI”). PMI is a leading international tobacco company, with products sold in approximately 180 countries. PMI is known for innovating across its brand portfolio. In the course of transforming its business from combustible cigarettes to Reduced Risk Products (or “RRPs”, which PMI defines as products that present, are likely to present, or have the potential to present less risk of harm to smokers who switch to those products versus continued smoking), PMI has developed a number of RRP products. One of these RRPs developed and sold by PMI is called IQOS. IQOS is a precisely controlled heating device into which specially designed tobacco products under the brand names HEETS or HEATSTICKS are inserted and heated to generate a flavourful nicotine-containing aerosol. The IQOS system also consists of an IQOS Pocket Charger, specially designed to charge the IQOS Holder (collectively referred to as the “IQOS System”). The IQOS System was first launched by PMI in Nagoya, Japan in 2014 and has obtained an 18.3% share of the market in Japan. Today the IQOS System is available in key cities in around 53 markets across the world. For its new innovative smoke-free products the Complainant owns a portfolio of trademarks. Among them is IQOS (referred to as “the Complainant’s trademark”), which is registered as follows: - Trademark: IQOS (word) The Respondent registered the disputed domain name The disputed domain name reproduces the Complainant’s trademark in its entirety, with a non-distinctive addition, namely “md”. It is well established that the applicable Top-Level Domain (“TLD”) in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11 and the cases referenced therein). It is well accepted that the test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name to assess whether the mark is recognizable within the disputed domain name (see section 1.7 of the WIPO Overview 3.0). The confusing similarity test of the first UDRP element serves as a standing requirement, building the connection between the disputed domain name and the trademark rights on which a dispute is based. A domain name is confusingly similar to a trademark, when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name and therefore will likely be associated with the respective trademark (see Philip Morris USA Inc. v. Steven Scully, J&S Auto Repair,WIPO Case No. D2015-1001; Hertz System, Inc. v. Kwan-ming Lee,WIPO Case No. D2009-1165). Thus, it cannot be questioned that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name identically adopts the Complainant’s trademark. The disputed domain name is linked to an online shop at “www.iqosmd.com” allegedly selling and offering the Complainant’s IQOS System, as well as competing third party products of other commercial origin. The Website is provided in Vietnamese. The fact that the Website is indicating all prices in VND currency, as well as presenting an address in “Hà Nội” which is the capital of Viet Nam, clearly indicates that the Website is directed to Viet Nam. Importantly however the Complainant’s IQOS System is not currently sold in Viet Nam. Notwithstanding, the Website is clearly purporting to be an official online retailer of the Complainant’s IQOS System in Viet Nam by using the Complainant’s trademark in the disputed domain name together with the non-distinctive addition, namely “md”. 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 trademark. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating the Complainant’s trademark (or a domain name, which will be associated with the Complainant’s trademark). The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. On the contrary, the Respondent’s behavior shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademarks owned by the Complainant. Firstly, the Respondent is not an authorized distributor or reseller of the IQOS System. Secondly, the Website is selling competing tobacco products and/or accessories of other commercial origin. Thirdly, the Website provided under the disputed domain name does not meet the requirements set out by numerous UDRP panel decisions for a bona fide offering of goods. A reseller or distributor can be making a bona fide offering of goods or services and thus have a legitimate interest in the domain name at issue only if certain requirements are met. The leading case on this point is Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”). The panel in Oki Data concluded that the use of a manufacturer’s trademark as a domain name by a reseller could be deemed a “bona fide offering of goods or services” within the meaning of the Policy only if the following conditions are satisfied: 1. the Respondent must use the site to sell only the trademarked goods; 2. the site itself must accurately disclose the Respondent’s relationship with the trademark owner; and 3. 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. In the present case, the Respondent is not only offering the Complainant’s products but also competing tobacco products and accessories of other commercial origin. This in itself is sufficient to exclude a legitimate interest in the form of a bona fide offering of goods. It is evident from the Respondent’s use of the disputed domain name that the Respondent knew of the Complainant’s trademark when registering the disputed domain name. The Respondent started offering the Complainant’s IQOS System immediately after registering the disputed domain name. Furthermore, the term IQOS is purely an imaginative term and unique to the Complainant. The term IQOS is not commonly used to refer to tobacco products or electronic devices. It is therefore beyond the realm of reasonable coincidence that the Respondent chose the disputed domain name, without the intention of invoking a misleading association with the Complainant. It is also evident from the Respondent’s use of the disputed domain name that the Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to the Website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. By reproducing the Complainant’s registered trademark in the disputed domain name and the title of the Website, the Respondent’s Website clearly suggests the Complainant or an affiliated dealer of the Complainant as the source of the Website, which it is not. This suggestion is further supported by the Respondent’s use of the Complainant’s official product images. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding The Complainant admits that the language of the registration agreement is Japanese, but the Complaint has been submitted in English. On August 7, 2020, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On August 7, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. Considering the following circumstances, the Panel, exercising its authority to determine the language of the proceeding under paragraph 11(a) of the Rules, has decided English as the language of the proceeding: - The Complaint was filed in English; - The Complainant is a Swiss entity, and represented by a South African firm; - The Respondent’s address is in Viet Nam; - The Respondent did not comment on the language of the proceeding; - The Respondent did not reply to the Complainant’s contentions in any way; - The disputed domain name comprises an English term, and is formed by words in Roman characters (ASCII) and not in Japanese script; and - Ordering the translation of the Complaint would only result in extra delay and cost for the Complainant. 6.2. Substantive Issues A. Identical or Confusingly Similar The disputed domain name consists of “iqos”, which is the Complainant’s trademark, and “md”, which does not have any meaning either in English or in Japanese. It is well accepted that the test for confusing similarity serves as a standing requirement, building the connection between a disputed domain name and the trademark rights, which the dispute is based on. A domain name is confusingly similar to a trademark, when the domain name includes the trademark. In the present case, even with the addition of “md”, an average observer of the disputed domain name will recognize “iqos” in it. Therefore, it does not affect the finding that the disputed domain name includes the Complainant’s trademark. The TLD “.com” in the disputed domain name is typically disregarded under the test for confusing similarity. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests There is no similarity between the Respondent’s name and the disputed domain name. In addition, the Respondent did not respond to the Complainant’s contentions. Therefore, the Panel concludes that the Respondent has not been commonly known by the disputed domain name. The disputed domain name is linked to an online shop at “www.iqosmd.com”, where the Complainant’s IQOS System, as well as competing third party products of other commercial origin, is offered for sale. Therefore, the disputed domain name is not used for a legitimate noncommercial or fair use. The Complainant contends that the Complainant’s IQOS System is not currently sold in Viet Nam. Assuming that the products sold by the Respondent are genuine, and the Respondent’s online shop is targeted to Vietnamese customers, however, selling the Complainant’s products in Viet Nam per se may not be violation of law, and may be still regarded as bona fide offering of goods or services in determining whether the Respondent has legitimate interests in respect of the disputed domain name. The Respondent can be regarded as using the disputed domain name in connection with a bona fide offering of goods or services if the following requirements are met: 1. the Respondent must use the site to sell only the trademarked goods; 2. the site itself must accurately disclose the Respondent’s relationship with the Complainant; and 3. the Respondent must not try to “corner the market” in all relevant domain names, thus depriving the Complainant of the ability to reflect its own mark in a domain name. In the present case, however, the Respondent is offering not only the Complainant’s products but also competing tobacco products and accessories of other commercial origin. In addition, the Website appears not to disclose the Respondent’s relationship with the Complainant. Therefore, the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The term “iqos” is a coined term and does not have any meaning either in English or in Japanese. It is not commonly used to refer to tobacco products or electronic devices. Therefore, it is inconceivable that the Respondent chose it for its online shop and registered the disputed domain name without knowing the Complainant’s trademark. The Panel concludes that the Respondent registered the disputed domain name in bad faith. The Respondent started offering the Complainant’s IQOS System immediately after registering the disputed domain name. The way the Respondent uses the disputed domain name shows that the Respondent attempts to attract, for commercial gain, Internet users to the Respondent’s Website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. Therefore, the Panel concludes that the Respondent is using the disputed domain name in bad faith. Accordingly, the Panel finds that the disputed domain name has been registered and is being used 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 Keiji Kondo
- International Registration No. 1218246
- Registration Date: July 10, 2014
- Designated Jurisdictions: Antigua and Barbuda, Albania, Algeria, Armenia, Bahrain, Bosnia and Herzegovina, Bonaire, Sint Eustatius and Saba, Belarus, Colombia, Cuba, Curaçao, Democratic People’s Republic of Korea, Egypt, European Union, Gambia, Georgia, Israel, India, Iceland, Kazakhstan, Kyrgyzstan, Liberia, Madagascar, Malawi, Morocco, Monaco, Montenegro, Mongolia, New Zealand, North Macedonia, Oman, Republic of Moldova, Sao Tome and Principe, Serbia, Sint Maarten (Dutch part), Sudan, Tajikistan, Tunisia, Turkey, Ukraine, Viet Nam, Zambia, Zimbabwe.
Sole Panelist
Date: October 8, 2020
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