The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is jakkapan sae-kow, Thailand.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2021. On August 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 2021, 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 2, 2021 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 on September 6, 2021.
The Center sent an email communication in English and Thai to the parties on September 2, 2021 regarding the language of the proceeding. The Complainant sent an email to the Center requesting English to be the language of the proceeding on September 6, 2021. 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 of the Complaint, and the proceeding commenced on September 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2021.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on November 3, 2021. 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 A. ComplainantThe Complainant is a company incorporated in Switzerland and is part of the group of companies affiliated with Philip Morris International Inc. (“PMI”).
The Complainant is the owner of several registrations in jurisdictions worldwide for the trade mark IQOS (the “Trade Mark”), including trade mark registration No. TM416024 in Thailand, with a registration date of May 14, 2014; and International Registration No. 1218246 (designating Thailand), with a registration date of July 10, 2014.
PMI has used the Trade Mark since its launch in Japan in 2014 and to date in 67 countries in respect of its products, specifically controlled heating devices into which tobacco products are inserted and heated to generate a nicotine-containing aerosol.
B. RespondentThe Respondent is apparently a resident of Thailand.
C. The Disputed Domain NameThe disputed domain name was registered on January 14, 2021.
D. Use of the Disputed Domain NameThe disputed domain name is resolved to a Thai language website offering for sale the Complainant’s products under the Trade Mark, together with competing third party products (the “Website”).
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Language of the ProceedingThe language of the Registration Agreement for the disputed domain name is Thai. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the Parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the Parties and undue delay to the proceeding.
The Complainant has requested that the language of the proceeding be English, for several reasons, including (1) the fact the disputed domain name is in Latin script and the Website contains some English language phrases, which supports the conclusion that the Respondent understands English; (2) the Complainant is unable to understand Thai; and (3) translating the Complaint into Thai would lead to undue delay and substantial additional expense.
The Panel would have accepted a response in Thai, but the Respondent did not file a response and did not file any submissions with respect to the language of the proceeding.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
Although there is insufficient evidence before the Panel to support a conclusion that the Respondent is conversant in English, the Panel notes that the Respondent has taken no part in this proceeding.
The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.2. Substantive Elements of the PolicyThe Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly SimilarThe Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name incorporates the entirety of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, “WIPO Overview 3.0, section 1.7”) together with the word “store” and the commonly used abbreviation for Thailand, “th”, separated by a hyphen.
Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark.
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that he has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in connection with the Website, in order to offer for sale the Complainant’s products as well as competing third party products under the Trade Mark.
The Complainant contends that the Complainant’s IQOS system is not currently sold in Thailand and points out that the currency used on the Website is the currency used in Thailand.
The Complainant contends that the Website is further using a number of the Complainant’s official product images and marketing materials without the Complainant’s authorisation, thereby strengthening the impression of an affiliation with the Complainant.
The Complainant contends further that the Website does not show any details regarding the provider of the Website, nor does it acknowledge the Complainant as the real owner of the Trade Mark, leaving the Internet user under the false impression that the Website is an online shop of the Complainant or one of its official distributors. Furthermore, the nature of the disputed domain name carries a risk of an implied affiliation or connection with the Complainant (see WIPO Overview, section 2.5.1).
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithIn light of the composition and the manner of use of the disputed domain name highlighted in Section 6B above, the Panel finds that the requisite element of bad faith has been made out, under paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.
7. DecisionFor 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
Sebastian M.W. Hughes
Sole Panelist
Dated: November 10, 2021