WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Whois Privacy Protection Service by onamae.com / Vu Tuan Dat, Cong ty co phan Vat Gia Viet Nam

Case No. D2018-1022

1. The Parties

The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.

The Respondent is Whois Privacy Protection Service by onamae.com of Tokyo, Japan / Vu Tuan Dat, Cong ty co phan Vat Gia Viet Nam of Ha Noi, Viet Nam (collectively, the “Respondents” or “Respondent”).

2. The Domain Name and Registrar

The disputed domain name <iqosvietnam.com> (the “Disputed Domain Name”) is registered with GMO Internet, Inc. d/b/a Onamae.com (the “Registrar”).

3. Procedural History

The Complainant filed the Complaint in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2018. On May 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 10, 2018, 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 May 14, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email in English and Japanese to the Parties regarding the language of the proceeding. The Complainant filed an amendment to the Complaint and requested that English be the language of the proceeding on May 17, 2018. The Respondents did not comment on the language of the proceeding by the specified due date.

The Center verified that the Complaint together with the amendment to the 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 May 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on June 12, 2018.

The Center appointed Haig Oghigian as the sole panelist in this matter on June 22, 2018. 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

As there is no submission from the Respondents, the facts are taken from the Complaint and generally accepted as true.

The Complainant is a Swiss company that is part of a group of companies affiliated with Philip Morris International Inc. (“PMI”). PMI develops and sells tobacco products, such as so called “Reduced Risk Products” (RRPs”), in over 180 countries. On such RRP is a product branded Iqos, which PMI sells in 38 markets through official stores and websites and selected authorized distributors and retailers.

The Complainant owns the IQOS trademarks (the “Mark”) worldwide, including, among others, the following registrations:

- International Registration IQOS (word) No. 1218246 registered on July 10, 2014 designating, among others, Viet Nam; and

- International Registration (device) No. 1329691 registered on August 10, 2016 designating, among others, Viet Nam and Japan.

The Respondent Whois Privacy Protection Service by onamae.com, located in Japan, is a privacy registration service provider. The Respondent Vu Tuan Dat, Cong ty co phan Vat Gia Viet Nam, located in Viet Nam, is the current registrant of the Disputed Domain Name.

The Disputed Domain Name is <iqosvietnam.com>, and it was registered on September 5, 2017. The Disputed Domain Name resolves to a website selling products under the Complainant’s Mark (“Website”).

5. Parties’ Contentions

A. Complainant

The Complainant seeks transfer of the Disputed Domain Name to the Complainant.

The Disputed Domain Name is identical or confusingly similar to the Mark.

The Complainant is the owner of the Mark registered in numerous jurisdictions in the world, including in Viet Nam and Japan where the Respondents are located. Additionally, the Complainant and its affiliate operate domain names that incorporate the Mark to promote its goods and services.

The Disputed Domain Name identically adopts the Mark and reproduces it with the addition of the geographic term “vietnam.” The generic Top-Level Domain (“gTLD”) extension “.com” is a standard registration requirement and should be disregarded when comparing the Disputed Domain Name and the Mark.

The Respondents have no right rights or legitimate interests in respect to the Disputed Domain Name.

The Complainant has not licensed or otherwise permitted the Respondents to use its Mark or to register the Disputed Domain Name. The Respondents are not related to the Complainant or any PMI affiliate and is not authorized to use the Mark. However, the Respondent’s Website suggests affiliation to the Complainant, PMI, or PMI affiliates.

The Disputed Domain Name was registered and is being used in bad faith.

The Respondent started offering the Complainant’s Iqos branded products immediately after registering the Disputed Domain Name.

The term “iqos” is a purely imaginative term and has no inherent meaning.

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 Mark as to the source, sponsorship, affiliation, or endorsement of its Website or location or of a product or service on its Website or location

By reproducing the Complainant’s trademark in the Disputed Domain Name and prominently displaying the Complainant’s registered logo at the top of the Website as well as using the Complainant’s marketing material, the Respondent’s Website clearly suggests that the Website under the Disputed Domain Name belongs to the Complainant or is an official affiliated dealer endorsed by the Complainant. The fact that the Website does not provide any information on the true identity of the Website provider but claims to be a general agent for Iqos branded products in Viet Nam shows that the Respondent wishes to intentionally create the impression that the products offered on the Website are provided by the Complainant or at least by an official dealer, with the clear objective of misleading Internet users as to the origin or source of the Website and the products offered and thereby attract, for commercial gain, Internet users to the Website.

The Respondent is using a privacy protection service to hide its true identity

B. Respondent

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language

Paragraph 11(a) of the Rules gives the Panel discretion to decide the language of this proceeding:

“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The Complainant requested the proceedings to proceed in English. The Respondents did not object to this request. The Complainant provided a copy of the Registration Agreement, which is written in English. In addition, the Complainant argued that English is a common language in global business, that the Respondent Vu Tuan Dat, Cong ty co phan Vat Gia Viet Nam is located in Viet Name and the Website is not in Japanese. The Panel notes that the Respondents had ample opportunity to raise objections in relation to the language of the proceeding or make known its preference, but it did not provide any response in this regard.

Accordingly, the Panel finds that the proceedings shall continue in English.

6.2 Substantive Findings

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following elements:

(i) The respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) The respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The respondent’s domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Disputed Domain Name is made up of the Complainant’s registered and distinctive Mark IQOS with the addition of the geographic term “vietnam,” and the gTLD “.com”. The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s registered Mark IQOS.

Accordingly, the first part of paragraph 4(a) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Respondents have not responded to the Complainant to assert any rights or legitimate interests in the Disputed Domain Name. Section 2.1 of the WIPO Overview 3.0 provides in pertinent part:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Complainant has made out a prima facie case that the Respondents have no rights or legitimate interests in the Disputed Domain Name, which the Respondents have not rebutted. The Respondents have not sought to assert any rights or legitimate interests in the Disputed Domain Name. Moreover, the Panel finds that none of the circumstances in the paragraph 4(c) of the Policy have been demonstrated by the Respondents nor are present in this case.

Additionally, as noted above, the Respondent has no affiliation with the Complainant and has no license or authority to use the Complainant’s Mark and therefore has no legitimate rights to suggest or imply that it does. However, the Respondent’s unauthorized use of the Mark in the Disputed Domain Name misleadingly suggests affiliation to the Complainant, even though there is none, and appears to be used to mislead consumers about the relationship. Such use, the Panel finds, does not establish a legitimate interest in the Disputed Domain Name.

Accordingly, the Panel thus finds the Respondent does not have rights or legitimate interests in the Disputed Domain Names and the Panel finds that the second part of the paragraph 4(a) of the Policy is therefore satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides various examples of bad faith registration, and in particular provides the following example in paragraph 4(b)(iv):

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location.

The Complainant has established sufficient evidence that strongly suggests that the Respondents intentionally attempted to attract for commercial gain Internet users to the Website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Complainant. In particular, the Complainant alleges:

- The Respondent reproduced the Complainant’s Mark in the Disputed Domain Name and prominently displayed the Complainant’s registered logo at the top of the Website and used the Complainant’s marketing material, which suggests that the Website under the Disputed Domain Name belongs to the Complainant or is an official affiliated dealer endorsed by the Complainant.

- The Respondent’s Website does not provide any information on the true identity of the Website provider but claims to be a general agent for IQOS branded products in Viet Nam, thereby creating the impression that the products offered on the Website are provided by the Complainant or at least by an official dealer.

The Respondents have provided no evidence to rebut these allegations nor any evidence of genuine use of the Disputed Domain Name. The selling of products bearing the Complainant’s Mark on the Website indicates that the Respondent was aware of the Complainant and its Mark when it registered the Disputed Domain Name. Accordingly, The Panel finds that such registration and use of the Disputed Domain Name is bad faith as contemplated by paragraph 4(b)(iv) of the Policy.

Accordingly, the Panel finds that the third part of the paragraph 4(a) of the Policy is therefore satisfied.

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 <iqosvietnam.com> be transferred to the Complainant.

Haig Oghigian
Sole Panelist
Date: July 3, 2018