WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Cong Ty TNHH Dau Tu Van Xay Dung Va Vien
Thong PDA Viet N

Case No. D2018-2332

1. The Parties

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

The Respondent is Cong Ty TNHH Dau Tu Van Xay Dung Va Vien Thong PDA Viet N of Ha Noi, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <iqosstore.info> (the “Disputed Domain Name”) is registered with Mat Bao Trading & Service Company Limited d/b/a Mat Bao (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2018. On October 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 13, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On October 18, 2018, the Center notified the Parties in both English and Vietnamese that the language of the Registration Agreement for the Disputed Domain Name was Vietnamese. The Complainant requested that English be the language of the proceeding on October 19, 2018. The Respondent did not reply.

The Center verified that 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 of the Complaint, and the proceedings commenced on October 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2018.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on November 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

The Complainant, Philip Morris Products S.A., a Swiss company established under the laws of Switzerland, is part of a corporate group owned by Philip Morris International, Inc. (jointly referred to as “PMI”), a leading international tobacco company, with products sold in approximately 180 countries.

PMI developed and used the trademark IQOS for smoke-free tobacco products. IQOS was first launched by PMI in Japan in 2014 and are being sold in around 43 markets worldwide today through PMI’s official IQOS stores and websites and selected authorized distributors and retailers.

The Complainant is the owner of numerous trademarks worldwide for the mark IQOS, including Viet Nam, under International Registrations No. 1218246 dated July 10, 2014 and No. 1329691 dated August 10, 2016. Further to the above, the Complainant also provided a list of the Complainant’s other IQOS trademarks.

The Disputed Domain Name <iqosstore.info> was registered on January 3, 2018 and it resolves to a website apparently selling the Complainant’s goods.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights.

The Complainant claims to have trademark registrations for IQOS in numerous jurisdictions in the world, including in Viet Nam where the Respondent is located. All these trademark registrations predate the Disputed Domain Name.

As to the addition of the term “store”, the Complainant argues that this suffix does not lessen the confusing similarity between the Disputed Domain Name and the Complainant’s trademark, given that the term “iqos” is dominant and the word “store” is merely descriptive. The Complainant further submits the facts that the Disputed Domain Name reproduces the registered trademark IQOS in its entirety, and the presence of the term “store” which gives rise to an immediate association with the Complainant’s official distributors, increase the likelihood of confusion.

The Complainant states that the applicable Top-Level Domain (“TLD”) “.info” is viewed as a standard registration requirement and as such is disregarded under the first element of the confusing similarity test.

Thus, the Disputed Domain Name is confusingly similar to the Complainant’s prior registered trademarks.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant contents that it has not licensed or otherwise permitted the Respondent to use or register any domain name incorporating its IQOS trademark.

Further, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.

The website under the Disputed Domain Name does not meet the requirements set out by numerous panel decisions for a bona fide offering of goods. In addition, the Respondent states no information on the aforesaid website clarifying the Respondent’s relationship to the Complainant but to the contrary, uses the indication “IQOS Store Viet Nam”, as well as the terms “Công ty TNHH IQOS Việt Nam” (in English “IQOS Viet Nam Co., Ltd”) and “IQOS VIỆT NAM” on its pages. In addition, the Respondent uses the Complainant’s official marketing material without authority. All these intentionally suggests that the website under the Disputed Domain Name belongs to the Complainant or is of an official dealer endorsed by the Complainant, which is not true.

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

The Respondent’s bad faith registration is established by the fact that the Respondent must have known the Complainant’s trademark at the time of the Disputed Domain Name’s registration. It is evidenced that the word “iqos” is a purely imaginative term and has no inherent meaning. Further, the Respondent started offering the Complainant’s IQOS products immediately after registering the Disputed Domain Name. Therefore, it is highly unlikely that the subject registration was filed without prior knowledge of the IQOS trademarks of 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 IQOS trademark as to the source, sponsorship, affiliation or endorsement of its website or a product/service. Additionally, the website does not provide any information on the true identity of the website provider.

With such arguments, the Complainant submits that the Respondent intends to mislead users on the source of the website and thereby attracting, for commercial gain, Internet users to the website. Therefore, the Complainant considers that the Respondent registered and is using the Disputed Domain Name in bad faith.

With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Procedural Issues

(i) Language of the Proceeding

The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement was Vietnamese.

As the Complaint was filed in English, the Center, in its notification dated October 18, 2018, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) a translation of the Complaint in Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding.

On October 19, 2018, the Complainant submitted a request that English be the language of the proceeding. The Respondent submitted neither request nor comment.

According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the 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.

Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).

In the case at hand, the Panel takes the circumstances of the proceeding into account, including, but not limited to:

(i) the fact that the Complainant, a Swiss business entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation;

(ii) English is a common language in global business and quite popular in Viet Nam, where the Respondent is located, and it is also evidenced to the Panel that the website under the Disputed Domain Name contains English contents; these suggest that the Respondent has knowledge of the English language and be able to communicate in English; and

(iii) the Respondent 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.

For the purpose of easy comprehension of the Complainant (the only party actively taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English.

(ii) The Respondent’s Failure to Respond

The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.

In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether the following three elements are present:

(i) the Disputed Domain Name registered by the Respondent 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 Disputed Domain Name; and

(iii) the Disputed Domain Name was registered and is being used in bad faith.

Consequently, the Panel shall further analyze the eventual concurrence of these three grounds in the present case.

B. Identical or Confusingly Similar

The Complainant is required to establish the following: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Name is identical or confusingly similar to its trademark.

The Panel finds that the Complainant has established rights in the IQOS trademark based on the trademark registrations cited above, well before the Disputed Domain Name was registered.

The next issue to be addressed is as to whether the Disputed Domain Name is identical or confusingly similar to the Complainant’s IQOS trademark. In this respect, the Panel finds the following factors from the Complainant’s evidence persuasive:

First, the Disputed Domain Name features the Complainant’s IQOS trademark in its entirety. The difference between the Disputed Domain Name and the trademark is the addition of the suffix “store”, a descriptive term, which does not prevent a finding of confusing similarity under the first element. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. As such, the Panel finds that the word “iqos” remains the dominant element in the Disputed Domain Name and that the addition of a descriptive term (such as “store”) to a trademark is not sufficient to affect the distinctiveness of the Complainant’s trademark for the Policy purposes, as it was found in previous UDRP decisions (see, e.g., Neilmed Pharmaceuticals, Inc. v. Nguyen Thi Hoa, WIPO Case No. D2018-0302; Nike Innovate C.V. v. Melikssa Svensson, WIPO Case No. D2017-2357; Acer Incorporated v. Marco Martucci, WIPO Case No. D2017-2121).

Second, similarly to other UDRP panels, the addition of the generic “.info” TLD identifier can be ignored for the purpose of assessment of the first element. See WIPO Overview 3.0, section 1.11.1.

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s IQOS trademark, and the first element of the Policy is established.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights and legitimate interests in the Disputed Domain Name. Once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate evidence demonstrating the contrary. In the instant case, the Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions.

Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that there is no relationship between the Complainant and the Respondent. Moreover, the Complainant has not authorized the Respondent to register or use its trademark or the Disputed Domain Name. There is also no evidence available that the Respondent holds any registered or unregistered IQOS trademark rights in any jurisdiction. Thus, the Panel finds that the Respondent has no rights in the IQOS trademark.

A reseller or distributor may be making a bona fide offering of goods and services and thus have rights or legitimate interests in a domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903 (“Oki Data”), including:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);

- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and

- 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 case at hand, the Panel finds that the Disputed Domain Name resolves to a website offering for sale not only the Complainants’ smoke-free tobacco products but also some competing products of other commercial origin, evocative of “bait and switch” tactics.

Further, the Panel finds that on the website under the Disputed Domain Name, the Respondent does not place any statement or disclaimer disclosing the lack of relationship with the Complainant. It even comprises some indications such as “Công ty TNHH IQOS Việt Nam” (in English “IQOS Viet Nam Co., Ltd”) and “IQOS VIỆT NAM” that may create a suggestion on possible connection or association between the Respondent and the Complainant, where such things do not exist in reality. This suggestion is supported by the copyright notice, i.e. “Copyright 2017 IQOS Việt Nam, All Rights Reserved”, used at the bottom of the Respondent’s website.

In addition, the Panel also finds that the website under the Disputed Domain Name also contains the Complainant’s logo-typed trademark and official marketing material and product images.

Hence, in the Panel’s view, all the foregoing findings indicates that the Respondent’s use of the Disputed Domain Name cannot be a bona fide offering of goods or services.

Regarding paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, there is no evidence that the Respondent might have been commonly known by the Disputed Domain Name or that it might have used the Disputed Domain Name in connection with a legitimate noncommercial or fair use. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name, the Respondent had full knowledge of the IQOS trademark and had an intention to gain profit by riding on the goodwill and reputation of the Complainant.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element, paragraph 4(a)(ii) of the Policy is established.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy reads:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

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

Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”.

The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.

The Panel concurs with the views expressed by the Panel in Philip Morris Products S.A. v. Hristo Aleksandrov, WIPO Case No. D2018-1939, where it found that the Respondent would have unquestionably known the IQOS trademark based on several factors, namely (i) the well-known character of the Complainant, (ii) the extensive presence of IQOS products over the Internet and internationally, including Viet Nam (where the Respondent is located), (iii) the inherent distinctive character of the IQOS trademark (not having any meaning in Viet Nam, language of the Respondent and its website), and (iv) its identical reproduction in the Disputed Domain Name, adding the descriptive letters “store”. From such view, the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill.

Further, on the records before the Panel, it is well proved and evidenced that the Respondent registered and used the Disputed Domain Name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks. The Respondent is offering for selling the tobacco products bearing the Complainant’s IQOS trademark and using the Complainant’s trademarks, official marketing material and product images on the website and falsely represented itself like an affiliate or distributor of the Complainant. On the date of this Decision, the Panel accesses the website under the Disputed Domain Name and finds the statement “IQOS Store - 36 Lý Nam Đế Cửa Đông, Hoàn Kiếm, Hà Nội là Tổng đại lý cung cấp tất cả các dòng sản phẩm IQOS tại Việt Nam với giá cả hợp lý, chế độ bảo hành chính hãng 12 tháng!” (in English “IQOS Store - 36 Ly Nam Dong Street, Hoan Kiem District, Hanoi is a general distributor providing all IQOS products in Viet Nam at a reasonable price with 12 months warranty!”). The Panel takes the view that any Internet users seeking to purchase goods under the Complainant’s trademark would very likely mistakenly believe that the Respondent is either connected to or associated with the Complainant. However, no such connection exists in fact. Such misleading behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent.
Taking into account all of the above, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, and the third element under paragraph 4(a)(iii) of the Policy is established.

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, <iqosstore.info>, be transferred to the Complainant.

Pham Nghiem Xuan Bac
Sole Panelist
Date: December 4, 2018