WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Whois Privacy Protection Service by onamae.com, Whois Privacy Protection Service by onamae.com / tran ngoc phuong, thanhdatweb.info

Case No. D2019-0661

1. The Parties

The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by D.M. Kisch Inc., South Africa.

The Respondent is Whois Privacy Protection Service by onamae.com, Whois Privacy Protection Service by onamae.com of Tokyo, Japan / tran ngoc phuong, thanhdatweb.info of Dac Nong, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <iqosnhat.com> is registered with GMO Internet, Inc. d/b/a Discount‑Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2019. On March 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 29, 2019, 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 April 1, 2019 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 April 4, 2019.

On April 1, 2019, the Center sent a communication to the Parties, in English and Japanese, regarding the language of the proceeding. On April 4, 2019, 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 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, in English and Japanese, of the Complaint, and the proceedings commenced on April 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2019.

The Center appointed Keiji Kondo as the sole panelist in this matter on May 10, 2019. 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 a company which is part of the group of companies affiliated to Philip Morris International Inc. (jointly referred to as “PMI”). PMI is one of the leading international tobacco company, with products sold in approximately 180 countries.

PMI has developed a number of products. One of these products developed and sold by PMI is branded IQOS.
IQOS is a precisely controlled heating device into which specially designed tobacco products under the brand names “HEETS” and “HeatSticks” are inserted and heated to generate a flavorful 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 Products”). The IQOS Products were first launched by PMI in Nagoya, Japan in 2014. Today the IQOS Products are available in key cities in around 43 markets across the world. As a result of a USD 4.5 billion investment and extensive international sales and marketing efforts (in accordance with local laws), the IQOS Products have achieved considerable international success and reputation. To date, the IQOS Products have been almost exclusively distributed through PMI’s official IQOS stores and websites and selected authorized distributors and retailers.

For its products the Complainant owns a large portfolio of trademarks. The following trademark registration is among them:

- International Registration IQOS No. 1218246 registered on July 10, 2014 designating many jurisdictions, including Viet Nam, where the Respondent resides.

The Disputed Domain Name was registered on January 25, 2019. It resolves to a website (the “Website”) in Vietnamese offering for sale IQOS Products.

5. Parties’ Contentions

A. Complainant

Language of Proceedings

To the best of the Complainant’s knowledge, the language of the Registration Agreement is Japanese. Notwithstanding the language of the registration agreement, the Complainant requests that the language of the proceedings be English and the Complaint has been submitted in English.

According to paragraph 11(a) of the Rules it is in the panel’s authority to determine the language of the proceedings differing from the language of the registration agreement having regard to the circumstances of the administrative proceeding. In the past numerous panels have accepted English as the language of the proceedings despite the registration agreement having a differing language, where it could be presumed from the circumstances of the case that the Respondent has knowledge of the English language, while the Complainant is not capable of providing the Complaint in the language of the registration agreement (e.g. Japanese) without unreasonable effort and costs.

In the present case, there is plenty of evidence showing that the Respondent is capable of communicating in English. Firstly, the disputed domain name is in Latin script and not in Japanese script indicating that the website provided under the disputed domain name is directed to, at the very least, an English-speaking public.

The Complainant being a Swiss entity has no knowledge of Japanese. The Complainant does not have specific information on the language of the registration agreement and therefore, in the light of above considerations regarding the Respondent’s knowledge of English, decided to file the Complaint in English being a common language in global business and obviously also a language, in which the Respondent is doing business.

In the light of above considerations, the Complainant requests that, notwithstanding the actual language of the proceedings, the panel in exercising its discretion to use a language other than that of the Registration Agreement, 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, determines English to be the language of the proceedings.

A-2 Substantive Issues

The Disputed Domain Name identically adopts the Complainant’s IQOS trademarks. It is well established that the applicable generic Top-Level Domain (“gTLD”) in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. It is further established that the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. The disputed domain name reproduces the IQOS trademark in its entirety, in addition to the descriptive /laudatory word “nhất”. Any internet user when visiting a website (the “Website”) provided under the Disputed Domain Name <iqosnhat.com> will reasonably expect to find it commercially linked to the owner of the IQOS trademark.

Therefore, the Complainant argues that the first element of the UDRP is met.

The Complainant has made a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its Trademarks or to register the disputed domain name incorporating its IQOS 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 Products. Secondly, the Website provided under the Disputed Domain Name does not meet the requirements set out by numerous 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 disputed 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. The Panel in Oki DataAmericas, Inc. v. ASD, Inc., supra 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:

- the Respondent must use the site to sell only the trademarked 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.

It is a common principle in all cases regarding the reseller scenario is that the use of a domain name cannot be “fair” if it suggests affiliation with the trademark owner. In the present case, the disputed domain name in itself suggests at least an affiliation with the Complainant and its IQOS trademark, as the distepud domain name wholly reproduces the Complainant’s registered IQOS trademark. In addition, the owner/administrator of the Website, without authorization prominently presents the Complainant’s registered trademark at the top left of the Website, where relevant consumers will usually expect to find the name of the online shop and/or the name of the website provider as well as on the landing page of the Website. The Website further uses the Complainant’s official product images and marketing materials without authorization.

The Website includes no information regarding the identity of the provider of the Website, which is only identified as “IQOS iqosnhat.com”, being a name which similarly includes the Complainant’s registered IQOS trademark (without authorization) and further serves to perpetuate the false impression of a commercial relationship between the Website and the Complainant.

The illegitimacy of the Respondent’s use of the Disputed Domain Name is further shown by the fact that the Complainant does not currently offer for sale its IQOS Products in the territory of Viet Nam, and the online shop provided under the Disputed Domain Name creates the false impression that the Complainant has officially introduced the IQOS Products into the Vietnamese market.

Such use of the Disputed Domain Name cannot be considered a bona fide offering of goods and does not establish a legitimate interest on behalf of the Respondent. Therefore, the Complainant argues that the second element of the UDRP is met.

It is evident from the Respondent’s use of the disputed domain name that the Respondent knew of the Complainant’s IQOS trademark when registering the disputed domain name. The Respondent started offering the Complainant’s IQOS Products immediately after registering it. Furthermore, the term “iqos” is purely imaginative and unique to the Complainant. The term “iqos” is not commonly used to refer to tobacco products. 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/relevant consumers 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 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.

It also well established that the fact that the Respondent is using a privacy protection service to hide its true identity in itself may constitute a factor indicating bad faith.

Therefore, the Complainant argues that the third element of the UDRP is met.

B. Respondent

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

6. Discussion and Findings

6.1 Language of proceedings

The Panel, exercising his authority to determine the language of the proceeding under paragraph 11(a) of the Rules, has decided English as the language of the proceeding, considering the following circumstances:

- The Complaint was filed in English;

- The language of the Registration Agreement is Japanese as confirmed by the Registrar;

- The Complainant is a Swiss entity, and has no knowledge of Japanese; and

- The Center formally notified the Respondent in both English and Japanese of the Complaint, and has given the Respondent an opportunity to comment on the language of the proceeding, but the Respondent chose not to respond. As the Respondent, who has been duly notified, in both English and Japanese, of this proceeding, has elected not to participate in any way, the Panel considers that to order 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”, “nhat” and “.com”. The part “iqos” is identical to the Complainant’s trademark IQOS.

The added part “nhat” seems to be a Vietnamese word, and one of the possible meanings of it is “Japanese” or “Japan-related”. The panel further notes that some pictures appearing on the webpage show packages with notices written in Japanese, and under the circumstances, addition of “nhat” to “iqos” does not avoid the finding of confusing similarity, regardless of whether “nhat” conveys the potentially intended meaning of “Japanese” or not. Addition of the gTLD, “.com” does not affect the conclusion in this analysis.

Accordingly, the disputed domain name is identical or confusingly similar to the Complainant’s trademark IQOS within the meaning of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent is using a privacy protection service to hide its true identity. This fact, together with the fact that the Respondent did not respond to the Complainant’s contentions, establishes that the name of the Respondent has no similarity or relationship to the disputed domain name. Accordingly, the Panel concludes that the Respondent has never been commonly known by the disputed domain name.

The Respondent uses the disputed domain name to provide a Vietnamese website at “www.iqosnhat.com”, which sells products which, at least apparently, are the products of the Complainant. However, the Complainant does not currently offer for sale its IQOS Products in Vietnam. The Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use or register domain names containing the Complainant’s trademark IQOS. As discussed in the “Bad Faith” analysis below, the Respondent is using the disputed domain name to intentionally attract Internet users to its Website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark IQOS. The Respondent’s use of the disputed domain name is neither for a bona fide offering of goods or services, nor is it for legitimate noncommercial or fair purposes.

Accordingly, the Respondent has no rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has developed a number of products, including IQOS Products. The Complainant’s trademark IQOS is associated with the Complainant’s IQOS Products. The Respondent sells products that at least appear to be the Complainant’s IQOS Products at the Website. This fact clearly precludes the finding that the Respondent was unaware of the Complainant’s trademark IQOS at the time of registration of the disputed domain name.

The Respondent uses the disputed domain name to sell IQOS Products, which may or may not be genuine. Regardless of whether they are genuine or not, the Respondent’s use of the Disputed Domain Name in this manner would lead Internet users to confusion that the goods or services offered at the Website are with authorization or endorsement by the Complainant. Such confusion would give the Respondent commercial gain.

Therefore, the Panel concludes that the Respondent registered and has been using the disputed domain name to attract, for commercial gain, Internet users to the Respondent’s Website by creating a likelihood of confusion with the Complainant’s trademark IQOS as to the source, sponsorship, affiliation, or endorsement of the IQOS Products offered at the Website. Accordingly, the Respondent registered and has been using the disputed domain name in bad faith within the meaning of paragraph 4(a)(iii) 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 name <iqosnhat.com> be transferred to the Complainant.

Keiji Kondo
Sole Panelist
Date: May 20, 2019