WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Nguyen Van Thanh

Case No. D2019-1867

1. The Parties

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

The Respondent is Nguyen Van Thanh, Viet Nam, self-represented.

2. The Domain Name and Registrar

The disputed domain name <iqoshaiphong.com> (“Disputed Domain Name”) is registered with P.A. Viet Nam Company Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2019. On August 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 4, 2019, 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.

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”).

The Center sent an email communication to the parties in English and Vietnamese on August 5, 2019 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the Disputed Domain Name is Vietnamese. The due date for the Complainant to submit a reply to the Center was August 8, 2019, and that for the Respondent was August 10, 2019. The Complainant submitted a request for English to be the language of the proceeding on August 6, 2019. The Respondent did not comment on the language of the proceeding by the said due date.

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2019. Two email communications from the Respondent were received by the Center on August 27, 2019. In one of August 27, 2019 emails, the Respondent requested for a suspension of the proceeding. This request was notified to the Complainant on the same day, and the Complainant was invited to submit a request for suspension by September 1, 2019, should it wish to explore settlement options. Given the fact that the Center received no such request from the Complainant, the proceeding continued as normal. No formal Response was submitted. On September 11, 2019, the Center notified the Parties that it would proceed to panel appointment.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on September 19, 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 Philip Morris Products S.A. is an affiliated company of Philip Morris International Inc. (jointly referred to as “PMI”), a leading international tobacco company, with products sold in approximately 180 countries.

IQOS is one of PMI’s brands, which are developed and used for smoke-free tobacco products. IQOS was first introduced in Nagoya, Japan in 2014 and now is available in around 44 markets across the world. The IQOS products have been almost exclusively distributed through PMI’s official IQOS stores, websites, selected authorized distributors and retailers.

The trademark IQOS has been registered for goods in Classes 9, 11, and 34 in a variety of countries, including in Viet Nam, where the Respondent resides, under International Registrations No. 1218246 registered on July 10, 2014, and 1461017 registered on January 18, 2019. The Complainant also registered the hummingbird logo and trademarks HEETS under International Registrations No. 1331054, 1328679 and 1326410 designating Viet Nam.

The Respondent registered the Disputed Domain Name <iqoshaiphong.com> on March 19, 2018. As of the date of this Decision, the Disputed Domain Name is resolving to a web shop, via which the Complainant’s products under the trademarks IQOS, HEETS and the hummingbird logo are advertised and offered for sale.

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 confusingly similar to a trademark in which the Complainant has rights.

Firstly, the Complainant contends that the Complainant is the registered owner of the IQOS trademarks in numerous jurisdictions, including, but not limited to, Viet Nam.

Second, the Complainant contends that the Disputed Domain Name is confusingly similar to trademarks owned by the Complainant since the Disputed Domain Name reproduces entirely the registered trademark IQOS, and the addition of the geographical name “haiphong” could not dispel any likelihood of confusion.

Finally, the Complainant submits that the addition of the Top-Level Domain (“TLD”) suffix “.com” in the Disputed Domain Name does not add any distinctiveness to the Disputed Domain Name.

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

The Complainant submits that the elements set forth in Policy, paragraph 4(c) are not fulfilled.

First, the Respondent is neither a licensee of the Complainant, nor otherwise authorized to use the Complainant’s trademarks.

Second, the Complainant contends that the Respondent has not made use of, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. Particularly, the use of Disputed Domain Name does not meet the requirements described in the decision Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903:

- The Disputed Domain Name itself suggests an affiliation with the Complainant and its IQOS trademark, as the Disputed Domain Name reproduces the IQOS trademark in its entirety together with the geographical name “haiphong”.

- Further, the Respondent also uses the Complainant’s registered trademark IQOS and the hummingbird logo as well as official marketing material and product images on its website with a false copyright claim.

- The website includes no information clarifying the Respondent’s relationship to the Complainant. To the contrary, the Respondent represents itself as “Đại lý IQOS chính hãng Hải Phòng” (in English: “Genuine IQOS Agency in Hai Phong”) on the footnote of the website’s homepage.

Third, the Respondent is not 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 trademarks of the Complainant.

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

The Complainant asserts that 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.

Furthermore, the word “iqos” is a purely imaginative term, it has no inherent meaning and it is not commonly used to refer to tobacco products. Thus, it is highly unlikely that the Respondent registered the Disputed Domain Name 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, by reproducing the Complainant’s registered trademark in the Disputed Domain Name and the header of the website, as well as using the Complainant’s official product images and marketing materials with a false copyright claim, the Respondent created false impression that the website belongs to the Complainant or is an affiliated deader endorsed by the Complainant, which it is not.

With such arguments, the Complainant submits that the Respondent intends to mislead users on the source of the website and thereby attract, 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.

On the basis of the above assertions, the Complainant requests transfer of the Disputed Domain Name.

B. Respondent

On August 27, 2019, the Respondent sent to the Center two emails in the Vietnamese language, in which the Respondent requested Vietnamese to be the language of the proceeding and for suspension of the proceeding for possible negotiation between the Parties. The Respondent also stated that:

- The Disputed Domain Name was registered legally;

- The Respondent could transfer the Disputed Domain Name to the Complainant if the Complainant accepted to pay the costs for investment and advertisement since March 19, 2018. In the later email, the Respondent offered to sell the Disputed Domain Name at the price of USD 10,000.

6. Discussion and Findings

6.1 Procedural Issues

A. Language of the Proceeding

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

On August 6, 2019, the Complainant submitted a request that English be the language of the proceeding.

On August 27, 2019, the Respondent sent an email to the Center, requesting Vietnamese to be the language of the proceeding.

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 present case, the Panel takes into account the circumstances of the proceeding, 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 were 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) the website at the Disputed Domain Name contains English contents, suggesting that the Respondent has ample knowledge of the English language and would be able to communicate in English; and

(iii) the Respondent’s request for Vietnamese to be the language of the proceeding was submitted long after the due date of August 10, 2019; in this regard, according to the Center’s Notification on Language of Proceeding dated August 5, 2019, as the Center did not hear from the Respondent by the due date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of proceedings.

Therefore, pursuant to 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.

6.2 Substantive Issues

A. 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.

First of all, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to IQOS, well before the Disputed Domain Name was registered.

Second, the Disputed Domain Name comprises the Complainant’s IQOS trademark, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the suffix “haiphong”, which evidently refers to the name of the major port city of Viet Nam where the Respondent resides.

The Panel finds that “iqos” remains clearly recognizable in the Disputed Domain Name. It is well established that the addition of geographic name (such as “haiphong”) to a trademark does not prevent a finding of confusing similarity. Thus, in the Panel’s view, the addition of the said suffix does not dispel the confusing similarity, as it was found in previous UDRP decisions (see, e.g., Royal Canin SAS v. Ong Pham Duc Thang, WIPO Case No. D2017-2567).

Third, the Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain (“gTLD “) “.com” to the Disputed Domain Name does not constitute an element as to avoid confusing similarity for the Policy purposes (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

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.

B. 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, including:

“(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 out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not submit a formal response or any relevant evidence to refute the Complainant’s contentions.

Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s assertions, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction. Thus, the Panel finds that the Respondent has no rights in the Disputed Domain Name

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”), namely:

- 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 this particular case, the Panel finds the Respondent does not place any statement or disclaimer on its website disclosing accurately its relationship or lack thereof with the Complainant. Further, the website under the Disputed Domain Name also contains the Complainant’s trademark IQOS and the hummingbird logo as well as its official marketing material and product image.

In addition, the website under the Disputed Domain Name also comprises the indication “Đại lý IQOS chính hãng Hải Phòng” (in English: “Genuine IQOS Agency in Hai Phong”) and the copyright claim “Copyright 2018 IQOS Hải Phòng”. This indication and copyright claim may mislead consumers into believing in a connection or association between the Respondent and the Complainant, where such connection or association does not exist in reality.

With such a view, the Panel finds that the unauthorized use of the Disputed Domain Name does not meet the Oki Data criteria and thus, does not constitute a bona fide use within paragraph 4(c)(i) of the Policy.

Regarding paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name, or that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. 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.

C. 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, including:

“(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 submit a substantive reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.

The Panel further finds that the Complainant’s IQOS trademark and the hummingbird logo have been registered in numerous countries. The Complainant’s trademarks have been registered and used in, among other countries, Viet Nam where the Respondent resides. These trademark registrations well predate the registration of the Disputed Domain Name.

The Disputed Domain Name comprises the IQOS trademark in its entirety, adding only the geographical term “haiphong”. Given the extensive use of the IQOS trademark for tobacco products by the Complainant, which occurs in numerous countries, including in Viet Nam, where the Respondent resides, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. Also, in consideration of the use of the Disputed Domain Name and the contents of the website thereunder, the Panel is of the view that the Respondent knew of the Complainant and its IQOS trademark when it registered the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill.

On the date of this Decision, the Panel accesses the Disputed Domain Name and finds that it is resolving to a web shop offering the tobacco products branded with the Complainant’s trademarks IQOS, HEETS and the hummingbird logo. In addition to the adoption of the Complainant’s IQOS trademark as a uniquely distinctive part in the Disputed Domain Name, the Respondent used 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 by the indication “Đại lý IQOS chính hãng Hải Phòng” and the copyright claim “Copyright 2018 IQOS Hải Phòng”.

The Panel takes the view that any Internet users seeking to purchase the Complainant’s IQOS products would likely mistakenly believe that the Respondent’s website 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.

Further, the Panel also notes that the Respondent offered the Disputed Domain Name for sale at the price of USD 10,000, as mentioned in its emails to the Center on August 27, 2019. With the said fact, the Panel opines that the Respondent registered the Disputed Domain Name partly for the purpose of selling it to the Complainant for a commercial gain, should it stand a chance. This is indicative of bad faith under paragraph 4(b)(i) of the Policy in the Panel’s view.

Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith 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 <iqoshaiphong.com> be transferred to the Complainant.

Pham Nghiem Xuan Bac
Sole Panelist
Date: October 3, 2019