WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Ong Nguyen Ngoc Ha

Case No. D2019-2509

1. The Parties

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

The Respondent is Ong Nguyen Ngoc Ha, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <thuoclaiqos.com> (the “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 October 14, 2019. On October 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 23, 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 the same day, 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 October 24, 2019.

The Registrar also indicated that the language of the Registration Agreement was Vietnamese. The Center sent an email communication in English and Vietnamese, to the Complainant on October 23, 2019, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of proceeding, or a Complaint translated into Vietnamese, or a request for English to be the language of proceeding. The Complainant filed a request for English to be the language of proceeding on October 24, 2019. No comments were received from the Respondent.

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 proceedings commenced on November 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2019.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on December 2, 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”), an 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 48 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 Class 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 No. 1461017 registered on January 18, 2019.

The Respondent registered the Disputed Domain Name on December 3, 2017. As of the date of this Decision, and at the time of filing the Complaint, the Disputed Domain Name is resolving to a web shop of the Respondent, via which the Complainant’s products under the trademark IQOS are advertised and offered for sale (the “Website”).

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 the trademark in which the Complainant has rights.

First, the Complainant contends that the Complainant is the registered owner of trademark registrations for IQOS in numerous jurisdictions, including, but not limited to Viet Nam.

Secondly, the Complainant asserts that the Disputed Domain Name is confusingly similar to IQOS trademarks owned by the Complainant since the Disputed Domain Name reproduces entirely the registered IQOS trademarks, and the addition of the descriptive term “thuoc la”, which means “cigarette” in Vietnamese, could not dispel any confusing similarity.

Finally, the Complainant submits that the addition of the generic Top-Level Domain (“gTLD”) 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 Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its IQOS trademark (or a domain name which will be associated with this trademark).

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 wholly reproduces the Complainant’s registered IQOS trademark together with the non-distinctive and descriptive word “thuoc la” (in English: “cigarette”).

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

- The Website includes no information regarding the identity of the provider of the Website, which is only identified as “Thuốc Lá Thuoclaiqos” (in English: “Thuoclaiqos Tobacco”) to perpetuate the false impression of an official commercial relationship between the Website and the Complainant.

- The disclaimer offered at the bottom of the Website is not presented in a clear and sufficiently prominent manner. On the Website provided under the Disputed Domain Name, the Respondent states that the products offered for sale on the Website are provided with a warranty by the Complainant. Not only is this statement false, it is clearly contradictory to the purported disclaimer, and will likely only be encountered by visitors to the Website after a commercial decision to purchase the products offered for sale on the Website has been made, on the basis of the false affiliation with the Complainant. Furthermore, the purported disclaimer does not clearly indicate who the owner of the IQOS trademarks is.

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 term IQOS is purely an imaginative term 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 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 title 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 dealer endorsed by the Complainant, which it is not.

Finally, the fact that the Respondent is using a privacy protection service to hide its true identity may in itself constitute a factor indicating 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 23, 2019, 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) submit the Complaint translated into Vietnamese, or (ii) a substantiated request for English to be the language of the proceeding.

On October 24, 2019, the Complainant submitted a request that English 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 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) the website under the Disputed Domain Name contains English contents; these suggest that the Respondent has knowledge of the English language and is able to communicate quite well in English;

(iii) the Respondent failed to provide any comments regarding the language of the proceeding and has not taken part in the proceeding,

Therefore, 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.

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.

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

Second, the Disputed Domain Name comprises the Complainant’s IQOS mark, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the prefix “thuoc la” (in English: “cigarette”), which is a dictionary term.

It is well established that the addition of a dictionary term (such as “thuoc la”) to a trademark does not prevent confusing similarity. Thus, in the Panel’s view, the addition of the said prefix does nothing to distinguish the Disputed Domain Name from the Complainant’s trademark, nor to dispel confusing similarity, as it was found in previous UDRP decisions (see, e.g., Facebook, Inc. v. Domain Admin Privacy Protect, LLC (PrivacyProtect.org) / Do Viet Dung, WIPO Case No. D2019-1121).

Third, the Panel finds, similarly to other UDRP panels, that the addition of the 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.

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, 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 a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not refute the Complainant’s contentions.

The consensus of previous UDRP decisions is that while the overall burden of proof in UDRP proceedings is on the complainant, once a prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating its rights or legitimate interests in the disputed domain name (see e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121). In this instant case, the Panel finds that the Respondent has failed to meet that burden since no response was submitted for evidence to the contrary.

Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, 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 trademark IQOS.

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 disclosing accurately its relationship with the Complainant (or the lack thereof). Further, the website under the Disputed Domain Name also contains the Complainant’s trademark IQOS as well as its official marketing material and product images.

In addition, the website under the Disputed Domain Name stated that “Tại ThuocLaIQOS.COM, chúng tôi cung cấp những sản phẩm từ chính store của hãng với chế độ bảo hành thông qua hãng” (in English: “At ThuocLaIQOS.COM, we provide products from the company’s main store with warranty by the company”) with the copyright claim “Copyright 2017 © ThuocLaIQOS.COM”. These 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.

In addition, the nature of the Disputed Domain Name carries a risk of implied affiliation.

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, 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 online 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, did not refute the Complainant’s contentions.

The Panel further finds that the Complainant’s IQOS trademarks 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 dictionary term “thuoc la”. Given the extensive use of the IQOS trademark for cigarettes 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 trademark IQOS which coincides with the evidence provided by the Complainant. 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 “Tại ThuocLaIQOS.COM, chúng tôi cung cấp những sản phẩm từ chính store của hãng với chế độ bảo hành thông qua hãng” (in English: “we provide products from the company’s main store with warranty by the company”) and the copyright claim “Copyright 2017 © ThuocLaIQOS.COM”.

The Panel takes the view that any Internet users seeking to purchase the Complainant’s IQOS products 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 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 <thuoclaiqos.com> be transferred to the Complainant.

Pham Nghiem Xuan Bac
Sole Panelist
Date: December 16, 2019