WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Kim Seong Jung

Case No. D2020-0710

1. The Parties

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

The Respondent is Kim Seong Jung, Republic of Korea, self-represented.

2. The Domain Name and Registrar

The disputed domain name <iqoskorea.com> is registered with Gabia, Inc. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2020. On March 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 1, 2020, 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 April 3, 2020, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the disputed domain name is Korean. On April 3, 2020, the Complainant confirmed its request for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding at this stage.

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 in English and Korean of the Complaint, and the proceedings commenced on April 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2020. The Center received two email communications from the Respondent on April 13, 2020. The Respondent did not submit any formal Response. Accordingly, the Center notified the Parties on April 30, 2020, that it would proceed to panel appointment.

The Center appointed Andrew J. Park as the sole panelist in this matter on May 7, 2020. 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 Philip Morris Products S.A., a Swiss Company established under the laws of Switzerland and a subsidiary of Philip Morris International, Inc. The Complainant is a leading international tobacco company, with a workforce of approximately 73,500 people and its products are sold in approximately 180 countries. The Complainant’s extensive brand portfolio includes brands such as MARLBORO.

The IQOS system developed and sold by the Complainant is a precisely controlled heating device into which specially designed tobacco products are inserted. The IQOS system has achieved considerable international success and reputation, and has been almost exclusively distributed through the Complainant’s official IQOS stores and websites and through selected authorized distributors and retailers.

The Complainant is the owner of the following trademark registrations:

The disputed domain name <iqoskorea.com> was registered by the Respondent on February 23, 2019.

The disputed domain name resolves to a website that is an online shop which purportedly offers repair and maintenance services for the Complainant’s IQOS product. The website is provided in Korean, it indicates all prices in Korean won currency, and it uses the Complainant’s registered IQOS trademark and hummingbird trademark at the top of the website. The Respondent also uses a number of the Complainant’s official product images and a copyright notice without the Complainant’s authorization.

As noted above, the Complainant, following the filing of the Complaint with the Center, requested for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name should be transferred to the Complainant because:

1) the disputed domain name <iqoskorea.com> is identical or confusingly similar to the Complainant’s trademarks in which the Complainant has rights. The Complainant is the registered owner of the IQOS trademark in numerous jurisdictions, including but not limited to the Republic of Korea. In particular, the disputed domain name is identical to the Complainant’s IQOS trademark in its entirety and is combined with the geographic term “Korea.” The mere addition of the said geographic term is not sufficient to distinguish the disputed domain name from the Complainant’s trademark. Also, the addition of the generic Top-Level Domain (“gTLD”) suffix “.com” is viewed as a standard registration requirement and does not change the overall impression of the designation as being connected to the Complainant’s trademarks, therefore it can be disregarded when assessing the similarity test. Thus, the disputed domain name <iqoskorea.com> is identical or confusingly similar to the Complainant’s IQOS trademark.

2) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant claims that the Respondent lacks any right or legitimate interest in the disputed domain name because the Complainant has not licensed nor otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its IQOS trademark. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and, the Respondent is not an authorized distributor, reseller, or repair services operator of the Complainant’s IQOS product.

Further, there is no evidence that the Respondent has used the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is operating a website offering repair services for the Complainant’s IQOS product using the Complainant’s IQOS trademark and the device mark despite the fact that the Complainant had never given any authorization. In addition, the Respondent presented the Complainant’s product images as well as the copyrights associated with them and did not identify its relationship with the Complainant, as the real owner of the trademark. This illegitimate and false claim of rights in the Complainant’s official copyright-protected material supports the false impression that the website, which the disputed domain name resolved to, is endorsed by the Complainant, and further, Internet users or relevant consumers are clearly misled regarding the relationship between the Respondent and the Complainant. As such, they will falsely believe the Respondent to be an official repair service operator and therefore, such use of the disputed domain name cannot be considered as a bona fide offering of goods and services, and does not establish a legitimate interest on behalf of the Respondent.

3) the disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent knew of the existence of the Complainant’s IQOS trademark when registering the disputed domain name because the term “iqos” is a purely imaginative term and unique to the Complainant. The term “iqos” is not commonly used to refer to tobacco products or electronic devices. Therefore, it is evident that the Respondent chose the disputed domain name with intention to invoke a misleading association with the Complainant.

Also, the Respondent started offering repair services for the Complainant’s IQOS system immediately after registering the disputed domain name. It is evident that the Respondent used the disputed domain name with the intention to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s registered IQOS trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on his website or location, which constitutes registration and use in bad faith.

B. Respondent

In his email communications to the Center dated April 13, 2020, the Respondent appeared to indicate that he did not understand the notification of the Complaint document in Korean, and requested to speak with someone over the phone. The Center replied in English and Korean to these email communications on April 15, 2020. However, the Respondent did not submit a substantive response to the Complainant’s contentions.

6. Discussion and Findings

A. Language of the Proceeding

The Registration Agreement for the disputed domain name is in Korean. Pursuant 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, i.e., Korean, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraphs 10 and 11(a) of the Rules. In coming to this decision, the Panel has taken the following into account:

1) The Complaint has been submitted in English and it would cause undue delay and expense if the Complainant were required to translate the Complaint and other documents into Korean;

2) The Panel is proficient in both English and Korean, capable of reviewing all the documents and materials in both languages and giving full consideration to the Parties’ respective arguments; and

3) The Complainant and the Respondent use different languages, and neither of them likely understands the language of the other party. The Complainant is located in Switzerland while the Respondent is from the Republic of Korea. Therefore, English would be a fair language for both Parties.

In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English and the Respondent’s communications in Korean; (2) consider any relevant materials in Korean; and (3) issue a decision in English.

B. Identical or Confusingly Similar

This element consists of two parts; first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.

The Panel finds that the Complainant has established registered rights in the IQOS trademark, and that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety, and adding the geographic term that potential consumers may very well associate with the Complainant’s activity does nothing to avoid a finding of confusing similarity to the Complainant’s trademark. And the addition of the gTLD extension “.com” may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (see Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182).

For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

Here, the Panel finds that the Complainant has made out a prima facie case.

The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name.

The Respondent registered the disputed domain name, created a website using the disputed domain name purportedly offering repair services for the Complainant’s IQOS product, used not only the Complainant’s IQOS trademark and product images but also the copyrights related thereto and did not prominently include accurate information about his relationship with the Complainant on the website, all in an effort to confuse Internet users or consumers about the relationship between the Respondent and the Complainant, and all without the Complainant’s permission or authorization which demonstrates that the Respondent never had an intention to use the disputed domain name in connection with a bona fide offering of goods or services.

The Panel’s view is that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain name. Further, the Panel finds that the Respondent is improperly using the disputed domain name to create a false impression that the Respondent is affiliated with the Complainant.

The Panel is unable to find any reasonable basis upon which the Respondent could be said to have any rights or legitimate interests in respect of the disputed domain name, and the Respondent has not filed a formal Response.

Moreover, the nature of the disputed domain name carries a risk of implied affiliation with the Complainant (see WIPO Overview 3.0, section 2.5.1).

Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:

(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on the respondent’s website or location.

The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(iv). The Respondent registered the disputed domain name that is confusingly similar to the Complainant’s trademark, IQOS, with the knowledge of the Complainant’s world-wide famous brand and its business.

As already mentioned, the Respondent did not file any formal Response to the Complaint, failing thereby to rebut the Complainant’s allegations of the Respondent’s bad faith registration and use of the disputed domain name.

Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000‑0944).

The Panel notes that the IQOS System was first launched in Japan in 2014 and is now available in key cities in around 52 markets across the world. The IQOS System has achieved considerable international success. The disputed domain name is confusingly similar to the Complainant’s trademark and the Panel confirms that the disputed domain name was registered on February 23, 2019, well after the registration dates of the Complainant’s IQOS trademark in many countries, including in the Republic of Korea. It is clear that the Respondent registered the disputed domain name with the knowledge of the Complainant’s famous brand and its business.

The fact that (i) the Complainant had never given any authorization to the Respondent to use its trademark, (ii) the Respondent registered the disputed domain name which contains the Complainant’s trademark in its entirety, (iii) the Respondent is operating a website which the disputed domain name resolves to, purportedly offering repair services for the Complainant’s IQOS product and using the Complainant’s IQOS trademark as well as the Hummingbird device mark and the Complainant’s product images, (iv) the Respondent identified himself as IQOS Korea on the website, and (v) the composition of the disputed domain name, all make it abundantly clear that the Respondent registered the disputed domain name to cause Internet consumers to believe that there is a relationship between the Respondent and the Complainant, for commercial gain.

There is no other evidence whatsoever that the Respondent is currently using the disputed domain name with a bona fide purpose or is commonly known by, has used or has been commonly known under, or has a bona fide intent to use or be commonly known under the disputed domain name.

Accordingly, the evidence shows that the Respondent likely knew the Complainant’s trademark, and has sought to take unfair advantage of the confusing similarity between the disputed domain name and the Complainant’s trademark for commercial gain, in violation of paragraph 4(b)(iv) of the Policy.

As the conduct described above falls squarely within paragraph 4(b)(iv) of the Policy, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).

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 <iqoskorea.com> be transferred to the Complainant.

Andrew J. Park
Sole Panelist
Date: May 25, 2020