WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Souphaphone PHETCHALERN, Souphaphone PHETCHALERN

Case No. D2020-2842

1. The Parties

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

The Respondent is Souphaphone PHETCHALERN, Souphaphone PHETCHALERN, Thailand.

2. The Domain Names and Registrar

The disputed domain names <heetslaos.com> and <iqoslaos.com> are 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 October 28, 2020. On October 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 29, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 29, 2020 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 in English on November 30, 2020.

On November 29, 2020, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On November 30, 2020, 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 December 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2021.

The Center appointed Douglas Clark as the sole panelist in this matter on February 3, 2021. 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.

On February 4, 2021, the Respondent transmitted an email communication to the Center providing details on the disputed domain names and enquiring as to the status of the disputed domain names.

Having considered the case and the Respondent’s email, the Panel determined it was appropriate to allow the Respondent a chance to file a Response. On February 21, 2021, the following panel order was issued:

“Following the Notification of Respondent Default on January 4, 2021, and the appointment of the Panel on February 3, 2021, on February 4, 2021, the WIPO Arbitration and Mediation Center (the ‘Center’) received an email communication from the Respondent asking about the status of the disputed domain names. The Respondent stated that he had received contact from the ‘Thai Engineer Team’ to ask details regarding the disputed domain names. Although the Panel notes that the Complaint was properly notified to the Respondent in accordance with paragraph 2(a) of the Rules on December 14, 2020, and the notification of the Complaint appears to have been successfully delivered to ‘[…]@z.com’, the email address used by the Respondent, the above correspondence suggests that the Respondent may not have received the Complaint.

For reasons which will be explained in its decision, the Panel has determined that the language of the proceeding will be English. The Panel further notes that the Respondent’s email of February 4, 2021 was sent in English.

In light of the above, out an abundance of caution, and in order to ensure procedural fairness, pursuant to paragraphs 10 and 12 of the Rules, the Panel orders:

1. The Center forward the notification of the Complaint dated December 14, 2020 to the Respondent at the email address(es) used to communicate with the Center on February 4, 2021;

2. The Respondent may file a Response within seven (7) days of issuance of this Panel Order, i.e., by March 2, 2021;

3. The Complainant may provide comments only to the Respondent’s submission in relation to this Panel Order (if any) by March 9, 2021.

The date for the Panel to render a Decision is extended accordingly to March 16, 2021.”

No Response was received from the Respondent.

4. Factual Background

The Complainant is part of a group of companies affiliated with Philip Morris International Inc. (“PMI”). PMI is an international tobacco company with products sold in around 180 countries. PMI has innovated its brand portfolio by transforming its business from producing combustible cigarettes to producing Reduced Risk Products. One such Reduced Risk Product developed and sold by PMI is IQOS, a heating device where specially designed tobacco products are inserted and heated to generate a nicotine-containing aerosol, which comes with a corresponding pocket charger. The IQOS system has obtained 18.3% of the market share in Japan and is available in key cities in around 57 markets around the world. As a result of PMI’s sales and marketing efforts, IQOS has achieved international success and reputation, with approximately 11.2 million relevant consumers worldwide.

The Complainant owns a large portfolio of well-known trade marks worldwide for its smoke-free products. Among them include the following trade mark registrations:

The disputed domain names were both registered on September 3, 2020. At the date of this Complaint and at the date of this Decision, the disputed domain name <heetslaos.com> redirects to the disputed domain name <iqoslaos.com>. Meanwhile, the disputed domain name <iqoslaos.com> resolves to an online shop allegedly selling the Complainant’s IQOS system and displaying the Complainant’s IQOS and HEETS trade marks, along with the Complainant’s official product images. When the Panel received the case file the page under the disputed domain names also featured advertisements for car parts.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(a) The disputed domain names are confusingly similar to its trade marks. The disputed domain names wholly incorporate the IQOS trade mark and the HEETS trade mark, and the addition of the term “.com” in the disputed domain names does not eliminate the overall notion that the designations are connected to the trade marks and the likelihood of confusion that the disputed domain names and the trade marks are associated;

(b) The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not affiliated with the Complainant in any way and the Complainant has never granted any authorisation or license to use the Complainant’s trade marks. The Respondent is not commonly known by the disputed domain names, and has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names; and

(c) The disputed domain names were registered and are being used in bad faith. The mere fact that the Respondent has registered a domain name incorporating trade marks of a well-known company gives rise to an inference of bad faith. Based on the use of the disputed domain names, the Respondent registered and is using the disputed domain names to attract Internet users for commercial gain, creating a likelihood of confusion with the Complainant’s trade marks.

The Complainant requests the transfer of the disputed domain names.

B. Respondent

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

6. Discussion and Findings

6.1 Preliminary Issues – 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 administrative 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.

In this case, the language of the Registration Agreement for the disputed domain names is in Japanese. Based on the given evidence, there is no agreement between the Complainant and the Respondent regarding the language of the proceeding. The Respondent did not respond as to the language of the proceeding. The Complainant has filed its Complaint in English and has requested that English be the language for the proceeding under the following grounds:

a) the Complainant communicates in English and would be prejudiced if it is required to translate the Complaint and supporting documents to Japanese;

b) in order to proceed in Japanese, the Complainant would have had to retain specialised translation services that would cause an unnecessary burden to the Complainant and delay the proceeding;

c) the Respondent has demonstrated that he or she understands English since the disputed domain names resolve to a website that contains English;

d) the disputed domain names are in Latin script and not Japanese script; and

e) the English language being a common language in global business and a language in which the Respondent is doing business in.

In accordance with paragraph 11(a) of the Rules, the Panel hereby determines that the language of the proceeding shall be in English after considering the following circumstances:

- the Center has notified the Respondent of the proceeding in both English and Japanese.

- the Respondent has not commented on the language of the proceeding.

- an order for the translation of the Complaint and other supporting documents will result in significant expenses for the Complainant and a delay in the proceeding.

- based on his or her previous communication to the Center and the Complainant, the Respondent is clearly capable of communicating in the English language.

Further, this Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.

6.2 Multiple Domain Names

According to paragraph 10(e) of the Rules, the Panel has the power to consolidate multiple domain name disputes. Paragraph 3(c) of the Rules also provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. The Panel has the authority to consolidate multiple domains into one dispute provided that (i) the domain names are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. (see section 4.11.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”))

In this case, the Complainant relies on the following facts to show that the disputed domain names are subject to common control:

- the Registrar for the disputed domain names are identical;
- the disputed domain names were both registered on the same date; and
- when accessing the disputed domain name <heetslaos.com>, the user is redirected to the same website the disputed domain name <iqoslaos.com> resolves to.

For the above reasons, the Panel accepts the Complainant’s application to consolidate the disputed domain names in the Complaint.

6.3 Substantive Issues

The Complainant must satisfy all three elements of paragraph 4(a) of the Policy in order to succeed in its action:

(i) the disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights to;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain names <heetslaos.com> and <iqoslaos.com> are confusingly similar to the Complainant’s trade marks. The disputed domain name <iqoslaos.com> incorporates the Complainant’s IQOS trade mark in full while the disputed domain name <heetslaos.com> incorporates the Complainant’s HEETS trade mark in full. Both disputed domain names are then accompanied with the geographical indication “laos” and the generic Top-Level Domain (“gTLD”) “.com”. The gTLD is generally disregarded when considering the first element. (see section 11.1WIPO Overview 3.0)

The Complainant has therefore satisfied the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Respondent has not asserted any rights or legitimate interests in relation to the disputed domain names.

Section 2.1 of the WIPO Overview 3.0 provides:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Complainant has asserted that the Respondent has no business with and is in no way affiliated with the Complainant.

The Respondent despite being given a further opportunity under Procedural Order No. 1 has not filed a Response to assert any rights or legitimate interests.

The Respondent does, however, appear to sell genuine products. There is no suggestion by the Complainant that the products are not genuine. In general, there is no objection to using the trademark of another to sell genuine products.

However, in Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903, the panel in that case held that to be “bona fide” within the meaning paragraph 4(c)(i), the offering should meet the following requirements:

- 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, it could be using the trademark to bait internet users and then switch them to other goods;

- The site must accurately disclose the registrant’s relationship with the trademark owners; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site; and

- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

In this case the Respondent does not meet, at least, third requirement set out above. The website under the disputed domain names does not accurately disclose its relationship with the Complainant.

The second element of paragraph 4(a) of the Policy is therefore satisfied.

C. Registered and Used in Bad Faith

Based on the given evidence, the disputed domain names were registered and are being used in bad faith.

The disputed domain names were registered long after the Complainant has registered the IQOS and HEETS trade marks and the use of the Complainant’s IQOS and HEETS trade marks cannot be a coincidence. The terms “IQOS” and “HEETS” are invented terms. In addition, the Respondent began offering the Complainant’s IQOS branded products immediately after registering the disputed domain names. The Panel is satisfied that the Respondent was aware of the Complainant and its IQOS and HEETS trade marks when he or she registered the disputed domain names.

The Respondent has registered the disputed domain name to attract Internet users to the website for commercial gain in accordance with paragraph 4(b)(iv) of the Policy. By displaying and reproducing the Complainant’s IQOS and HEETS trade marks in the disputed domain names the Respondent is clearly seeking to attract users for commercial gain.

For the above reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith.

The Complainant has therefore satisfied the third element under paragraph 4(a) 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 names <heetslaos.com> and <iqoslaos.com> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: March 17, 2021