WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Domain Admin, Domain Whois Protection Service / Nguyen Tien Hung

Case No. D2018-1272

1. The Parties

The Complainant is Philip Morris Products S.A. of Neuch√Ętel, Switzerland, represented by Boehmert & Boehmert, Germany.

The Respondent is Domain Admin, Domain Whois Protection Service of Ho Chi Minh, Viet Nam / Nguyen Tien Hung of Hai Phong, Viet Nam.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2018. On June 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 2018, 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 June 11, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center transmitted an email in English and Vietnamese to the Parties regarding the language of the proceeding. The Complainant filed an amendment to the Complaint on June 13, 2018, in which it submitted a request that English be the language of the proceeding.

The Center verified that the Complaint together with the amendment to 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 Vietnamese of the Complaint, and the proceedings commenced on June 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2018.

The Center appointed George R. F. Souter as the sole panelist in this matter on July 20, 2018. 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.

Language of the Proceedings

The Complainant notes that the Respondent conducts business in both Vietnamese and English. The Respondent received details of the Complaint in English and Vietnamese from the Center, but did not file a Response. The Complainant requests that the language of the proceeding be English, to avoid the considerable cost and difficulty of translating the documents which it considers necessary in these proceedings into Vietnamese. The Panel regards this request as reasonable in the circumstances of the present case, and exercises the Panel’s discretion under paragraph 11 of the Rules and decides that the language of the proceeding shall be English.

4. Factual Background

The Complainant is a leading manufacturer of cigarettes and tobacco, with a worldwide reputation. In the course of transforming its business from combustible cigarettes to Reduced Risk Products (or “RRPs”), namely products that present, are likely to represent, or have the potential to present less risk of harm to smokers who switch to those products versus continued smoking), the Complainant has developed a number of products. One of these RRPs developed and sold by the Complainant is branded IQOS. IQOS is a precisely controlled heating device into which specially designed tobacco products are inserted to generate a flavorful nicotine-containing aerosol. IQOS was first introduced in Nagoya, Japan in 2014. Today IQOS is available in key cities in around 38 markets across the world. The Complainant has provided the Panel with details of extensive protection of its IQOS trademark, including International Registrations Nos. 1218246 (registered on July 10, 2014) and 1329691 (registered on August 10, 2016), both of which extend to the territory of Viet Nam.

The disputed domain name was registered on September 10, 2017. It resolves to a website offering products traded in by the Complainant under its IQOS trademark.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain is confusingly similar to its IQOS trademark, with the mere addition of the descriptive or non-distinctive element “hanoi”.

The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that the Respondent is not generally known by the disputed domain name, nor has the Respondent received permission from the Complainant to use its IQOS trademark.

The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith in connection with a website offering products traded in by the Complainant under its IQOS trademark.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well-established in prior decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g., “.com”, “.org”, and “.net”) may be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view, and considers the “.com” gTLD indicator to be irrelevant in the present case.

Hanoi is the name of the capital city of Viet Nam, and is, by its nature, a descriptive and non-distinctive element. It is well-established in prior decisions under the Policy that the mere addition of a descriptive or non-distinctive element to a complainant’s trademark is insufficient to avoid a finding of confusing similarity between a complainant’s trademark and a disputed domain name, and the Panel so finds in the present case.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.

The Panel regards the submissions put forward by the Complainants as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.

Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is of the view that in the circumstances of the present case, in which the Complainant’s trademark in its entirety appears in the disputed domain name, with the mere addition of a well-known geographical name, it is appropriate for the Panel to find that the disputed domain name has been registered in bad faith, and the Panel so finds.

It is well-established in prior decisions under the Policy that the use of a disputed domain in connection with a website offering goods of the type traded in by a complainant under its trademark constitutes use in bad faith, and the Panel so finds in the circumstances of the present case.

Accordingly, the Panel finds that the Complainant has satisfied the dual requirements 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 <iqoshanoi.com> be transferred to the Complainant.

George R. F. Souter
Sole Panelist
Date: August 3, 2018