WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Ong Nguyen Quang Hung, Ong Nguyen Quang Hung

Case No. D2018-1274

1. The Parties

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

The Respondent is Ong Nguyen Quang Hung, Ong Nguyen Quang Hung of Ho Chi Minh, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <iqosnhatviet.com> (the “disputed Domain Name”) is registered with Mat Bao Trading & Service Company Limited d/b/a Mat Bao (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 8, 2018, 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 June 15, 2018, the Center sent an email in English and Vietnamese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on June 18, 2018. The Respondent did not comment on the language of the proceeding by the specific due date.

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 Vietnamese of the Complaint, and the proceedings commenced on June 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2018.

The Center appointed Emmanuelle Ragot 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.

In the present case the Complainant does not have specific information on the language of the Registration Agreement, and requested that English be the language of the proceeding. The Registrar confirmed in its verification that the language of the Registration Agreement is Vietnamese. However, there is evidence showing that the Respondent is capable of communicating in English. The Website provided under the disputed Domain Name is an online shop which is partially addressing the users in English. For example the Website welcomes the users in English and the headings are in English.

The Panel finds that numerous past UDRP panels have accepted English as the language of the proceedings despite the Registration Agreement having a differing language, where it could be presumed from the circumstances of the case that the respondent had knowledge of the English language, while the complainant is not capable of providing the complaint in the language of the Registration Agreement (e.g. Vietnamese) without unreasonable effort and costs. In such cases it was found that to require the complainant to translate the complaint and all supporting documents into e.g. Chinese would cause an unnecessary burden to the complainant and unnecessarily delay the proceeding (see Johnson & Johnson v. Ba Pham Thi Lan Phuong, WIPO Case No. D2017-1526; Orlane S.A. v. Yu Zhou He / He Yu Zhou, WIPO Case No. D2016-1763; Groupe Auchan v. Yang Yi, WIPO Case No. D2014-2094;Laverana GmbH & Co. KG v. Silkewang, Jiangsu Yun Lin Culture Communication Co., Ltd. / xia men yi ming wang luo you xian gong si, WIPO Case No. D2016-0721).

4. Factual Background

The Complainant is a company which is part of the group of companies affiliated to Philip Morris International Inc. (jointly referred to as “PMI”). PMI is the leading international tobacco company, with products sold in approximately 180 countries. PMI’s unequaled brand portfolio contains brands like Marlboro, the world’s number one international selling cigarette brand since 1972. Information about PMI and its business are available on PMI’s corporate website at “www.pmi.com”.

In the course of transforming its business from combustible cigarettes to Reduced Risk Products (or “RRPs”, supposedly likely to represent, or have the potential to present less risk of harm to smokers who switch to those products versus continued smoking), PMI has developed a number of products. One of these RRPs developed and sold by PMI is branded iQOS. iQOS branded product is a precisely controlled heating device into which specially designed tobacco products under the brand names “Heets” or “HeatSticks” are inserted to generate a flavorful nicotine-containing aerosol. iQOS branded product was first introduced in Nagoya, Japan in 2014. Today iQOS branded product is available in key cities in around 38 markets across the world. So far the iQOS branded product has exclusively been distributed through PMI’s official stores and websites and selected authorized distributors and retailers. The Complainant has not yet commercialized its iQOS branded products in Viet Nam.

In respect of its RRPs, the Complainant owns a large portfolio of well-known trademarks.

The Complainant is the owner of the IQOS trademarks worldwide and this extensive portfolio includes a variety of different trademark applications and registrations.

The Complainant further owns a vast trademark portfolio for its iQOS brands as well as the registered slogan “iQOS This Changes Everything.” Among them, but by no means limited to, are the following trademark registrations (referred to as “Trademarks”):

-International Registration IQOS (word) No. 1218246 registered on July 10, 2014 designating among others countries Viet Nam;

-International Registration logo(device) No. 1 329691 registered on August 10, 2016 designating among others countries Viet Nam;

-International Registration logo(word/device) No. 1328679 registered on July 20, 2016 designating among others countries Viet Nam;

-International Registration HEETS (word) No. 1326410 registered on July 19, 2016 designating among others countries Viet Nam;

The Disputed Domain Name <iqosnhatviet.com>, is linked to an online shop at “www.iqosnhatviet.com” (referred to as the “Website”) allegedly offering the Complainant’s iQOS and Heets branded products. The Website is provided mainly in Vietnamese but the headings and the shop navigation instructions are provided in English.

The Website is clearly suggesting the Respondent to be an official dealer. It is prominently using the registered logologo and the registered slogan “iQOS This Changes Everything” on the landing page (right screenshot translated through Google Translate):

-International Registration THIS CHANGES EVERYTHING (word) No. 1343294 registered on December 12, 2016 designating among others countries Viet Nam;

-International Registration (device) No. 1331054 registered on October 11, 2016 designating among others countries Viet Nam;

logo


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On the Facebook Page linked to the Website the Respondent is using the same design and a variation of the Complainant’s hummingbird logo to indicate the provider of the Facebook page:

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The same logo clearly imitating the Complainant’s registered hummingbird logo and the color scheme of the registered logologo is used on the Website for presenting the individual products.

On the Website the Respondent is further using a number of the Complainant’s official marketing material without the Complainant’s authorization.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed Domain Name <iqosnhatviet.com> is confusingly similar to the Complainant’s PMI’s Trademarks verbal, figurative or complex IQOS.

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

The Respondent according to the WhoIs information is a company situated in Viet Nam. The Respondent is not known or in any way related to the Complainant or any PMI affiliate and is not authorized to use the IQOS trademarks. The Respondent has no rights or legitimate interests with respect to the disputed Domain Name <iqosnhatviet.com>. The disputed Domain Name <iqosnhatviet.com> was registered and used in bad faith. The Complainant requests transfer of the Domain Name.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) The 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 Domain Name; and

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

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established that it has rights to the PMI’s Trademarks.

The threshold test for confusing similarity involves the comparison between the trademark and the domain name itself determining whether the domain name is confusingly similar to the trademark. The trademark would generally be recognizable within the domain name. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). In this case the disputed Domain Name <iqosnhatviet.com> contains the IQOS trademark in its entirety, with IQOS placed in a leading position associated with the terms “nhat” and “viet”, the latter is descriptive.

The Panel finds that the disputed Domain Name <iqosnhatviet.com> is confusingly similar to the Trademarks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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 Respondent did not respond to the Complaint. Consequently, it did not provide any evidence or allege any circumstance to establish that it has rights or legitimate interests in the disputed Domain Name <iqosnhatviet.com>.

The Respondent has not been licensed or authorized to use the PMI’s Trademarks or to register the disputed Domain Name <iqosnhatviet.com>.

The Respondent did not make a fair or noncommercial use of the Domain Name <iqosnhatviet.com>.

In the circumstances of this case, the Panel finds that the Complainant has established a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed Domain Name <iqosnhatviet.com>, which the Respondent has not rebutted. The condition of paragraph 4(a)(ii) of the Policy has therefore been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a Panel to be evidence of bad faith registration and use of a domain name. It provides that:

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be the present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purposes 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 the respondent’s your web site 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 the respondent’s website or location or of a product or service on the respondent’s web site or location.”

Given the widely well-known character of the Complainant’s PMI’s Trademarks, the Panel finds that the Respondent could not ignore or would have been aware of the Complainant’s rights in the PMI’s Trademarks when it registered the disputed Domain Name <iqosnhatviet.com>.

The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed Domain Name <iqosnhatviet.com>.

The Panel finds that the disputed Domain Name <iqosnhatviet.com> was registered in bad faith to disrupt the Complainant’s activities. The slogan “iQOS This Changes Everything” is also used on the Respondent’s Facebook page connected to its Internet site. This slogan is a registered trademark owned by PMI.

With reference to the use of the disputed Domain Name <iqosnhatviet.com>, the Panel finds that the active holding of the disputed Domain Name <iqosnhatviet.com>, incorporating the widely well-known IQOS trademark without any obvious actual or contemplated good faith use, constitutes use in bad faith.

The disputed Domain Name <iqosnhatviet.com> is used in bad faith capitalizing on the Complainant’s fame and reputation with the intent to cause confusion on the part of Internet users as it was connected to the Complainant or to one of its official distributors or authorized retailers.

Considering the above circumstances, the Panel considers that the Respondent’s active holding of the disputed Domain Name <iqosnhatviet.com> satisfies the requirements of paragraph 4(b)(iv) of the UDRP.

Accordingly, the Complainant has satisfied the third element of UDRP.

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 <iqosnhatviet.com> be transferred to the Complainant.

Emmanuelle Ragot
Sole Panelist
Date: July 30, 2018