WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Domain Admin, Domain Whois Protection Service / Thai Doan Linh
Case No. D2018-1482
1. The Parties
The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Domain Admin, Domain Whois Protection Service of Ho Chi Minh, Viet Nam / Thai Doan Linh of Ha Noi, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <iqosthanhlam.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 July 3, 2018. On July 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 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 July 11, 2018 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 amendment to the Complaint on July 12, 2018.
On July 11, 2018, the Center transmitted 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 July 12, 2018. The Respondent did not comment on the language of the proceeding by the specified 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 July 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 9, 2018.
The Center appointed Isabelle Leroux as the sole panelist in this matter on August 21, 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.
4. Factual Background
The complainant is a Switzerland-based subsidiary of Philip Morris International, Inc., a leading international tobacco company, manufacturing and distributing products in approximately 180 countries, including notably reduced risk tobacco products.
The products are distributed almost exclusively through the official stores and websites of the Complainant and selected authorized distributors.
The Complainant is the owner of numerous well-known trademark registrations, in particular:
- International Registration IQOS, No. 1218246 registered on July 10, 2014;
- International Registration ("IQOS, No. 1329691 registered on August 10, 2016;
- International Registration HEETS, No. 1326410 registered on July 19, 2016;
- International Registration ("HEETS, No. 1328679 registered on July 20, 2016.
The above trademarks designate Viet Nam.
The Respondent is based in Viet Nam and registered the disputed domain name <iqosthanhlam.com> on January 12, 2018.
The disputed domain name redirects to an online shop at "www.thanhlamheatnotburn.vn" offering the Complainant's IQOS and HEETS branded products as well as tobacco products of third parties. The website is provided in Vietnamese.
5. Parties' Contentions
(i) The Complainant submits that the disputed domain name <iqosthanhlam.com> is confusingly similar to the trademark registrations of the Complainant, provided that the disputed domain name reproduces the IQOS trademarks in which the Complainant has rights.
The Complainant contends further that the addition of the supplement "thanhlam" creates a likelihood of confusion that the disputed domain name is associated with the Complainant, and that the fact that the Respondent is targeting a trademark through the disputed domain name will also contribute to a confusing similarity.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant submits that the Respondent was not granted any right or license to use any of its trademarks, especially its IQOS trademark.
In addition, the Complainant contends that the Respondent is not making a legitimate noncommercial or fair use of the domain name. The Complainant argues that the Respondent is offering the Complainant's products and using the Complainant's trademarks and marketing material without its authorization, which suggests a misleading relationship between the Respondent and the Complainant.
Moreover, the Complainant argues that the fact that the Respondent is also offering competing products of other commercial origins prevents the finding of a bona fide offering of goods.
(iii) The Complainant contends that the disputed domain name was registered and is being used in bad faith, and that the Respondent knew or should have known the existence of the Complainant's rights.
The Complainant further states that the disputed domain name is used to attract, for commercial gain, Internet users to the Respondent's website.
The Complainant also argues that the use of the Complainant's trademarks for promoting competing products is a clear-cut trademark infringement and constitutes clear evidence of the Respondent's bad faith.
Moreover, the fact that the use of a privacy proxy service by the Respondent to hide its true identity is another factor indicating bad faith.
(iv) The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The Complaint was filed in English, while the Registrar confirmed that the language of the Registration Agreement is Vietnamese.
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.
In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to:
(i) the Center sent case-related communications to the Parties in English and Vietnamese;
(ii) the Respondent didn't submit an objection to that English be the language of the proceeding or any other reply in the present proceeding; and
(iii) requiring the Complainant to translate the Complaint and all supporting documents into Vietnamese would cause an unnecessary burden to the Complainant and unnecessarily delay the proceeding.
Hence, 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 that the language of the proceeding be English and the decision be rendered in English.
6.2 Procedural Aspects
The Panel notes that the Respondent is formally in default pursuant to paragraphs 5(f) and 14(a) of the Rules because no response was received from the Respondent within the time limit set by the Policy and the Rules.
However, the Panel finds that this does not mean that the remedies requested should automatically be awarded. The Panel will have to establish whether the Complainant's prima facie case meets the requirements of paragraph 4 of the Policy. See LEGO Juris A/S v. NyunHwa Jung, WIPO Case No. D2012-1233; Charabot SA v. Name Redacted, WIPO Case No. D2018-0339.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following elements in order to obtain relief:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
These elements will be examined in turn below.
6.3 Requirements of Paragraph 4(a) of the policy
A. Identical or Confusingly Similar
The Complainant has provided evidence that it has rights in the IQOS trademarks, which have been registered in Viet Nam and elsewhere internationally, well before the Respondent registered the disputed domain name. The Complainant has also submitted evidence that the IQOS mark is known globally in connection with its products.
This satisfies the Panel that the Complainant has registered trademark rights in the IQOS trademarks for the purposes of the Policy.
In comparing the disputed domain name <iqosthanhlam.com> with the trademarks of the Complainant, the Panel finds that the trademarks are replicated entirely in the disputed domain name, the latter simply containing the addition of a supplementary term "thanhlam" and the generic Top-Level Domain ("gTLD") ".com".
It is well established that the gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.11).
The relevant element at issue is the addition of the term "thanhlam".
The Complainant contends that by associating the Complainant's trademark with the term "thanhlam", the disputed domain name will likely be perceived by the users as an official IQOS store owned by a person called "Thanh Lam".
Although it is unclear why the Respondent included the term "thanhlam" in the disputed domain name, UDRP panels have consistently held that the addition of a given name to a disputed domain name which incorporates a trademark in its entirety typically does not prevent the finding of confusing similarity. See Inter-Continental Hotels Corporation v. nibah fondikum, WIPO Case No. D2016-1786; FIL Limited v. fidelity-investments-ivanov.com, Domain Discreet Privacy Service / Igor Ivanov, WIPO Case No. D2014-0131; Six Continents Hotels, Inc. v. Domain Admin - Privacy Protection Service Inc d/b/a PrivacyProtect.org / Raajganesh, RKPlanet, WIPO Case No. D2014-0462.
Moreover, the previous UDRP panels have found that the disputed domain name is confusingly similar to the Complainant's trademarks, where the disputed domain name is likely to be read easily as two words in which the Complainant's trademark is prominently visible (Alfred Dunhill, Inc. v. Registration Private, Domains By Proxy, LLC / Abdullah Altubayieb, WIPO Case No. D2017-0209), or where the word which precedes the trademark has no known meaning in the English language and is likely to be perceived as the name of a person (See Portakabin Limited v. James Richen, WIPO Case No. D2017-0320).
For the above reasons, the Panel finds that the additional term "thanhlam" does not prevent the disputed domain name from being confusingly similar to the Complainant's trademarks.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. The Complainant has thus satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant submits that the Respondent has not been granted any right or license by the Complainant to use any of its trademarks, notably the IQOS trademarks, and that there is no business relationship existing between the Complainant and the Respondent.
The Complainant provided evidence that the Respondent is using the disputed domain name to promote products of the Complainant without its authorization, as well as other products of third parties in competition with the Complainant, that the site does not contain any indication regarding the Respondent's relation with the Complainant, and that the Respondent is using without authorization the Complainant's trademarks and marketing material on the site with a false indication of copyright notice.
According to the above elements and the case file, the Panel finds that the Complainant has established a prima facie case that the disputed domain name is not used in connection with a bona fide offering of goods or services and no legitimate noncommercial or fair use is made of the disputed domain name.
By not submitting a Response, the Respondent offered no information on what rights or legitimate interests it may have in the disputed domain name. Thus the Panel finds no indication that any of the circumstances described in paragraph 4(c)(i) to (iii) of the Policy could apply to the present matter.
Therefore, given the circumstances described above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and thus the requirement under paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
It has been proven to the Panel's satisfaction that the Complainant's trademarks are well-known, registered and present in many countries, including Viet Nam where the Respondent is allegedly located, and that the disputed domain name is being used to promote the trademarked products of the Complainant, notably the Iqos branded products.
Therefore, the Panel accepts that the Respondent could not reasonably ignore the Complainant's trademark and the Complainant's activities.
Previous UDRP panels have regularly ruled that bad faith was found where a domain name is obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith. See LEGO Juris A/S v. store24hour, WIPO Case No. D2013-0091; Carrefour v. Jean-Claude Bot / Albert Pierre, WIPO Case No. D2017-0969.
Moreover, the above elements indicate that the registration of the disputed domain name prevents the Complainant from reflecting its trademark in a corresponding domain name. It is therefore demonstrated that the disputed domain name has been registered in bad faith.
The Complainant provided evidence that the Respondent is using the disputed domain name to offer for sale the trademarked products of the Complainant without authorization.
Previous UDRP panels have regularly ruled that by creating this likelihood of confusion between the Complainant's trademarks and the disputed domain name, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the disputed domain name, the Respondent has demonstrated an intent to capitalize on the fame and goodwill of the Complainant's trademarks in order to increase traffic to the Respondent's website for its own pecuniary gain. See Robert Bosch GmbH v. Above.com Domain Privacy, Above.com Domain Privacy / David Woo, WIPO Case No. D2018-1549; LEGO Juris A/S v. Daniel Pinegar, WIPO Case No. D2014-2142.
By not submitting a Response, the Respondent offered no information that might have led the Panel to question the Complainant's arguments that the Respondent is using the disputed domain name in bad faith.
Therefore, this Panel finds that the intention of the Respondent to take undue advantage of the Complainant's trademarks has been demonstrated.
For the above reasons, the Panel finds the Respondent registered and is using the disputed domain name in bad faith, and thus the condition of paragraph 4(a)(iii) of the Policy has been satisfied.
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 <iqosthanhlam.com> be transferred to the Complainant.
Date: September 4, 2018