WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Domain Admin, Domain Whois Protection Service / Tran Trung Nam
Case No. D2018-1524
1. The Parties
Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
Respondent is Domain Admin, Domain Whois Protection Service of Ho Chi Minh, Viet Nam / Tran Trung Nam of Ho Chi Minh, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <iqosvietnam.net> is registered with P.A. Viet Nam Company Limited (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 6, 2018. On July 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7, 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. On July 10, 2018, the Center notified the Parties in both English and Vietnamese that the language of the Registration Agreement for the disputed domain name was Vietnamese. The Center sent an email communication to Complainant on the same date providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 11, 2018 to reflect the underlying registrant information and to request for English to be the language of the proceeding, to which Respondent did not reply.
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 Respondent in English and Vietnamese of the Complaint, and the proceedings commenced on July 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2018. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 8, 2018.
The Center appointed Mark Partridge as the sole panelist in this matter on August 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.
4. Factual Background
Complainant is part of a group of companies affiliated with Phillip Morris International, Inc. ("PMI"), which is an international tobacco company. PMI sells its tobacco products in approximately 180 countries. One of the products it sells is branded IQOS. IQOS is available across the world in 38 markets. Complainant owns IQOS trademarks worldwide, including: International Registration IQOS (word) No. 1218246 registered on July 10, 2014; and International Registration (device) No. 1329691 registered on August 10, 2016. For both of these registrations, Complainant designated various countries, including Viet Nam.
Respondent registered the disputed domain name on February 23, 2018. The disputed domain name resolves to a website allegedly offering Complainant's IQOS branded products as well as competing products of other commercial origin. The website also features a number of Complainant's official marketing materials and indicates "IQOS Viet Nam" as the website provider.
5. Parties' Contentions
Complainant contends that it has satisfied the three necessary elements under the Policy. First, Complainant argues that the disputed domain name is identical or confusingly similar to trademark registrations owned by Complainant. Complainant alleges that it is the registered owner of the IQOS trademarks in many jurisdictions, including Vietnam. It also alleges that the disputed domain name reproduces the IQOS trademark in its entirety along with the geographic indication Vietnam and that the applicable Top Level Domain ("TLD") is disregarded.
Second, Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant argues that it has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, alleging that it has not licensed or otherwise permitted Respondent to use any of its trademark or register the domain name incorporating its IQOS trademark.
Further, Complainant maintains that Respondent cannot establish that it is making a bona fide offering of goods or services. Complainant offers several grounds in support, including: that Respondent is promoting Complainant's products and other competing devices; that the disputed domain name suggests that Respondent is an official IQOS dealer because, among other reasons, Respondent prominently uses Complainant's official marketing material; and, that there is no information clarifying Respondent's relationship to Complainant.
Third, Complainant contends that the disputed domain name was registered and is being used in bad faith. Complainant alleges that Respondent knew of Complainant's IQOS trademarks when registering the disputed domain name and started offering the products immediately after registering it. Moreover, Complainant argues that Respondent's use of the disputed domain name shows an intent to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the IQOS trademark as to the source, sponsorship, affiliation, or endorsement. Complainant also asserts that Respondent registration and use of the disputed domain name, as well as the prominent use of Complainant's marketing material, shows that Respondent is suggesting that the website belongs to Complainant or is an official affiliated dealer. Complainant alleges Respondent's use also gives the commercial impression that the website is the official online store for IQOS branded products in Vietnam
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
6.1 Preliminary Matter: Language of proceedings
Paragraph 11(a) of the Rules provides that "[u]nless 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 the present case, the Registration Agreement is in Vietnamese.
Complainant requests that English be the language of the proceeding as English is a common language in international business, the disputed domain name consists of Latin letters, and as Complainant is not able to communicate in Vietnamese. In addition, Complainant assumes that Respondent is capable of communicating in English.
Respondent did not object to Complainant's request, which the Center communicated to Respondent in Vietnamese. The Panel considers it would be inappropriate to conduct the proceeding in Vietnamese, which would necessarily involve extra costs and would delay the resolution of this proceeding.
Upon considering the above, the Panel determines that the language of the proceedings is English.
6.2. Substantive Matter
"The Policy is directed towards resolving disputes concerning allegations of abusive domain name registration." Kerakoll S.P.A. v. SC Aris Co Group SRL, WIPO Case No. DRO2017-0006; see Organization for Transformative Works v. Bradley Binkley, WIPO Case No. D2018-0132; Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. The Policy provides a process in which the complainant must provide evidence in support of its complaint. In turn, the respondent is given an opportunity to respond.
Here, Respondent is in default. Respondent's default, however, is not an automatic win for Complainant, nor is it necessarily an admission that Complainant's claims are true. See L'Oréal v. Sukumwaranon, Pornapa, WIPO Case No. D2017-2442. Instead, the Panel may choose to accept the reasonable contentions of Complainant as true. Allianz SE v. IP Legal, Allianz Bank Limited, WIPO Case No. D2017-0287(citing Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No. D2006-0292); seealso OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, WIPO Case No. D2015-1149 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Under paragraph 4(a) of the Policy, and notwithstanding Respondent's default, Complainant must prove the following three elements:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
To satisfy the first element, a complainant must establish that the domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights. This inquiry generally involves a "side-by-side" comparison of the disputed domain name and the relevant trademark to assess whether the mark is recognizable within the disputed domain name. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). For purposes of the first element, the generic Top-Level Domain ("gTLD") ".net" in the disputed domain name is disregarded. See WIPO Overview 3.0, section 1.11; see also Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; America Online, Inc. v. Johuathan Investments, Inc., and AOLLNEWS.COM, WIPO Case No. D2001-0918; OSRAM GmbH., WIPO Case No. D2015-1149. Additionally, mere geographical terms do not dispel the confusing similarity of a disputed domain name and a complainant's trademark, the nature of such additional term may however bear on assessment of the second and third elements. See WIPO Overview 3.0, section 1.8; see also Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768. Instead, the inclusion of geographical terms may suggest the existence of an official, affiliated, or authorized website (see the analysis under the second and third element in this regard). Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale, WIPO Case No. D2005-0755 (noting that the geographical term "compounds the confusion"); Koninklijke Philips Electronics NV v. Gopan P.K., WIPO Case No. D2001-0171 (recognizing that the geographical term "adds nothing" but would be regarded as the complainant's website for the specific, geographic location).
Here, Complainant has shown that it has sufficient rights in the IQOS trademarks in many jurisdictions, including Viet Nam. The disputed domain name, <iqosvietnam.net>, incorporates Complainant's trademark in its entirety as its initial component. The disputed domain name's two remaining components, "vietnam" and ".net" fail to avoid a finding of confusing similarity of the disputed domain name and Complainant's trademarks. The gTLD designation ".net" is generally disregarded for purposes of this analysis. In sum, the Complainant's trademark is clearly recognizable within the disputed domain name.
Accordingly, the Panel concludes that the disputed domain name is confusingly similar to Complainant's IQOS marks.
B. Rights or Legitimate Interests
To satisfy the second element, a complainant must make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once the complainant satisfies its initial burden, the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the disputed domain name. AB Electrolux v. Mostafa Faheem, WIPO Case No. D2017-2233; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if found by the Panel, shall demonstrate that respondent has rights or legitimate interests in a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy.
Here, Complainant alleges that it has not licensed or otherwise permitted Respondent to use any of its trademarks or to register the disputed domain name incorporating its trademark. Accordingly, the Panel concludes that Complainant made out a prima facie case that Respondent lacks rights or legitimate interests in <iqosvietnam.net>.
As a result, the burden shifts to Respondent. As noted above, Respondent failed to respond to Complainant's contentions. That, however, does not mean that Complainant automatically prevails on this element. Although the Panel concludes that there is no evidence in the current record indicating that Respondent could demonstrate any of the circumstances evidencing rights or legitimate interests, pursuant to paragraph 4(c) of the Policy, the Panel notes, like Complainant has in its Complaint, that paragraph 4(c)(i) merits attention.
As mentioned above, Complainant alleges that Respondent sells IQOS branded products on its website. Under paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating that it is using it "with a bona fide offering of goods or services[.]" In Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the Panel outlined four requirements that a respondent must satisfy in order to make such a showing. One Oki Data factor provides that "the site itself must accurately disclose the [respondent's] relationship with the trademark owner[.]" See also L'Oréal v. Thommagorn Hemtawen, WIPO Case No. D2017-2336; AB Electrolux v. Mostafa Faheem, WIPO Case No. D2017-2233; LEGO Juris A/S v. John Davis, WIPO Case No. D2018-0313 (noting the "Respondent cannot benefit from Oki Data since the Respondent has not accurately disclosed the lack of any relationship between it and the Complainant").
Citing to Oki Data, Complainant argues that this requirement cannot be satisfied because Respondent has failed to accurately disclose the relationship (or lack thereof) with Complainant. The Panel agrees. Upon reviewing the current record, there is no evidence of such disclosure on Respondent's website. Because Respondent is precluded from satisfying the Oki Data test for this reason, Respondent's use of the disputed domain name cannot be considered bona fide. In addition, as noted in section 2.5.1 of the WIPO Overview 3.0, the nature of a domain name that consists of a trademark and a geographical term is seen as tending to suggest affiliation with the trademark owner.
For these reasons, the Panel concludes that Complainant has satisfied the second element, paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Lastly, Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy offers a non-exhaustive list of circumstances that indicate bad-faith use and registration of a domain name. Particularly, paragraph 4(b)(iv) provides that bad faith may be evidenced by circumstances indicating that respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by seeking to create a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent's website.
The Panel finds that the disputed domain name was registered and used in bad faith, particularly within the terms of paragraph 4(b)(iv) of the Policy. Here, Respondent registered <iqosvietnam.net> years after Complainant obtained registrations for IQOS, a trademark in which Complainant has rights in Viet Nam. The Panel finds that Respondent knew or was aware of Complainant's rights in the IQOS trademarks. This is further evidenced by the fact that Respondent incorporates the entirety of Complainant's trademarks in the disputed domain name, that Respondent prominently uses Complainant's official marketing material on the website, and that Respondent fails to disclose the relationship (or lack thereof) with Complainant. Along with the geographic indication of Viet Nam on the website and in the disputed domain name, Respondent's website clearly evidences Respondent's intent to give the commercial impression that it is the official online store for IQOS branded products in Viet Nam. Indeed, the geographic term "vietnam" is a geographical term, serving only to enhance the likelihood of confusion. The Panel concludes that Respondent registered and is using the disputed domain name in attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's mark as to source, sponsorship, affiliation, or endorsement.
Accordingly, the Panel concludes that Complainant has sufficiently shown that Respondent has registered and used the disputed domain name in bad faith, thereby satisfying the third element.
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 <iqosvietnam.net> be transferred to the Complainant.
Date: September 14, 2018