WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. lee chan woo
Case No. D2018-2595
1. The Parties
The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is lee chan woo of Pyeongtaek-si, Gyeonggi-do, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <iqosnara.com> is registered with Gabia, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2018. On November 13, 2018, the Center transmitted to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 2018, the Registrar transmitted to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On November 22, 2018, the Center notified the Parties, in both English and Korean, that the Complaint was submitted in English, and that according to the Registrar, the language of the registration agreement is Korean. In the same notification, the Center requested the Complainant to provide, by November 25, 2018:
“1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or
2) … the Complaint translated into Korean; or
3) … a request for English to be the language of the administrative proceedings.”
To the Respondent, the Center stated that “if the Respondent is intending to participate in these proceedings, and/or has any comments on the Complainant’s submission replying to this notification, the Respondent is requested to submit these to the Center by November 27, 2018.” The Center also advised the Respondent:
“Specifically in the case of the Complainant submitting (or indicating that it will submit) a request for the language of proceedings to be English, and the Respondent objects to such request, the Respondent is invited to indicate that objection for the record, and to submit any arguments/supporting materials … as to why the proceedings should not be conducted in English.
Please note that if we do not hear from you by [November 27, 2018], we will proceed on the basis that you have no objection to the Complainant’s request that English be the language of proceedings.”
On November 24, 2018, the Complainant requested that English be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.
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, both in Korean and English, formally notified the Respondent of the Complaint, and the proceeding commenced on November 28, 2018. Regarding the language of the proceeding, the Center stated that it would: “1) accept the Complaint as filed in English; 2) accept a Response in either English or Korean; 3) appoint a Panel familiar with both languages mentioned above, if available.” In accordance with the Rules, paragraph 5, the due date for the Response was December 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2018.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on January 7, 2019. 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 identifies itself as “a company which is part of the group of companies affiliated to Philip Morris International Inc. [PMI][,] ... the leading international tobacco company.” One of PMI’s products is sold under the IQOS brand. “IQOS is a precisely controlled heating device into which specially designed tobacco products … are inserted and heated to generate a flavorful nicotine-containing aerosol.” The Complainant owns registration of IQOS marks, including International Trademark registration Nos. 1218246 (registered on July 10, 2014) and 1329691 (registered on August 10, 2016).
The Respondent registered the disputed domain name <iqosnara.com> on April 20, 2018.
5. Parties’ Contentions
The Complainant contends principally that: (i) the disputed domain name is identical or confusingly similar to a 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. In addition, the Complaint states:
“IQOS Products have achieved considerable international success and reputation, and already, almost 6 million legal-aged smokers have switched to using the IQOS Products worldwide.”
“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 Complainant has not licensed or otherwise permitted the Respondent to use any of its Trademarks or to register the Domain Name incorporating its IQOS trademark.”
“[T]he term IQOS is a purely imaginative term and has no inherent meaning, and it is highly unlikely that the Respondent has used it unintentionally.”
“The Disputed Domain Name iqosnara.com is linked to a website … allegedly offering repair and maintenance services for the Complainant’s IQOS branded products but also competing products … offered by the Complainant’s Korean competitor ….”
The Respondent did not reply to the Complainant’s contentions. Paragraphs 5(f) and 14(a) of the Rules allow the Panel to decide the dispute based on the Complaint. Under paragraph 14(b), the Panel may draw appropriate inferences from the Respondent’s default.
6. Discussion and Findings
Initially, the Panel must address the language of the proceeding.
Paragraph 11(a) of the Rules provides that the language of the registration agreement is the language of the administrative proceeding, unless otherwise agreed by the parties or specified in the registration agreement. The rule also states that the determination of the language is “subject to the authority of the Panel …, having regard to the circumstances of the administrative proceeding.” Here, the language of the registration agreement is Korean. Nevertheless, the Complainant requests that English be the language of the proceeding.
After receiving the Complaint submitted in English, the Center notified the Parties, in both Korean and English, of the Center’s procedural rules regarding the language of the proceeding. The Center informed the Respondent that it may object timely to a proceeding conducted in English. The Respondent did not respond to the Center’s notification, and has defaulted. Under these circumstances, the Panel decides that English is the language of the proceeding.
On the merits, in order to prevail, the Complainant must satisfy each of the three elements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Panel determines that the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights. The Complainant has provided ample evidence that it has rights in the IQOS mark. The disputed domain name <iqosnara.com> begins with the Complainant’s mark and is followed by “nara”, the English transliteration of the Korean “나라” (meaning “country”), and the generic Top-Level Domain (“gTLD”), “.com”. The Complainant’s mark is clearly recognizable in the disputed domain name. The addition of a term like “nara” does not defeat confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The gTLD “.com” is a standard registration requirement, and is not considered in determining confusing similarity. See WIPO Overview 3.0, section 1.11.
The first element is established.
B. Rights or Legitimate Interests
The Complainant states that it has not authorized the Respondent to use the Complainant’s IQOS mark, and has met its initial burden of making a prima facie showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The burden shifts to the Respondent to demonstrate any such rights or legitimate interests. Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that may demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. The Panel is unable to ascertain any evidence that would demonstrate the Respondent’s rights or legitimate interests in the disputed domain name, as described in the Policy, or otherwise.
The second element is also satisfied.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must show that the disputed domain name “has been registered and is being used in bad faith.” Paragraph 4(b) provides a non-exhaustive list of circumstances that are “evidence of the registration and use of a domain name in bad faith”.
At the time of the Complaint, the disputed domain name resolved to a website that prominently displayed the IQOS mark in stylized font and images of various tobacco-related products, with descriptive Korean text. As the Complainant also notes, the Respondent’s website includes, just beneath the IQOS designation, the Complainant’s registered slogan, “THIS CHANGES EVERYTHING”.
The Panel determines that the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website … by creating a likelihood of confusion with the [C]omplainant’s mark,” as set forth in paragraph 4(b)(iv) of the Policy.
The third element is demonstrated.
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 <iqosnara.com> be transferred to the Complainant.
Date: January 14, 2019