WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Ngo Van Phuc
Case No. D2020-2964
1. The Parties
The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Ngo Van Phuc, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <iqos777.com> (the “Domain Name”) 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 November 9, 2020. On November 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 10, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 10, 2020, 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 amended Complaint on November 12, 2020.
On November 10, 2020, the Center transmitted an email in English and Vietnamese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on November 12, 2020. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amended 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 of the Complaint, and the proceedings commenced on November 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 15, 2020. On December 16, 2020, the Respondent sent an informal email communication offering to settle the dispute. The proceeding was suspended on December 21, 2020 as per request from the Complainant. The proceeding was reinstituted on January 22, 2021, as per request from the Complainant.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on February 4, 2021. 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 part of Philip Morris International Inc. (“PMI”). PMI is an international tobacco company, with products sold in approximately 180 countries. PMI has developed a number of products, such as IQOS. IQOS is a controlled heating device into which specially designed tobacco products under the brand names HEETS or HEATSTICKS are inserted and heated to generate a flavorful nicotine-containing aerosol. The IQOS system was first launched by PMI in Nagoya, Japan in 2014 and has obtained 18.3% share of the market in Japan. Today the IQOS system is available in key cities in around 57 markets across the world, and it has approximately 11 million consumers worldwide. It is almost exclusively distributed through PMI’s official IQOS stores and websites and selected authorized distributors and retailers.
The Complainant has trademark registrations in IQOS relating to its products, such as International Registration No. 1329691 registered on August 10, 2016, and International Registration No. 1218246 registered on July 10, 2014. The registrations designate a multitude of countries, including Viet Nam where the Respondent is located.
According to the Registrar, the Domain Name was registered on October 21, 2020. At the time of filing the Complaint, and at the time of drafting the Decision, the Domain Name resolved to a website in Vietnamese allegedly selling the Complainant’s IQOS System. The website uses the Complainant’s registered IQOS trademark and logo.
5. Parties’ Contentions
The Complainant requests that the language of the proceedings be English because the Domain Name is in Latin script and not in Vietnamese script, the website under the Domain Name includes a number of English words and/or phrases, and the privacy registration service used by the Respondent conducts its business also in English. This suggests that the Respondent is capable of communicating in English. Moreover, the Complainant has no knowledge of Vietnamese, and English is a common language in global business.
The Complainant has registered trademark rights in IQOS. The Complainant submits that the Domain Name is confusingly similar to the Complainant’s trademark. The Domain Name adopts the Complainant’s trademarks. The addition of “777” is insufficient to avoid a finding of confusing similarity under the first element of the UDRP.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant asserts that the Respondent is unable to demonstrate rights or legitimate interests in the Domain Name. The Respondent has not been allowed by the Complainant to make any use of its trademark. The Domain Name redirects to a website that does not meet the requirements for a bona fide offering of goods. The website presents the Complainant’s registered trademark, logo, and the Complainant’s official product images, without authorization. The website includes no proper information regarding the identity of the provider of the website. Consumers are misled to believe that the Respondent’s webpage is by and endorsed distributor of the Complainant’s products.
The Complainant argues that the Respondent had knowledge of the Complainant and its products at the time of registration of the Domain Name. The Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s registered IQOS trademark as to the source, sponsorship, affiliation, or endorsement of its website. By reproducing the Complainant’s trademark in the Domain Name and the title of the website, the Respondent’s website suggests the Complainant or an affiliated dealer as the source of the website. This is supported by the Respondent’s use of the Complainant’s official product images. The Complainant further submits that the Respondent’s recent involvement in the bad faith registration and use of the domain name <iqosauthentic.com> shows a pattern of bad faith conduct (see Philip Morris Products S.A. v. Domain Admin, Domain Whois Protection Service / Ngo Van Phuc, WIPO Case No. D2020-1892). Finally, the use of a privacy protection service to hide the Respondent’s identity, also indicates bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement, unless otherwise agreed by the parties. Importantly, paragraph 11(a) also states that the determination of the language of the proceeding is “[…] subject to the authority of the Panel […], having regard to the circumstances of the administrative proceeding”.
The language of the Registration Agreement is Vietnamese. The Complainant submitted its Complaint in English, and requested English be the language of the proceeding.
The Panel notes that the Domain Name is in Latin script and the Respondent on its website uses English words and/or phrases, and that the Respondent has sent an informal communication in English by email on December 16, 2020, which suggest that the Respondent is capable of communicating in English. Moreover, the Center has sent the notifications to the Respondent in both English and Vietnamese, providing the Respondent a fair chance to object. The Panel determines that the language of this proceeding to be English, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.
Turning to the merits of the case, in order to prevail, the Complainant must prove the three elements in paragraph 4(a) of the Policy.
B. Identical or Confusingly Similar
The Complainant has established rights in the trademark IQOS. The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name incorporates the Complainant’s trademark in its entirety with the addition of “777”. The addition does not prevent a finding of confusing similarity. For the purpose of assessing confusing similarity, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”, see WIPO Overview 3.0, section 1.11.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register a domain name containing the Complainant’s trademark or otherwise make use of the trademark. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered rights. The way the Respondent has used the Domain Name to present itself as a reseller of the Complainant’s products, is not bona fide. The website has used the Complainant’s official product images and logo, and it gives the false impression of a commercial relationship between the website and the Complainant. In addition, the Panel considers that the nature of the Domain Name carries a risk of implied affiliation or association.
The Panel finds the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Taking into account the Respondent’s use of the Domain Name, the Panel concludes that the Respondent knew of the Complainant and its business when the Respondent registered the Domain Name.
The Respondent has attempted to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. By reproducing the Complainant’s trademark in the Domain Name and on the web page, the Respondent’s website suggests that the Complainant or an affiliated dealer is the source. This is supported by the Respondent’s use of the Complainant’s logo and official product images. The fact that the Respondent has not replied to the Complainant’s contentions, further points to bad faith.
The Panel finds that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <iqos777.com> be transferred to the Complainant.
Date: February 8, 2021