WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Nguyen Minh Tuan, HO KINH DOANH NGUYEN MINH TUAN TUAN BLACKBERRY

Case No. D2021-1539

1. The Parties

The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.

The Respondent is Nguyen Minh Tuan, HO KINH DOANH NGUYEN MINH TUAN TUAN BLACKBERRY, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <nhatrangiqos.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2021. On May 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 19, 2021, 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 May 24, 2021 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 in English on May 26, 2021.

On May 24, 2021, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On May 26, 2021, the Complainant submitted a request that English be the language of the proceeding. 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 in English and Japanese of the Complaint, and the proceedings commenced on May 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2021. The Respondent did not submit any response. The Center received the Respondent’s communications by email on May 27, 2021 and July 11, 2021. On July 11, 2021, the Center informed the Parties that it would proceed to panel appointment.

The Center appointed Keiji Kondo as the sole panelist in this matter on July 20, 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 a company which is part of the group of companies affiliated to Philip Morris International Inc. (jointly referred to as “PMI”). PMI is a leading international tobacco company, with products sold in approximately 180 countries.

PMI is known for innovating across its brand portfolio. In the course of transforming its business from combustible cigarettes to Reduced Risk Products (or “RRPs”, which PMI defines as products that present, are likely to present, 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 RRP products. One of these RRPs developed and sold by PMI is called IQOS. IQOS is a precisely controlled heating device into which specially designed tobacco products under the brand names “HEETS” or “HeatSticks” are inserted and heated to generate a flavourful nicotine-containing aerosol (collectively referred to as the “IQOS System”).

For its new innovative smoke-free products the Complainant owns a large portfolio of trademarks. Among them are the following trademark registrations (referred as “Trademarks”):

- International Registration for IQOS (word) No. 1218246 registered on July 10, 2014 designating a number of jurisdictions including Viet Nam;
- International Registration for IQOS (stylized logo) No. 1461017 registered on January 18, 2019 designating a number of jurisdictions including Viet Nam; and
- International Registration for IQOS (stylized logo) No. 1329691 registered on August 10, 2016 designating a number of jurisdictions including Viet Nam.

The Respondent, Nguyen Minh Tuan, HO KINH DOANH NGUYEN MINH TUAN TUAN BLACKBERRY, apparently being a resident of Viet Nam, is not known or in any way related to the Complainant or any PMI affiliate and is not authorized to use the IQOS trademarks. According to the information provided by the Registrar, the Respondent’s address is in Viet Nam. The Respondent’s name appears on the decision of Philip Morris Products S.A. v. Nguyen Minh Tuan, HO KINH DOANH NGUYEN MINH TUAN TUAN BLACKBERRY, WIPO Case No. D2021-0383, which was issued on April 20, 2021. The disputed domain name of Philip Morris Products S.A. v. Nguyen Minh Tuan, HO KINH DOANH NGUYEN MINH TUAN TUAN BLACKBERRY, WIPO Case No. D2021-0383 is <iqosnhatrang.com>.

The disputed domain name <nhatrangiqos.com>is registered on April 23, 2021, three days after the decision of Philip Morris Products S.A. v. Nguyen Minh Tuan, HO KINH DOANH NGUYEN MINH TUAN TUAN BLACKBERRY, WIPO Case No. D2021-0383 was issued.

The disputed doman name is linked to an online shop at “https://nhatrangiqos.com/” (referred to as the “Website”) allegedly selling and offering the Complainant’s IQOS System. The Website is provided in Vietnamese, English, Russian, Chinese (Simplified) and Korean. The Website is indicating all prices in Vietnamese dong currency, as well as presenting the address which is located in Nha Trang, a coastal resort city in southern Viet Nam.

The Complainant’s IQOS System is not currently sold in or to Viet Nam by the Complainant or any company among its affiliate companies.

The Website is prominently using the Complainant’s registered IQOS trademark at the top of the Website, a location where users / relevant consumers usually expect to find the name of the online shop and/or the name of the provider of the Website. The Website is further using a number of the Complainant’s official product images without the Complainant’s authorization.

5. Parties’ Contentions

A. Complainant

It is well accepted that the test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name 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”)). The similarity test of the first UDRP element serves as a standing requirement, building the connection between the disputed domain name and the trademark rights on which a dispute is based. A domain name is confusingly similar to a trademark, when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name and therefore will likely be associated with the respective trademark (see Philip Morris USA Inc. v. Steven Scully, J&S Auto Repair, WIPO Case No. D2015-1001; Hertz System, Inc. v. Kwan-ming Lee, WIPO Case No. D2009-1165). Thus, it cannot be questioned that the disputed domain name <nhatrangiqos.com> is confusingly similar to the IQOS trademark registrations of the Complainant.

The disputed domain name identically adopts the Complainant’s IQOS trademarks. It is well established that the applicable Top-Level Domain (“TLD”) in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, para. 1.11 and the cases referenced therein). It is further established that the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP (see Compagnie Générale des Etablissements Michelin v. PrivacyDotLink Customer 1197652 / Alex Hvorost, WIPO Case No. D2016-1923; AB Electrolux v. ID Shield Service, WIPO Case No. D2015-2027). The disputed domain name reproduces the IQOS trademark in its entirety, in addition to the nondistinctive geographical indication “Nha Trang” (being a coastal resort city in southern Viet Nam).

Any Internet user when visiting a website provided under the disputed domain name <nhatrangiqos.com>will reasonably expect to find a website commercially linked to the owner of the IQOS trademarks. This unlawful association is exacerbated by the use of the Complainant’s official product images without the Complainant’s authorization.

Therefore, the first element of the UDRP is met.

The Complainant has made a prima facie case that the Respondent lacks any right or legitimate interest in the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its IQOS trademark (or a domain name which will be associated with this trademark).

The Respondent is not making any legitimate noncommercial or fair use of the disputed domain name. On the contrary, the Respondent’s behaviour shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademarks owned by the Complainant. Firstly, the Respondent is not an authorized distributor or reseller of the IQOS System. Secondly, the Website provided under the disputed domain name does not meet the requirements set out by numerous panel decisions for a bona fide offering of goods or services.

A reseller or distributor can be making a bona fide offering of goods or services and thus have a legitimate interest in the domain name at issue only if certain requirements are met. The leading case on this point is Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The Panel in Oki Data concluded that the use of a manufacturer’s trademark as a domain name by a reseller could be deemed a “bona fide offering of goods or services” within the meaning of the Policy only if the following conditions are satisfied:

1. the Respondent must use the site to sell only the trademarked goods;
2. the site itself must accurately disclose the Respondent’s relationship with the trademark owner; and
3. the Respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

It is a common principle in all cases regarding the Oki Data scenario that the use of a domain name cannot be “fair” if it suggests an affiliation with the trademark owner (see AB Electrolux v. Handi Sofian, Service Electrolux Lampung, WIPO Case No. D2016-2416and the decisions provided therein).

In the present case, the disputed domain name in itself suggests at least an affiliation with the Complainant and its IQOS trademark, as the disputed domain name wholly reproduces the Complainant’s registered IQOS trademark together with the non-distinctive geographical indication “Nha Trang” (being a coastal resort city in southern Viet Nam) (see section A above). In addition, the owner / administrator of the Website, prominently and without authorization presents the Complainant’s registered IQOS trademark appearing at the top left of the Website, i.e., where relevant consumers will usually expect to find the name of the online shop and/or the name of the website provider. The Website further uses the Complainant’s official product images without authorization, while at the same time falsely claiming copyright in this material. This illegitimate and false claim of rights in the Complainant’s official copyright protected material further supports the false impression, that the Website is endorsed by the Complainant, which it is not. The Website includes no information regarding the identity of the provider of the Website, which is only identified as “IQOS Nha Trang” on the Website, being a name which similarly includes the Complainant’s registered IQOS trademark (without authorization) and further serves to perpetuate the false impression of an official commercial relationship between the Website and the Complainant.

As the Complainant’s IQOS System is primarily distributed through official / endorsed stores (as detailed above), in this case Internet users / relevant consumers are clearly misled regarding the relationship between the Website and the Complainant, and will falsely believe the Website under the disputed domain name to be an official / endorsed distributor. The illegitimacy of the Respondent’s use of the disputed domain name is further shown by the fact that the Complainant does not currently offer for sale its IQOS System in the territory of Viet Nam, and the online shop provided under the disputed domain name creates the false impression that the Complainant has officially introduced the IQOS System into the Vietnamese market. Such use of the disputed domain name cannot be considered a bona fide offering of goods or services and does not establish a legitimate interest on behalf of the Respondent.

Therefore, the second element of the UDRP is met.

It is evident from the Respondent’s use of the disputed domain name that the Respondent knew of the Complainant’s IQOS trademark when registering the disputed domain name. The Respondent started offering the Complainant’s IQOS System immediately after registering the disputed domain name. Furthermore, the term IQOS is purely an imaginative term and unique to the Complainant. The term IQOS is not commonly used to refer to tobacco products or electronic devices. It is therefore beyond the realm of reasonable coincidence that the Respondent chose the disputed domain name, without the intention of invoking a misleading association with the Complainant.

It is also evident from the Respondent’s use of the disputed domain name that the Respondent registered and used the disputed 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 or location or of a product or service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. In this regard the Complainant refers to the above explanations.

By reproducing the Complainant’s registered trademark in the disputed domain name and the title of the Website, the Respondent’s Website clearly suggests the Complainant or an affiliated dealer of the Complainant as the source of the Website, which it is not. This suggestion is further supported by the Respondent’s use of the Complainant’s official product images, accompanied by a copyright notice claiming the copyright for the Website and its contents.

Furthermore, the Complainant has reason to believe that the Respondent or the person behind the Respondent, is the same person, or is connected to the same person, who was the respondent to a previous UDRP case, Philip Morris Products S.A. v. Nguyen Minh Tuan, HO KINH DOANH NGUYEN MINH TUAN TUAN BLACKBERRY, WIPO Case No. D2021-0383, filed by the Complainant. The disputed domain name of the previous case was <iqosnhatrang.com>, and the decision of April 20, 2021 ordered the transfer of the domain name to the Complainant.

The Complainant submits that the Respondent’s purported recent involvement in the bad faith registration and use of the domain name <iqosnhatrang.com> shows a pattern of bad faith conduct in connection with domain names incorporating the Complainant’s trademarks.

Finally, the fact that the Respondent is using a privacy protection service to hide its true identity may in itself constitute a factor indicating bad faith (see WIPO Overview 3.0, section 3.6 and the cases referenced therein).

Therefore, the third element of the UDRP is met.

B. Respondent

The Respondent did not reply substantively to the Complainant’s contentions. In its emails to the Center on May 27, 2021 and July 11, 2021, the Respondent stated “Sorry for this unexpected situation! We mistakenly couldn’t use the domain <ioqsnhatrang.com>, so we used another domain instead. Firstly, we removed the sentence “Copyright 2021 © IQOS Nha Trang” because of a misunderstanding. The purpose of this sentence shows that the website copyright belongs to IQOS Nha Trang. Please let us know how to handle this and get permission to distribute IQOS products.”

6. Discussion and Findings

6.1. Language of the Proceeding

The Registrar has confirmed that the language of the registration agreement is Japanese, but the Complaint has been submitted in English.

On May 24, 2021, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On May 26, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

Considering the following circumstances, the Panel, exercising its authority to determine the language of the proceeding under paragraph 11(a) of the Rules, has decided English as the language of the proceeding:

- the Complaint was filed in English;
- the Complainant is a Swiss entity, and represented by a South African firm;
- the Respondent’s address is in Viet Nam, but the Respondent’s website displays commercial messages in English, for example, “INVEST IN YOUR HEALTH TODAY! ANY QUESTIONS THAT NEED ANSWERS, CONTACT US IMMEDIATELY FOR SUPPORT!”
- the Respondent did not comment on the language of the proceeding;
- the Respondent did not reply to the Complainant’s contentions substantively and has sent emails to the Center in English; and
- ordering the translation of the Complaint would only result in extra delay and cost for the Complainant.

6.2. Substantive Issues

A. Identical or Confusingly Similar

The Complainant owns international trademark registrations for IQOS and a stylized logo in which letters “iqos” are easily recognizable. The disputed domain name consists of “nhatrangiqos” and a generic Top-Level Domain (“gTLD”), “.com”. Since the part “nhatrang” of the first part is the name of a Vietnamese city, observers of the disputed domain name, especially Vietnamese, would easily recognize the part “iqos” separately from the part “nhatrang”; that is, possibility of separating “nhatrangiqos” into, for example, “nhatran” and “giqos” may be disregarded for the similarity test. Therefore, the disputed domain name entirely incorporates the Complainant’s trademark IQOS.

The similarity test of the first UDRP element serves as a standing requirement, building the connection between the disputed domain name and the trademark in which the Complainant has rights. In the present case, “IQOS” attracts Internet users’ attention, and it is clearly recognizable.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark within the meaning of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has never authorized the Respondent to use and register its trademark, or to seek registration of any domain name incorporating the Complainant’s trademark. Nor has the Complainant, or its affiliates, ever sold the IQOS system to or in Viet Nam. Nevertheless, the Respondent’s website offers the IQOS system with such a message as “INVEST IN YOUR HEALTH TODAY! ANY QUESTIONS THAT NEED ANSWERS, CONTACT US IMMEDIATELY FOR SUPPORT!”. Under the Oki Data criteria, the use of the trademark IQOS as part of the disputed domain name by the Respondent cannot be deemed as use in connection with a “bona fide offering of goods or services” within the meaning of paragraph 4(c)(i) of the Policy.

The Respondent seems to be an individual whose name is Nguyen Minh Tuan. The Panel sees no similarity between the Respondent’s name and the disputed domain name. Therefore, the Panel finds that the Respondent has never been commonly known by the disputed domain name.

Regardless of whether the IQOS system offered at the Website is genuine or not, it is likely that the Respondent’s use of the disputed domain name would mislead the consumers to believe that the Respondent is somehow related to the Complainant. Therefore, the Panel finds that the Respondent did not use the disputed domain name in connection with a bona fide offering of goods or services before notice to it of the dispute, nor does it make a legitimate noncommercial or fair use of the disputed domain name. Rather, it is clear to the Panel that the Respondent has intent for commercial gain to misleadingly divert consumers.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Based on the facts discussed in the previous section, it is clear that the Respondent attempts to use the disputed domain name to attract, for commercial gain, Internet users to the Website by creating a likelihood of confusion with the Complainant’s trademark IQOS as to the source, sponsorship, affiliation, or endorsement of the Website. Therefore, the Panel concludes that the Respondent uses the disputed domain name in bad faith.

The disputed domain name was registered on April 23, 2021. It is nearly seven years after the Complainant’s first registration for IQOS was made, and only three days after the decision of Philip Morris Products S.A. v. Nguyen Minh Tuan, HO KINH DOANH NGUYEN MINH TUAN TUAN BLACKBERRY, WIPO Case No. D2021-0383, which ordered that the domain name <iqosnhatrang.com> be transferred to the Complainant, was issued. Since the name of the Respondent of the present case and Philip Morris Products S.A. v. Nguyen Minh Tuan, HO KINH DOANH NGUYEN MINH TUAN TUAN BLACKBERRY, WIPO Case No. D2021-0383 is identical, and the disputed domain name of this case <nhatrangiqos> is similar to the disputed domain name of Philip Morris Products S.A. v. Nguyen Minh Tuan, HO KINH DOANH NGUYEN MINH TUAN TUAN BLACKBERRY, WIPO Case No. D2021-0383 <iqosnhatrang>, it is logical to conclude that the Respondent of the present case and that of Philip Morris Products S.A. v. Nguyen Minh Tuan, HO KINH DOANH NGUYEN MINH TUAN TUAN BLACKBERRY, WIPO Case No. D2021-0383 are the same entity, and the Respondent registered the disputed domain name of the present case to circumvent the order of Philip Morris Products S.A. v. Nguyen Minh Tuan, HO KINH DOANH NGUYEN MINH TUAN TUAN BLACKBERRY, WIPO Case No. D2021-0383. Under the circumstances, no one would hesitate to conclude that the Respondent did know the trademark IQOS at the time of registration of the disputed domain name. Therefore, the Panel also concludes that the Respondent registered the disputed domain name in bad faith.

Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

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 <nhatrangiqos.com> be transferred to the Complainant.

Keiji Kondo
Sole Panelist
Date: August 3, 2021