About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Jiafan Yan

Case No. D2021-3451

1. The Parties

The Complainant is Philip Morris Products S.A., Switzerland, represented by Boehmert & Boehmert, Germany.

The Respondent is Jiafan Yan, Japan.

2. The Domain Name and Registrar

The disputed domain name <veevplus.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 October 18, 2021. On October 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On October 20, 2021, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On October 21, 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.

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 Japanese of the Complaint, and the proceedings commenced on October 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2021.

The Center appointed Douglas Clark as the sole panelist in this matter on December 16, 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. The Panel extended the time for making the decision from December 30, 2021, to January 5, 2021.

4. Factual Background

The Complainant is part of a group of companies affiliated with Philip Morris International Inc. (“PMI”). PMI is an international tobacco company with products sold in around 180 countries. One of the products developed and sold by PMI is IQOS, a heating device where specially designed tobacco products are inserted and heated to generate a nicotine-containing aerosol, which comes with a corresponding pocket charger. The IQOS system has obtained 20% of the market share in Japan and is available in cities in around 67 markets around the world. As a result of PMI’s sales and marketing efforts, IQOS has achieved international reputation, with approximately 19.1 million relevant consumers worldwide. The next generation of IQOS products is IQOS VEEV.

The Complainant owns a portfolio of VEEV trade marks worldwide for its smoke-free products. Among them include the following trade mark registrations:

- International Registration VEEV (word) No. 1305642 registered on May 18, 2016, designating Albania, Algeria, Armenia, Australia, Azerbaijan, Bahrain, Belarus, Brunei, Bosnia and Herzegovina, Botswana, Cambodia, China, Colombia, Curaçao, Egypt, Eswatini, European Union, Ghana, Georgia, India, Iceland, Israel, Japan, Kenya, Kyrgyzstan, Liechtenstein, Morocco, Mexico, Monaco, Montenegro, Mozambique, Namibia, Norway, New Zealand, North Macedonia, OAPI (African Intellectual Property Organsiation), Philippines, Republic of Korea, Republic of Moldova, Russian Federation, Rwanda, San Marino, Serbia, Singapore, Oman, Turkmenistan, Turkey, Ukraine, United States of America, Uzbekistan, and Viet Nam;

- International Registration VEEV (word/device) No. 1544205 registered on June 5, 2020 designating Albania, Armenia, Bosnia and Herzegovina, Belarus, Canada, Colombia, United Kingdom, Georgia, Indonesia, Israel, Republic of Korea, Kazaksthan, Republic of Moldova, Mexico, Malaysia, New Zealand, Philippines, Serbia, Ukraine;

- European Union Trade Mark Registration VEEV PLUS (Word) No. 018005723 registered on May 3, 2019.

The disputed domain name <veevplus.com> was registered on April 12, 2021. Based on the information provided by the Registrar, the Respondent is an individual based in Japan. The disputed domain name currently resolves to a webpage in English where it is offered for sale at a price of USD 2,900. It has previously resolved to webpages where it has been on sale for USD 2,290 and USD 11,900.

A reverse-WhoIs search for the email address associated with the disputed domain name revealed that the Respondent registered at least 354 domain names, a considerable number of which comprise well-known trademarks, such as:

<allianz-fundraising.com>, <amazonworklink.com>, <armanibag.com>, <basfbiotech.com>, <bmw-net.com>, <paypalgroup.com>, <osramcloud.com>, <volvodevice.com>, <volvosensus.com>

All of these domain names have not been put to any use but are provided for sale at prices at or above USD 2,900.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(a) The disputed domain name is confusingly similar to its trade mark VEEV. The disputed domain name wholly incorporates the VEEV trade mark followed by the word “plus” and the generic Top-Level Domain (“gTLD”) “.com”;

(b) The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant in any way and the Complainant has never granted any authorisation or license to use the Complainant’s trade mark. The Respondent is not commonly known by the disputed domain name, and has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The Respondent has registered the disputed domain name primarily for the purpose of selling it; and

(c) The disputed domain name was registered and is being used in bad faith. The fact that the Respondent has registered the disputed domain name incorporating the VEEV trade mark in full knowledge of the mark anticipating the launch of a VEEV PLUS product. Based on the offers to sell the disputed domain name the Respondent has registered the disputed domain name for the purposes of selling or renting or otherwise transferring it for consideration more than its out of pocket expenses.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Preliminary Issue – Language of the Proceeding

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 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 this case, the language of the Registration Agreement for the disputed domain name is Japanese. Based on the given evidence, there is no agreement between the Complainant and the Respondent regarding the language of the proceeding. The Respondent did not respond as to the language of the proceeding. The Complainant has filed its Complaint in English and has requested that English be the language for the proceeding under the following grounds:

a) the disputed domain name was registered in Latin characters;

b) in order to proceed in Japanese, the Complainant would have had to retain specialised translation services that would cause an unnecessary costs to the Complainant and delay the proceeding;

c) the disputed domain name resolves to a website which offers the disputed domain name for sale in English (and other languages);

In accordance with paragraph 11(a) of the Rules, the Panel hereby determines that the language of the proceeding shall be in English after considering the following circumstances:

- the Center has notified the Respondent in both English and Japanese of the language of the proceeding and the Complaint;

- the Respondent has not commented on the language of the proceeding;

- the Panel would have accepted a response in Japanese, but none was filed;

- an order for the translation of the Complaint and other supporting documents will result in significant expenses for the Complainant and a delay in the proceeding;

- the disputed domain name is offered for sale in English and other languages, but not Japanese.

Further, this Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.

6.2 Substantive Issues

The Complainant must satisfy all three elements of paragraph 4(a) of the Policy in order to succeed in its complaint:

(i) the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights to;

(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

The Panel finds that the disputed domain name <veevplus.com> is identical to the Complainant’s VEEV PLUS trademark and confusingly similar to the Complainant’s VEEV trade marks. The disputed domain name incorporates the VEEV trade mark in full and is accompanied with the English word “plus”. The addition of the word “plus” does not prevent a finding of confusing similarity with the VEEV marks. The disputed domain name is then accompanied with the gTLD “.com”. The gTLD is generally disregarded when considering the first element (see section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Complainant has therefore satisfied the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Respondent has not asserted any rights or legitimate interests in relation to the disputed domain name.

Section 2.1 of the WIPO Overview 3.0 provides:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Complainant has asserted that the Respondent has no business with and is in no way affiliated with the Complainant. The Respondent is not authorized nor licensed to use the Complainant’s VEEV trade mark or to apply for registration of the disputed domain name. There is no evidence that the Respondent has used or is planning to use the disputed domain name for a bona fide offering of goods or services. In addition, the Respondent has not responded to any of the Complainant’s contentions.

The second element of paragraph 4(a) of the Policy is therefore satisfied.

C. Registered and Used in Bad Faith

Based on the given evidence, the disputed domain name was registered and is being used in bad faith.

The disputed domain name was registered after the Complainant has registered the VEEV trade mark and the use of the Complainant’s VEEV trade mark cannot be a coincidence. The term “veev” is an invented term and unique to the Complainant. The Panel is satisfied that the Respondent was aware of the Complainant and its VEEV trade mark when he or she registered the disputed domain name.

The Respondent has registered the disputed domain name to sell it for USD 2,900 which is an amount far higher than its out of pocket expenses and has clearly registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration for consideration in excess of the costs of acquiring the disputed domain name. This is bad faith under paragraph 4(b)(i) of the Policy. The fact the Respondent has registered numerous other domain names incorporating other famous marks and offers them for sale further supports a finding of bad faith.

For the above reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith.

The Complainant has therefore satisfied the third element under paragraph 4(a) 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 <veevplus.com> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: January 11, 2022

https://www3.wipo.int/contact/en/area.jsp?area=arbitration https://www.wipo.int/pressroom/en/ https://www.wipo.int/tools/en/disclaim.html https://www.wipo.int/en/web/privacy-policy/ https://www.wipo.int/en/web/accessibility/ https://www.wipo.int/tools/en/sitemap.html https://www3.wipo.int/newsletters/en/ https://www.wipo.int/podcasts/en/ https://www.wipo.int/news/en/