WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Anl Girgin, Teknoloji

Case No. D2018-0319

1. The Parties

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

The Respondent is Anl Girgin, Teknoloji of Denizli, Turkey.

2. The Domain Name and Registrar

The disputed domain name <iqossturkey.com> is registered with Atak Domain Hosting Internet ve Bilgi Teknolojileri Limited Sirketi d/b/a Atak Teknoloji (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2018. On February 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 21, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 22, 2018.

Pursuant to the Complaint submitted in English and the registrar verification dated February 21, 2018 stating that Turkish is the language of the registration agreement of the disputed domain name, on February 22, 2018, the Center sent a request in English and Turkish for the Parties to submit their comments on the language of the proceeding. On February 22, 2018, the Complainant submitted its request for English to 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 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 the Respondent of the Complaint in English and Turkish, and the proceedings commenced on March 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2018. The Respondent did not submit any formal response but submitted its intention to settle the dispute through the Registrar on March 17, 2018. In accordance with paragraph 17 of the Rules, the proceeding was suspended by the Center on March 22, 2018 and reinitiated on April 9, 2018. The Center notified the Parties that the new due date for Response was April 16, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2018.

The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on April 30, 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

The Complainant Philip Morris Products S.A. is a company which is part of the group of companies affiliated to Philip Morris International Inc. Philip Morris International Inc. is an international tobacco company, with products sold in approximately 180 countries.

The Complainant is selling smoke-free cigarettes under its IQOS brand and owns several international trademark registrations for IQOS including the followings:

- International Registration No. 1218246 for the trademark IQOS extended to Turkey, registered July 10,

2014 covering tobacco products and electronic cigarettes, in classes 9, 11 and 34;

- International Registration No. 1329691 for the trademark IQOS logo extended to Turkey, registered August 10, 2016 covering tobacco products and electronic cigarettes, in classes 9, 11 and 34;

The disputed domain name was registered on January 01, 2018 in the name of the Respondent who is a physical person domiciled in Denizli, Turkey. The disputed domain name previously resolved to a website in Turkish offering the Complainant’s products for sale and it currently does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s trademark IQOS and that the addition of the geographical term “Turkey” reinforces the association between the disputed domain name and the Complainant’s trademark as Internet users will likely assume that the disputed domain name is used for the official IQOS online shop in Turkey.

The Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, mainly because the Complainant has neither licensed nor otherwise authorized the Respondent to use its marks or to apply for or use any domain name incorporating the trademark IQOS. The Complainant further asserts that the conditions of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 for a bona fide offering of goods and services by an authorized or non-authorized third party are not satisfied.

Finally, in addressing the question of registration and use of the disputed domain name in bad faith, the Complainant observes that the Respondent is well aware of the Complainant’s trademark considering that the Respondent is using the Complainant’s marketing material, including the humming bird logo and that the Respondent’s website clearly suggests that the website belongs to the Complainant or is an official affiliated dealer endorsed by the Complainant.

The fact that the website does not provide any information on the true identity of the website provider clearly shows that the Respondent intentionally creates the impression that the products offered on the Respondent’s website are provided by the Complainant or at least an official dealer by misleading users on the source of the website and thereby attract, for commercial gain, Internet users to the website.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove, during the administrative proceedings, to merit a finding that the disputed domain name be transferred to the Complainant:

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

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(c) the disputed domain name has been registered and is being used in bad faith.

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

6.1. Language of the Proceeding

Pursuant 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. The registration agreement is in Turkish. The Complaint was filed in English.

On February 22, 2018, the Complainant submitted a reply to the Center’s request regarding Language of Proceedings that the Complainant did not have specific information on the language of the registration agreement and that however, the disputed domain name “iqossturkey.com” is English and is obviously addressing an English speaking public as in Turkish language the domain name would rather be “iqossturkiye.com”.

The Complainant has invoked numerous panel decisions where the panels have accepted English as the language of the proceedings despite the registration agreement having a differing language where it could be presumed from the circumstances of the case that the respondent has knowledge of the English language, while the complainant is not capable of providing the complaint in the language of the registration agreement (e.g. Turkish) without unreasonable effort and costs.

In addition to Complainant’s submission regarding the language of the proceedings, it appears that the Respondent did not submit a Response nor did he formally object to English as the language of the proceeding.

More importantly, the representative of the Respondent submitted an informal communication on March 17, 2018 that its client, the Respondent, is ready to delete or transfer the disputed domain name. In other words, it may be considered that the Respondent has good knowledge of the Complainant’s claims and motivations.

Taking into account, all the above elements as well as the Panel’s authority to determine the language of the proceedings differing from the language of the registration agreement in accordance with the paragraph 11(a) of the Rule, the Panel considers that the appropriate language of the proceeding shall be English.

6.2. Substantive Issues

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.

As indicated above, the Complainant holds several trademark registrations for the IQOS trademark.

The disputed domain name <iqossturkey.com> integrates the Complainant’s IQOS trademark in its entirety. The disputed domain name differs from the registered IQOS trademark by the addition of the letter “s” and the geographical term “Turkey”, which does not serve to distinguish or differentiate the disputed domain name from the Complainant’s trademark.

Several UDRP panels have ruled that the mere addition of a descriptive element does not sufficiently differentiate a disputed domain name from a complainant’s registered trademark. Moreover it is the Panel’s view that using such a descriptive word together with a registered trademark strengthens the impression that the disputed domain name is in some way connected to the Complainant’s trademark (see, e.g., Société des Produits Nestlé S.A. v. MrToys.com LLC, WIPO Case No. D2012-1356; Allianz SE v. Roy Lee / Traffic-Domain.com, WIPO Case No. D2012-1459; Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150; and Swarovski Aktiengesellschaft v. www.swarovski-outlet.org, WIPO Case No. D2013-0335).

As regards the generic Top-Level Domain (“gTLD”) “.com”, it is typically disregarded under the confusing similarity test under the Policy.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The onus is on the Complainant to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and it is then for the Respondent to rebut this case.

Although the Respondent did not file a Response, a respondent’s default does not automatically result in a decision in favor of the complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 and the cases cited therein.

However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

As there are no exceptional circumstances for the failure of the Respondent to submit a Response, the Panel infers that the Respondent does not deny the facts asserted and contentions made by the Complainant. Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.

A number of UDRP decisions have addressed the question of when a reseller’s use of a mark constitutes a bona fide offering of goods and services. The consensus view was articulated in Oki Data Americas, Inc. v. ASD, Inc., supra. See WIPO Overview 3.0 at section 2.8. In that case, the authorized reseller’s domain name <okidataparts.com> incorporated the complainant’s OKIDATA trademark in full. The panel in Oki Data concluded that for a respondent to demonstrate that a resale offering was bona fide, the following conditions must be met:

“- the respondent must actually be offering the goods or services at issue;

- the respondent must use the corresponding website to sell only the trademarked goods, otherwise there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods;

- the site itself must accurately disclose the respondent’s relationship with the trademark owner, i.e., respondent may not falsely suggest that it is the trademark owner, or that the website is the official site, if that is not the case; and

- the respondent must not try to “corner the market” in all relevant domain names, or deprive the trademark owner of reflecting its own mark in a domain name.”

In this case, it appears from the website, that the Respondent has been operating its business of selling electronic cigarettes exclusively for the Complainant’s products under the disputed domain name.

That being said, the Respondent is using the stylized version and the logo of the IQOS trademark on the website as well as the registered humming bird trademark. Moreover, the website includes the photos of the Complainant’s IQOS branded products and uses the marketing material of the Complainant. All of these circumstances give the impression that the Respondent is affiliated with the Complainant or it is authorized dealer of the Complainant.

Another relevant point is that the Complainant does not currently offer for sale its IQOS branded products in the territory of Turkey whereas the disputed domain name includes the geographical term “Turkey”. Lastly, there is no disclaimer on the webpage connected to the disputed domain regarding the relationship between the Complainant and the Respondent.

For these reasons, the Panel concludes that the Respondent is not making use of the disputed domain name in connection with a bona fide offering of goods or services.

In the Panel’s view the Complainant has made out its prima facie case under this element of the Policy and the Respondent has failed to rebut it. Accordingly, the Complaint succeeds in relation to the second element of the Policy.

C. Registered and Used in Bad Faith

Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

Considering the Panel’s finding under the second element, the Panel finds that the registration and use of the disputed domain name falls under the circumstances described under paragraph 4(b)(iv) of the Policy, namely, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by seeking to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by the Complainant.

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 <iqossturkey.com> be transferred to the Complainant.

Emre Kerim Yardimci
Sole Panelist
Date: May 28, 2018