WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Unal Ocalan

Case No. D2018-1023

1. The Parties

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

The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) of Burlington, Massachusetts, United States of America / Unal Ocalan of Mugla, Turkey.

2. The Domain Name and Registrar

The disputed domain name <iqostrend.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2018. On May 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 12, 2018, 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 May 15, 2018 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 amendment to the Complaint on May 17, 2018.

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, and the proceedings commenced on May 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2018.

The Center appointed Olga Zalomiy as the sole panelist in this matter on June 19, 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 is a Swiss tobacco company, which is a part of the group of companies affiliated with Philip Morris International Inc., a leading international tobacco company. The Complainant is the owner of the IQOS trademarks worldwide, such as International trademark IQOS, registration number 1218246, registered on July 10, 2014.

The Complainant has also acquired a number of trademark registrations for its HEETS trademarks, such as International trademark HEETS (word/device), registration number 1328679, registered on July 20, 2016.

The Respondent registered the Domain Name on January 31, 2018. The Respondent has been using the Domain Name to direct to an online store (the “Website”) selling the Complainant’s HEETS and IQOS goods as well as accessories to those goods manufactured by third parties that are falsely labeled as IQOS goods .

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

The Complainant contends that the Domain Name is identical or confusingly similar to its IQOS trademarks because the Domain Name incorporates the mark in its entirety. The Complainant alleges that the generic Top-Level Domain (“the gTLD”) in the Domain Name should be disregarded under the confusing similarity test because it is a standard registration requirement. The Complainant argues that the addition of the descriptive word “trend” to the Complainant’s trademark in the Domain Name is insufficient to avoid confusing similarity.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name because the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s IQOS trademark or to register the Domain Name incorporating the Complainant’s IQOS trademark. The Complainant argues that the Respondent is not making a legitimate non-commercial or fair use of the Domain Name as a reseller or a distributor because the Complainant is not an authorized distributor and because the Respondent’s website does not meet the Oki Data case (“Oki Data Test”)¹ requirements.

The Complainant contends that the Respondent registered and is using the Domain Name in bad faith. The Complainant claims that the Respondent knew about the Complainant’s IQOS and HEETS trademarks when he registered the Domain Name because the Respondent started selling goods under those trademarks on the website associated with the Domain Name immediately after the Domain Name registration. The Complainant argues that the Respondent registered and used the Domain Name with the intention to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s IQOS trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location of a product or service on his website or location. The Complainant claims that such actions of the Respondent constitute registration and use in bad faith. The Complainant alleges that by reproducing the Complainant’s trademark in the Domain Name and prominently displaying the Complainant’s registered logos and slogan at the top of the Respondent’s website as well as using the Complainant’s marketing material and product images, the Respondent’s website clearly suggests that the website belongs to, is affiliated with or endorsed by the Complainant. The Complainant contends that because the Respondent’s website does not provide any information on the true identity its owner, it is evident that the Respondent wishes to intentionally create the impression that the products offered on his website are provided by the Complainant or at least by an official dealer, with the clear objective of misleading Internet users as to the origin or source of the Website and the products offered and thereby attract, for commercial gain, Internet users to the Website. The Complainant alleges that along with the Complainant’s goods, the Respondent is using the website associated with the Domain Name to promote goods of third parties. The Complainant contends that the Respondent’s use of a privacy protection service for registration of the Domain Name constitutes a factor indicating bad faith.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Under the first UDRP element, the Complainant is required to prove that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.

The Complainant holds rights in the IQOS trademark by virtue of its trademark registrations for that term. Pursuant to section 1.2.1 of the WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”.

The Domain Name is confusingly similar to the Complainant’s IQOS trademark, because it incorporates the mark in its entirety. “Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”² Neither addition of a generic term “trend”, nor addition of the gTLD “.com” prevents finding of confusing similarity.³

Thus, the Domain Name is identical or confusingly similar to the Complainant’s IQOS trademark and the first element of the UDRP has been satisfied.

B. Rights or Legitimate Interests

To prove the second UDRP element, the Complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the Respondent.

The Complainant alleges that it has not licensed or permitted the Respondent to use the Complainant’s IQOS trademark in domain names, or for any other purpose. Therefore, the Respondent is using the Complainant’s trademark without an authorization. While some previous UDRP panels have recognized that resellers using domain names containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain names in some situations⁴, the Respondent’s use of the Domain Name does not satisfy requirements of such bona fide offering of goods and services.

Outlined in the Oki Data Test, the following cumulative requirements must be satisfied for respondent to make a bona fide offering of goods and services:

“(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.”⁵

Here, the Respondent is using the Domain Name to direct to a website in the Turkish language offering for sale the Complainant’s IQOS and HEETS products, as well as accessories to those products manufactured by third parties. The website also contains health warnings in Russian and Ukrainian languages. The website at the Domain Name features the Complainant’s registered IQOS and hummingbird trademarks, along with the Complainant’s registered slogan “This Changes Everything’’, thereby creating an impression that the Domain Name is being affiliated with the Complainant. The Respondent’s website does not disclose lack of any relationship between the Respondent and the Complainant.

Taken together, all of the abovementioned factors create an impression that the Respondent’s website belongs to an authorized reseller of the Complainant’s products in Turkey. Such use of the Domain Name cannot be considered “fair if it falsely suggests affiliation with the trademark owner”.⁶

The Panel finds that the Complainant has made out the prima facie case and the burden of producing evidence demonstrating it has rights or legitimate interests in the Domain Name shifted to the Respondent. Because the Respondent failed to present any rebutting evidence, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.

Because the Respondent has failed to rebut the Complainant’s case, the Panel holds that the second element of the UDRP has been proven.

C. Registered and Used in Bad Faith

Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.

Given that the Respondent used the Complainant’s trademark IQOS in the Domain Name and also displayed the Complainant’s trademark HEETS on the Website, which offers for sale the Complainant’s goods, it is unlikely that the Respondent was unaware of the Complainant or its trademarks when he registered the Domain Name.

Considering the Respondent’s use of the Domain Name to direct to the Website, which creates an impression of an online store licensed or affiliated with the Complainant, it is likely that Internet users may be misled on the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Absent any explanation from the Respondent, the Panel can ascribe no motive for the Respondent's registration and use of the Domain Name except to capitalize on the Complainant’s trademark rights. Therefore, the Panel finds that the Respondent registered and is using the Domain Name in bad faith pursuant to paragraph 4(b)(iv) of the UDRP, which provides that bad faith registration and use can be found where a respondent, by registering and using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

The Panel finds that the Complainant has made out the requirements of paragraph 4(a)(iii) of the UDRP.

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 Domain Name <iqostrend.com> be transferred to the Complainant.

Olga Zalomiy
Sole Panelist
Date: July 2, 2018

¹Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

² Id.

³ Section 1.8 of the WIPO Overview 3.0.

⁴ See section 2.8.1 of the WIPO Overview 3.0.

⁵ Oki Data Americas, Inc. v. ASD, Inc., supra.

⁶Section 2.5 of the WIPO Overview 3.0.