WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Kadir \u015eayir, Kadir

Case No. D2018-1971

1. The Parties

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

The Respondent is Kadir \u015eayir, Kadir of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <iqossigarasitesi.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2018. On August 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 of the registrant.

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 of the Complaint, and the proceedings commenced on September 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2018.

On October 16, 2018, the Center sent an email to the Parties, noting that, presumably due to an administrative oversight, the Center’s Notification email sent to the Parties was incomplete, and granting the Respondent a five day period to indicate whether it wished to participate in the proceedings. The Respondent did not submit any response. The Center notified the Parties on October 22, 2018, that it would proceed to panel appointment.

The Center appointed Gökhan Gökçe as the sole panelist in this matter on October 29, 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 Philip Morris Products S.A., a Swiss company that is part of a group of companies affiliated with Philip Morris International Inc. (“PMI”). PMI is a leading international tobacco company: it develops and sells tobacco products such as so called “Reduced Risk Products” (“RRPs”), in approximately 180 countries.

One of these RRPs developed and sold by PMI is branded “IQOS”, which PMI sells in 38 markets around the world, through PMI’s official stores and websites and selected authorized distributors and retailers.

The Complainant owns many IQOS trademarks worldwide among including but not limited in Turkey which:

- International Registration IQOS (word) No. 1218246 registered on July 10, 2014, designating, among others, Turkey;

- International Registration logo (device) No. 1214416 June 11, 2014, designating, among others, Turkey;

- International Registration logo (device) No. 1329691 registered on August 10, 2016, designating, among others, Turkey.

- International Registration HEETS (device) No. 1328679 registered on July 20, 2016, designating several countries including Turkey,

- International Registration HEETS (word) No. 1326410 registered on July 19, 2016, designating several countries including Turkey.

- International Registration (device) No. 1331054 registered on October 11, 2016, designating several countries including Turkey.

The Complainant also owns and operates various domain names which incorporate the IQOS trademark, such as <iqos.com>. The Complainant also registered the domain name <iqos.com.tr> in Turkey on October 31, 2017.

The disputed domain name <iqossigarasitesi.com> was registered by the Respondent on August 17, 2018.

The Panel visited the disputed domain name on November 7, 2018 and determined that the disputed domain name resolves to a website in the Turkish language, which was used for offering various kinds of IQOS and HEETS branded smoke free products and competing accessories of other commercial origin. On this website, the Respondent prominently used the IQOS figurative trademark, logo as well as promotional pictures and registered slogan taken from the Complainant’s website.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name. The Complainant alleges to be the owner of the IQOS trademarks in a number of jurisdictions. Accordingly, the disputed domain name is confusingly similar to the Complainant’s registrations. The addition of a merely generic, descriptive or geographical wording to a trademark in a domain name would be normally insufficient in itself to avoid a finding of confusingly similarity.

Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant has not licensed or otherwise permitted the Respondent to use any of its IQOS trademarks or to register a domain name incorporating IQOS trademark:

- the Respondent is not an authorized distributor or reseller of the IQOS products;

- the website provided under the disputed domain name does not meet the requirements set out by numerous UDRP panel decisions for a bona fide offering of goods.

The Complainant alleges that the disputed domain name has been registered and is being used in bad faith because:

- The disputed domain name is linked to an online shop allegedly offering the Complainant’s IQOS and HEETS branded products. The website is provided in Turkish language. The Respondent is clearly suggesting to be an official dealer. It is not only using the Complainant’s IQOS trademark in the disputed domain name accompanied by the term “sigara sitesi” (which means smoking sites) indicating it to be the official IQOS shop, but also uses the Complainant’s official marketing material and product images;

- It is apparent that the Respondent’s use of the disputed domain name shows that the Respondent knew of the Complainant’s IQOS trademarks when registering the disputed domain name;

- The Respondent’s use of the disputed domain name shows 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 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;

- The Respondent’s use of privacy protection service to hide its true identity in itself may constitute a factor indicating bad faith.

B. Respondent

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

6. Discussion and Findings

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

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

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

(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.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the WIPO Overview 3.0.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has registered trademark rights in the mark IQOS by virtue of various trademark registrations, including trademark registrations covering protection in Turkey, where the Respondent is located.

The Panel further finds that the disputed domain names are confusingly similar to the Complainant’s registered IQOS trademarks, as they fully incorporate the Complainant’s trademark. The mere addition of the descriptive term “sigara sitesi”, which are Turkish terms and mean “smoking sites” in the English language, does, in view of the Panel, not serve to prevent a finding of confusing similarity between the disputed domain name and the Complainant’s registered IQOS trademarks. (Philip Morris Products S.A. v. Kazim Akgul, WIPO Case No. D2017-2521)

For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the generic Top-Level Domain (“gTLD”) suffix “.com” may generally be disregarded as a gTLD being simply a technical component of a domain name (LEGO Juris A/S v. Whois Data Protection Sp. z o.o. / Mirek Nowakowski ROSTALCO Sp. z o.o., WIPO Case No. D2012-0607).

Therefore, the Panel finds that the disputed domain name is confusingly similar to the IQOS mark and as a consequence, the Complainant has met the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent has not provided any evidence of the conditions specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to rights or legitimate interests in the disputed domain name. It is clear that the Respondent has not demonstrated any bona fide offering of goods and services by its using the disputed domain name. Nor has the Respondent shown that it has been commonly known by the disputed domain name. Rather, the evidence of the Complainant suggests that the Respondent has used the disputed domain name in an attempt to trade off the goodwill associated with the Complainant’s trademark.

The Complainant also showed, inter alia, that the Respondent has neither a license nor any other permission to use the Complainant’s trademark in the disputed domain name or otherwise.

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests or otherwise rebut the Complainant’s arguments.

In this regard, the Panel is convinced that the Respondent cannot be assessed as a legitimate dealer for the Complainant’s products in light of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”) and thus is not entitled to use the disputed domain name accordingly. The criteria as set forth in Oki Data are apparently not fulfilled in the present case. The Panel particularly notes that the Respondent’s website which is linked to the disputed domain name does not adequately disclose the relationship, or lack thereof, between the Respondent and the Complainant, thus creating the false impression that the Respondent might be an official and authorized distributor for the Complainant’s products in Turkey. In view of the Panel, this takes the Respondent out of the Oki Data safe harbour for purposes of the second element.

Additionally, the Respondent is using the disputed 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 at the disputed 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 disputed 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 disputed domain name cannot be considered “fair” if it falsely suggests affiliation with the trademark owner under the section 2.5 of the WIPO Overview 3.0. (Philip Morris Products S.A. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Unal Ocalan, WIPO Case No. D2018-1023).

In the circumstances the Respondent has not produced any evidence of its rights or legitimate interests in the disputed domain name and the Complainant is entitled to succeed on the second element of the test in Paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Respondent’s use of the disputed domain name to purport to sell the Complainant’s products applying various Complainant’s trademarks shows that at the time of the registration of the disputed domain name the Respondent clearly knew and targeted the Complainant’s prior registered trademarks, which confirms the bad faith (The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113). The Complainant’s IQOS mark and the disputed domain name each consist of the same distinctive invented word. It is most implausible that the disputed domain name was registered without knowledge of the Complainant, its mark and its reputation. Since it was registered, the disputed domain name has been used as the address of a website which purports to sell the Complainant’s products by copying the design features of the Complainant’s website and thereby creating the false and misleading impression among Internet users that the Respondent has some connection or affiliation with the Complainant, being all these, evidence of the registration and use in bad faith.

Finally, it should be noted that there is a long line of UDRP decisions that found that the Complainant has rights in the IQOS mark and that the disputed domain names are confusingly similar to the Complainant’s mark, that the respondents have no rights or legitimate interests in the disputed domain names, and that the respondents have registered and used the disputed domain names in bad faith, and resulted in transfer of the disputed domain names to the Complainant. (See, e.g., Philip Morris USA Inc. v. Domains by Proxy / Ray A Board, WIPO Case No. D2016-0840, Philip Morris Products S.A. v. Kostas Martakis, WIPO Case No. D2018-1868, Philip Morris Products S.A. v. Faruk Pazarlama, WIPO Case No. D2018-1162, Philip Morris Products S.A. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Cihan Atalay, WIPO Case No. D2018-1879)

The Panel finds that the above constitutes registration and use in bad faith pursuant to the third requirement of 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 <iqossigarasitesi.com> be transferred to the Complainant.

Gökhan Gökçe
Sole Panelist
Date: November 7, 2018