The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Temp name Temp Last Name, Temp Organization of Turkey.
The disputed domain name <istanbuliqos.com> is registered with Nics Telekomünikasyon Ticaret Ltd. Sti. (the “Registrar”).
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2018. On September 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 2018, 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.
Pursuant to the Complaint submitted in English and the registrar verification dated September 27, 2018 stating that Turkish is the language of the registration agreement of the disputed domain name, on September 27, 2018, the Center sent a request in English and Turkish that the Parties submit their comments on the language of the proceeding. On September 28, 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 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 Turkish of the Complaint, and the proceedings commenced on October 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2018.
The Center appointed Kaya Köklü as the sole panelist in this matter on November 1, 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.
The Complainant is part of the Philip Morris International Inc. group, which is a group of companies in the field of tobacco and smoke-free products.
The Complainant owns various word and figurative IQOS trademark registrations around the world, including in Turkey, where the Respondent is likely located. According to the provided documents in the case file, the Complainant is, inter alia, the registered owner of the International Trademark Registrations No. 1218246 (registered on July 10, 2014) and No. 1329691 (registered on August 10, 2016), both covering trademark protection, inter alia, for products as covered in classes 9 and 11.
The Complainant also owns and operates various domain names which incorporate the IQOS trademark, such as <iqos.com>.
The Respondent seems to be an individual or company from Turkey. The true identity of the Respondent remains unknown as name and contact details in the WhoIs records for the disputed domain name are incomplete and apparently incorrect.
The disputed domain name was registered on December 14, 2017.
The screenshots, as provided by the Complainant, show that the disputed domain name <istanbuliqos.com> resolves to a website in the Turkish language, which is used for offering various kinds of IQOS smoking-free products. On this website, the Respondent prominently uses the IQOS word and figurative trademark without publishing any visible disclaimer describing the (non-existent) relationship between the Parties.
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is confusingly similar to its IQOS trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is rather argued that the disputed domain name falsely suggests that there is some official or authorized link with the Complainant and the Respondent.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant particularly argues that the Respondent must have been well aware of the Complainant’s IQOS trademark, when registering the disputed domain name, particularly as the Respondent prominently uses the Complainant’s word and figurative IQOS trademarks on the website linked to the disputed domain name without any disclosure of the missing relationship between the Complainant and the Respondent.
The Respondent did not reply to the Complainant’s contentions.
Although the language of the registration agreement of the disputed domain name is the Turkish language, the Panel finds that it would be unnecessary, given the circumstances of this case, to conduct the proceedings in Turkish and request costly and time consuming translations of documents by the Complainant, while the Respondent has failed to raise any objection or even to respond to the Complaint or respond to the Center’s communication about the language of the proceedings, even though communicated in Turkish and in English.
In light of the above, the Panel concludes that the Respondent will not be prejudiced by a decision being rendered in English.
Hence, the Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be the English language.
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 Complaint’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 consensus views captured therein.
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 probably located.
The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered IQOS trademarks, as they fully incorporate the Complainant’s trademark. As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the additions of other terms would generally not prevent a finding of confusing similarity. The mere addition of the geographical term “Istanbul” does, in view of the Panel, not serve to avoid a finding of confusing similarity between the disputed domain name and the Complainant’s registered IQOS trademarks.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production of evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).
In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s trademark IQOS in a confusingly similar way within the disputed domain name.
There is also no indication in the current record that the Respondent is commonly known by the disputed domain name. In the absence of a response, the Respondent has particularly failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name.
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 rather the 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.
As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.
The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel is convinced that the Respondent must have had this well-known trademark in mind when registering the disputed domain name.
It even appears that the Respondent has registered the disputed domain name solely for the purpose of creating an association with the Complainant, in particular with its smoke-free products. After having reviewed the Complainant’s screenshots of the website linked to the disputed domain name, the Panel is convinced that the Respondent has intentionally registered the disputed domain name in order to generate traffic to its own website. The Panel notes that the Respondent has not published any visible disclaimer on the website linked to the disputed domain name to explain that there is no existing relationship between the Respondent and the Complainant. Quite the opposite, the design of the website linked to the disputed domain name and the prominent use of the Complainant’s word and figurative IQOS trademark is in view of the Panel sufficient evidence that the Respondent intentionally tries to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s IQOS trademark as to the source, sponsorship, affiliation or endorsement of its website.
In any case, the Respondent does in view of the Panel not meet the Oki Data principles on various elements, namely lack of a disclaimer and misrepresenting itself as the trademark owner by prominently using the Complainant’s logo and figurative trademark on its website.
The Panel therefore concludes that the disputed domain name was registered and is used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.
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 <istanbuliqos.com> be transferred to the Complainant.
Date: November 7, 2018
Stay updated! Get new cases and decisions by daily email.