WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Murat Derin

Case No. D2019-0468

1. The Parties

The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by D.M. Kisch Inc., South Africa.

The Respondent is Murat Derin of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <iqoscum.com> is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2019. On February 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2019, 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. The Center sent an email communication to the Complainant on March 1, 2019 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 amended Complaint on March 4, 2019.

The Center verified that the Complaint together with the amended 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 March 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2019.

The Center appointed Selma Ünlü as the sole panelist in this matter on April 29, 2019. 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.

Since the language of the Registration Agreement is English, the Complainant requested that the language of the proceedings be English.

4. Factual Background

The Complainant Philip Morris Products S.A., is a part of the group companies affiliated to Philip Morris International Inc. a leading international tobacco company who sells products in approximately 180 countries. The Complainant also develops products such as IQOS which is a precisely controlled heating device into which specially designed tobacco products under the brand names HEETS and HeatSticks are inserted and heated to generate a flavorful nicotine-containing aerosol. Presently, the Complainant’s IQOS products are available in key cities in around 43 markets across the world. As a result of a USD 4.5 billion investment and extensive international sales and marketing efforts, the IQOS products have achieved considerable international success and reputation and already around 9.6 million relevant consumers are using the IQOS products worldwide.

The Complainant owns the registered and well-known IQOS and HEETS trademarks around the world. The Complainant is the owner of the registered International Trademark No. 1218246 for IQOS (word), registered since July 10, 2014; the International trademark No. 1338099 for IQOS (device), registered since November 22, 2016; the International Trademark No. 1329691 for IQOS (device), registered since August 10, 2016; International Trademark No. 1328679 for HEETS (word/device), registered since July 20, 2016 and International Trademark No. 1326410 for HEETS (word), registered since July 19, 2016.

The Respondent is an individual. The Respondent is not known or related to the Complainant and not authorized to use the IQOS trademarks.

The Respondent has not submitted any formal Response to the contentions raised in the Complaint.

The Respondent registered the disputed domain name <iqoscum.com> on January 14, 2019.

The disputed domain name <iqoscum.com> is linked to an online shop at “www.iqoscum.com” that offers the Complainant’s IQOS and HEETS branded products for sale.

5. Parties’ Contentions

A. Complainant

Pursuant to paragraph 4(i) of the Policy, the Complainant requests the Panel to make a decision requesting the transfer of the disputed domain name to the Complainant. The Complainant submits the grounds for these proceedings listed in paragraph 4(a) of the Policy.

In summary, the Complainant contends the following:

Confusingly Similar

The Complainant states that it owns registered IQOS trademarks for several jurisdictions including but not limited to Turkey.

The Complaint alleges that the disputed domain name <iqoscum.com> is confusingly similar to its IQOS trademark registrations, since the disputed domain name reproduces the Complainant’s IQOS trademark in its entirety alongside with the non-distinctive term “cum” (which is a Turkish possessive suffix). Accordingly, it is argued that any Internet user when visiting the website associated with the disputed domain name will reasonably expect to find a website commercially linked to the owner of the IQOS trademark.

Rights or Legitimate Interests

The Complainant alleges that the Respondent is not and has never been one of the Complainant’s distributors, nor is not authorized to use the Complainant’s mark. The Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent is not known under the name of “IQOS” either.

Therefore, the Complainant argues that the Respondent registered the disputed domain name to gain commercial profit. Since the disputed domain name contains the Complainant’s registered trademark identically together with the non-distinctive term “cum”, it will mislead the consumers and tarnish the trademarks owned by the Complainant.

It is also stated by the Complainant that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. On the contrary, the Respondent’s behavior shows a clear intent to obtain a unfair commercial gain as the Respondent is not the authorized distributor of the Complainant and does not fulfill the requirements establishing a use of the disputed domain name in connection with a bona fide offering of goods or services.

The Complainant also alleges that the illegitimacy of the Respondent’s use of the disputed domain name is clear as the Complainant does not currently offer for sale its IQOS and HEETS branded products in Turkey while the Respondent is using the registered trademarks of the Complainant on the top left side of the website as well as the products visuals which are subjected to copy right protection. Further, the Complainant also claims copyright for those visuals. The Complainant also alleges that the website creates the false impression that the Complainant has officially introduced its IQOS products into the Turkish market through a distributor.

Registered and Used in Bad Faith

The Complainant indicates that the disputed domain name has been registered and used in bad faith.

The Complainant claims that the Respondent must have been aware of the Complainant and its trademarks at the time that it chose the Complainant’s trademark and registered the disputed domain name to attract the customers of the Complainant. The Complainant alleges that the Respondent started offering the Complainant’s IQOS branded products immediately after registering the disputed domain name; furthermore, the term IQOS is a purely imaginative term and has no inherent meaning.

The Complainant alleges that the Respondent registered and used the disputed domain name with the intention to attract for commercial gain Internet users to the website to which the disputed domain name resolves to, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website. The Complaint also alleges that the display of the Complainant’s registered IQOS trademark at the top left of the website associated with the disputed domain name, as well as the usage of the Complainant’s official copyright protected product images, clearly suggest that it belongs to the Complainant or an official affiliated dealer of the Complainant.

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 and on the basis of the Complaint where no Response has been submitted.

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 the 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 has the burden of proving that all these requirements are fulfilled.

A. Identical or Confusingly Similar

The Policy requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of several international registrations of the IQOS trademark.

The Panel finds that the addition of the non-distinctive term “cum” (a possessive suffix in Turkish) within the disputed domain name <iqoscum.com> does not prevent a finding of confusingly similarity.

In similar UDRP cases (see, e.g., Sanofi-Aventis v. Gideon Kimbrell, WIPO Case No. D2010-1559; Turkcell Iletisim Hizmetleri A.S. v. Vural Kavak, WIPO Case No. D2010-0010; Greenbrier IA, Inc. v. Moniker Privacy Services/Jim Lyons, WIPO Case No. D2010-0017 and Zodiac Marine & Pool, Avon Inflatables Ltd and Zodiac of North America Inc. v. Mr. Tim Green, WIPO Case No. D2010-0024), the respective UDRP panels found that adding non-distinctive terms does not prevent a finding of confusingly similarity between a trademark and a domain name incorporating said trademark.

The Panel recognizes the Complainant’s rights and concludes that the disputed domain name is confusingly similar with the Complainant’s IQOS trademarks. Therefore, the Panel concludes that the requirements of paragraph 4(a)(i) of the Policy are met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iïi) you [the Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The burden of proof is on the Complainant to demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, then the Respondent may, by, inter alia, showing one of the above circumstances, demonstrate rights or legitimate interests in the disputed domain name.

In light of the evidence submitted in the case file, e.g., trademark registration information, it is clear to the Panel that the Complainant has earlier and lawful rights on the IQOS trademarks. Therefore, the Panel finds on the current record that the Complainant has proved rights on the IQOS trademarks and, considering the use of the disputed domain name, has also established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name for the purposes of the Policy.

The Complainant has not granted the Respondent any right or license to use the IQOS trademarks as well and the Respondent it not known by this phrase.

Consequently, in the absence of any response, the Panel accepts the Complainant’s allegations as true that the Respondent has no authorization to use the IQOS trademark in the disputed domain name. Hence, as the Complainant has made out its prima facie case, and as the Respondent has not demonstrated any rights or legitimate interests as illustrated under paragraph 4(c) of the Policy, nor has the Panel found any other basis for finding any rights or legitimate interests of the Respondent in the disputed domain name, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) 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.

By consideration of the foregoing, the Panel is of the opinion that, due to the earlier rights of the Complainant in the trademark IQOS, the Respondent was aware of the Complainant and its IQOS trademark at the time of registration of the disputed domain name. See e.g., Ebay Inc. v.Wangming, WIPO Case No. D2006-1107; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087. Referring to Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226. The Panel believes that the awareness of the Complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith registration, due to the nature of the disputed domain name. This intention has also been shown by using the registered trademark of the Complainant at the top left side of the website and selling the products which have not yet been offered to the Turkish market by the Complainant.

The Panel is of the opinion that Internet users may fall into the false impression that the disputed domain name is the Complainant’s official domain name or related, associated or sponsored by the Complainant.

Moreover, the Panel notes that the Respondent did not submit any response.

Therefore, in light of the above-mentioned circumstances in the present case, the Panel finds that the disputed domain name has been registered and is being used in bad faith and that the Complainant has established the third element under paragraph 4(a)(iii) 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 <iqoscum.com> be transferred to the Complainant.

Selma Ünlü
Sole Panelist
Date: May 20, 2019