WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Omur Kaba

Case No. D2019-1173

1. The Parties

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

The Respondent is Omur Kaba, Turkey.

2. The Domain Name and Registrar

The disputed domain name <iqosmerkezi.com> is registered with Nics Telekomunikasyon A.S. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2019. On May 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 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 the same day 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 May 30, 2019.

The Registrar confirmed that the language of the registration agreement is in Turkish, whereas the Complaint was submitted in English. On May 27, 2019, the Center sent the Parties a language of proceedings email in which they were invited to substantiate their arguments on the language of proceedings. The Complainant replied to this request on May 30, 2019, arguing in favor of English being the language of proceedings. No response was received from the Respondent.

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 June 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 25, 2019.

The Center received several email communications from the Respondent amongst which included the Respondent’s offer for settlement dated June 6, 2019. Accordingly, the Center sent to the Parties a possible settlement email on the same day. On June 13, 2019, the Complainant requested the administrative proceedings to be suspended for settlement discussions. On the same day, the Center suspended the proceedings herein until July 13, 2019. As per the Complainant’s request to reinstitute the administrative proceedings on July 8, 2019, the Center reinstituted the proceedings as of the same day and the new Response due date was set as July 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified to the Parties the commencement of panel appointment on July 22, 2019.

The Center appointed Kaya Köklü as the sole panelist in this matter on July 24, 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.

4. Factual Background

The Complainant is part of the Philip Morris International Inc. group, which is a group of companies active 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 appears to be located. According to the provided documents in the case file (Annex 6 to the Complaint), the Complainant is, inter alia, the registered owner of the International Trademark Registration No. 1218246 (registered on July 10, 2014) covering trademark protection in many countries (including Turkey), inter alia, for products covered in classes 9, 11 and 34.

The Complainant also owns and operates various domain names which incorporate the IQOS trademark, such as <iqos.com>.

The Respondent is an individual from Turkey.

The disputed domain name was registered on April 26, 2019.

The screenshots, as provided by the Complainant, show that the disputed domain name resolved to a website in the Turkish language, which was used for offering various kinds of repair and maintenance services with regard to IQOS smoke-free products (Annex 8 to the Complaint). On the website at the disputed domain name, the Respondent used the IQOS trademark as well as product images of the Complainant without publishing any visible disclaimer describing the relationship between the Parties.

At the time of the decision, the disputed domain name does no longer resolve to an active website.

5. Parties’ Contentions

A. Complainant

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 and its product images without authorization and any disclosure of the missing relationship between the Complainant and the Respondent.

B. Respondent

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

He merely indicated in his informal email communication to the Center on June 6, 2019, that he might be willing to transfer the disputed domain name to the Complaint in return to a reasonable offer.

6. Discussion and Findings

6.1. Language of the Proceeding

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 English. Although the language of the registration agreement is Turkish, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceedings in Turkish and request a Turkish translation of the Complaint 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.

The Panel particularly notes that the Respondent was given the opportunity to respond in Turkish and that this opportunity remained unused by the Respondent. Consequently, the Panel is convinced that the Respondent will not be prejudiced by a Decision being rendered in English.

6.2. Substantive Issues

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 4.3 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.

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 appears to be located.

The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered IQOS trademark, as it fully incorporates 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 addition of other terms would generally not prevent a finding of confusing similarity. The mere addition of the descriptive Turkish term “merkezi” (in the English language “center of”) does not, in view of the Panel, serve to avoid a finding of confusing similarity between the disputed domain name and the Complainant’s IQOS trademark.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

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 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 in absence of a formal Response 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 repair service 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 (which may apply mutatis mutandis for offering repair services) 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 authorised repair and service agency for the Complainant’s products. In view of the Panel, this takes the Respondent out of the Oki Data safe harbour for purposes of the second element.

In addition, the Panel notes that also the nature of the disputed domain name carries a risk of implied affiliation or association, as stated in section 2.5.1 of the WIPO Overview 3.0.

As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In the Panel’s view, the Respondent has registered and is using the disputed domain name in bad faith.

The Panel is convinced that the Respondent must have had the Complainant’s 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 use of product images of the Complainant and the Complainant’s IQOS trademark as well as the nature of the disputed domain name 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.

The fact that the disputed domain name does currently not resolve to an active website does not change the Panel’s findings in this respect.

The Panel is convinced that this is a typical cybersquatting case, which the UDRP was designed to combat.

The Panel therefore concludes that the disputed domain name was registered and is being 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.

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 <iqosmerkezi.com> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: August 1, 2019