WIPO Domain Name Decision D2018-2610 for iqosci.com
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Philip Morris Products S.A. v. Registration Private, Domains By Proxy, LLC / süha Vatansever Case No. D2018-2610 1. The Parties
Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / süha Vatansever of Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2018. On November 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 15, 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 Complainant on November 16, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 19, 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 Respondent of the Complaint, and the proceedings commenced on November 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2018.
The Center appointed Marina Perraki as the sole panelist in this matter on December 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
According to the Complaint, Complainant is part of the Philip Morris International Inc. group of companies (“PMI group”), active in the tobacco industry, with products sold in approximately 180 countries. PMI group operates 46 production facilities in 32 countries. PMI group has been transforming its business from combustible cigarettes to other smoking products, one of which, developed and sold by PMI group, is a tobacco heating system branded as IQOS. The IQOS system consists of three components, the IQOS holder, the heated tobacco units sold under the names “Heets” and “HeatSticks”, which are inserted into the IQOS holder, and an IQOS Pocket Charger, used to charge the IQOS Holder (together “the IQOS Products”). The IQOS Products were first launched by PMI group in 2014. Today the IQOS Products are available in approximately 43 markets across the world. Per Complaint, PMI group has invested USD 4.5 billion to market the IQOS Products and as a result the IQOS brand has gained considerable international reputation, with almost 6 million users. Per Complaint, the IQOS Products have been almost exclusively distributed through PMI group’s official IQOS stores and websites and selected authorized distributors and retailers, while they are not sold in Turkey.
Complainant is the owner of numerous IQOS trademark registrations. These include:
- International registration No. 1218246 (word mark), registered on July 10, 2014, designating, inter alia, the European Union and Turkey, for goods in international classes 9, 11 and 34; and
- International registration No. 1329691 (word and device mark), registered on August 10, 2016, designating, inter alia, the European Union and Turkey, for goods in international classes 9, 11 and 34.
The Domain Name was registered on December 30, 2017, and resolves to a website (the “Website”), which is an online shop, in Turkish language, allegedly offering for sale products bearing Complainant’s trademarks, such as IQOS and HEETS. The Website prominently displays such Complainant’s trademarks, which are also protected in Turkey, and a number of Complainant’s official product images, videos and marketing material, including material showing Complainant’s trademarked hummingbird design, without any authorization from Complainant. The Website includes a copyright notice claiming copyright in the Website content. Respondent is unknown to Complainant and is not an authorized distributor or reseller of the IQOS Products. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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
Complainant has demonstrated rights through registration and use on the IQOS mark.
The Panel finds that the Domain Name is confusingly similar with the IQOS trademark of Complainant.
The Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525).
The letters “ci”, which are also the first two letters of the word “cigarette”, added in the Domain Name, do not avoid a finding of confusing similarity as