The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America (“United States”) / Mustafa Anil Tunckol of Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name 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 13, 2018. On February 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 February 15, 2018 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 amendment to the Complaint on February 16, 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” o “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 February 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2018.
The Center appointed Dilek Üstün Ekdial as the sole panelist in this matter on March 27, 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 Philip Morris Products S.A. is a company which is part of the group of companies affiliated to Philip Morris International Inc. (jointly referred to as “PMI”). PMI is the leading international tobacco company, with products sold in approximately 180 countries. PMI’s unequaled brand portfolio contains brands like MARLBORO, one of the most selling cigarette brands since 1972.
For its new innovative smoke-free products the Complainant owns a large portfolio of well-known trademarks.
Complainant is the registered owner of the IQOS trademarks in numerous jurisdictions, including, but not limited to Turkey. Among them, but by no means limited to, are the following trademark registrations:
- International Registration IQOS (word) No. 1218246 registered on July 10, 2014, designating several countries including Turkey,
- International Registration IQOS (device) No. 1329691 registered on August 10, 2016, designating several countries including 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.
The disputed domain name was registered on January 19, 2018 and resolves to an online shop allegedly offering the Complainant’s IQOS and HEETS branded products. The website is provided in Turkish language. 5. Parties’ Contentions A. Complainant
The Complainant contends the following:
- The disputed domain name is confusingly similar to the trademark registrations of the Complainant.
- The applicable Top-Level Domain (“TLD”) in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.
- The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. The disputed domain name reproduces the IQOS trademark in its entirety along with the descriptive abbreviation “ist”. The abbreviation “ist” merely indicates that the website operated under the disputed domain name is either operated from Istanbul or aiming on a public in Istanbul.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because:
- The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the disputed domain name incorporating its IQOS trademark.
- The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant.
- The Respondent is not an authorized reseller of the IQOS product.
- Neither the Complainant nor its affiliates offer for sale in Turkey a product under the IQOS trademark, and hence the offering on the online shop at the website resolving from the disputed domain name is further misleading, in that it suggests to consumers that they can legitimately purchase this product in Turkey.
The disputed domain name has been registered and is being used in bad faith because:
- The Respondent’s use of the disputed domain name is not fair, because it falsely suggests at least an affiliation with the Complainant by virtue of the disputed domain name reproducing the Complainant’s IQOS trademark in its entirety accompanied by the descriptive abbreviation “ist” that the website operated under the disputed domain name is either operated from Istanbul or aiming on a public in Istanbul.
- The disputed domain 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 “ist” (being an abbreviation for Istanbul) indicating it to be the official IQOS shop for Istanbul, but also uses the Complainant’s official marketing material and product images.
- 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 is using a 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
Paragraph 15(a) of the Rules requires the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainant owns trademark rights throughout the world for the IQOS mark.
The disputed domain name contains Complainant’s trademark IQOS with the adjunction of the geographical term “ist” (being an abbreviation for Istanbul). The addition of this geographical term does not avoid confusing similarity between the disputed domain name and the Complainant’s marks.
The extension “.com” may be disregarded when examining the identity or confusing similarity between Complainant’s IQOS trademark and the disputed domain name.
Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to the trademarks in which Complainant has rights, satisfying the condition of the Policy paragraph 4(a)(i). 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 a right or legitimate interest 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 Complainant suggests that the Respondent has used the disputed domain name in an attempt to trade off the goodwill associated with 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 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.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Panel is of the opinion that when the Respondent registered the disputed domain name it knew that IQOS was the trademark of the Complainant, and that the Respondent registered the disputed domain name in bad faith.
Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 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 be transferred to the Complainant.
Dilek Üstün Ekdial
Sole Panelist
Date: April 12, 2018
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