The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Halil Cakir of Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with Nics Telekomünikasyon Ticaret Ltd. Sti. (the "Registrar"). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 23, 2018. On July 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 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 July 26, 2018 stating that Turkish is the language of the registration agreement of the disputed domain name, on July 30, 2018, the Center sent a request in English and Turkish that the Parties submit their comments on the language of the proceeding. On August 1, 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 August 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 27, 2018.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on September 3, 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 is Philip Morris Products S.A., a Swiss company that is part of a group of companies affiliated with Philip Morris International Inc. ("PMI"). PMI is a leading international tobacco company: it develops and sells tobacco products such as so called "Reduced Risk Products" ("RRPs"), in approximately 180 countries.
One of these RRPs developed and sold by PMI is branded "IQOS", which PMI sells in 38 markets around the world, through PMI's official stores and websites and selected authorized distributors and retailers.
The Complainant owns many IQOS trademarks worldwide among including but not limited in Turkey which:
- International Registration IQOS (word) No. 1218246 registered on July 10, 2014 designating, among others, Turkey;
- International Registration logo (device) No. 1214416 June 11, 2014 designating, among others, Turkey;
- International Registration logo(device) No. 1329691 registered on August 10, 2016 designating, among others, Turkey.
The Complainant also owns and operates various domain names which incorporate the IQOS trademark, such as . The Complainant also registered the domain name in Turkey on October 31, 2017.
The disputed domain name was registered by the Respondent on June 28, 2018.
The Panel visited the disputed domain name on September 6, 2018 and determined that the disputed domain name resolves to a website in the Turkish language, which was used for offering various kinds of IQOS smoke free products. On this website, the Respondent prominently used the IQOS figurative trademark as well as promotional pictures taken from the Complainant's 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 websites linked to the disputed domain name without any disclosure of the missing relationship between the Complainant and the Respondent. 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.
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 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 WIPO Overview 3.0. 6.1. Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The registration agreement is in Turkish. The Complaint was filed in English.
On August 1, 2018, the Complainant submitted a reply to the Center's request regarding the language of proceeding that although the registration agreement is in Turkish, the Complainant requests that the language of proceeding be English as the Complainant, being a Swiss entity, has no knowledge of Turkish language. The Complainant did not have specific information on the language of the registration agreement and therefore, in the light of above considerations regarding the Respondent's supposed knowledge of English, decided to file the Complaint in English being a common language in global business and obviously also a language, in which the Respondent is addressing customers.
The Complainant has invoked numerous UDRP panel decisions where the panels have accepted English as the language of the proceedings despite the registration agreement having a differing language where it could be presumed from the circumstances of the case that the respondent has knowledge of the English language, while the complainant is not capable of providing the complaint in the language of the registration agreement (e.g. Turkish) without unreasonable effort and costs.
In addition to Complainant's submission regarding the language of the proceedings, it appears that the Respondent did not submit a Response nor did he formally object to English as the language of the proceeding.
Taking into account, all the above elements as well as the Panel's authority to determine the language of the proceedings differing from the language of the registration agreement in accordance with the paragraph 11(a) of the Rule, the Panel considers that the appropriate language of the proceeding shall be English. 6.2. Substantive Issues 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 is located.
It is well accepted that the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name.
This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
In this case, the disputed domain name incorporates the Complainant's registered mark IQOS with the addition of the generic, descriptive term "point" in front of the mark IQOS and separated by a hyphen.
The disputed domain name is identical to the Complainant's IQOS mark as in the circumstances of the present case the generic Top-Level Domain ("gTLD") ".site" extension may be ignored for the purposes of comparison.
Several previous UDRP panels have ruled that the mere addition of a descriptive element does not sufficiently differentiate a disputed domain name from a complainant's registered trademark. (see, e.g., Philip Morris Products S.A. v. Registration Private Domains By Proxy, LLC / Cagri Demirbas,WIPO Case No. D2018-0318; Philip Morris Products S.A. v. Whois Agent / Domain Protection Services, Inc./ IQOS, Benjo Franklin,WIPO Case No. D2018-0918; Philip Morris Products S.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Tommy Chi,WIPO Case No. D2018-0843, Philip Morris Products S.A. v. Registration Private, Domains By Proxy, LLC / Tolga Kacmaz,WIPO Case No. D2018-1271; Philip Morris Products S.A. v. Kazim Akgul,WIPO Case No. D2017-2521.
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 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.
Anticipating a potential argument based on the rights of resellers of a complainant's products, the Complainant has argued strongly that the Respondent has not acquired any such rights to use the IQOS mark based on the rights of resellers of a complainant's products citing Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 ("Oki Data"). As noted in section 2.8.1 of the WIPO Overview 3.0:
"Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant's trademark to undertake sales or repairs related to the complainant's goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the 'Oki Data test', the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant's relationship with the trademark holder; and
(iv) the respondent must not try to 'corner the market' in domain names that reflect the trademark."
The Complainant has convincingly argued in the Complaint that the Respondent does not meet the "Oki Data test" because the disputed domain name is identical to the Complainant's IQOS mark and contains no distinguishing elements; there is no evidence that the Respondent is selling only the Complainant's trademarked goods on the website to which the disputed domain name resolves; and the Respondent's website does not disclose the relationship between the Complainant as owner of the IQOS mark and the Respondent.
The Respondent has failed to file a Response and thus to rebut the prima facie case made out in the Complaint.
In the circumstances the Respondent has not produced any evidence of its rights or legitimate interests in the disputed domain name and the Complainant is entitled to succeed on the second element of the test in Paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Respondent's use of the disputed domain name to purport to sell the Complainant's products applying various Complainant's trademarks shows that at the time of the registration of the disputed domain name the Respondent clearly knew and targeted the Complainant's prior registered trademarks, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113).
UDRP paragraph 4(b) provides that bad faith may be evidenced by a number of circumstances including, but not limited to, the use of the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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. The Complainant submitted printouts showing that the Respondent's website reproduced the Complainant's registered trademarks and logo which suggests that the website under the disputed domain name belongs to the Complainant or is an official affiliated dealer endorsed by the Complainant.
The Respondent's website does not provide any information on the true identity of the Respondent but rather holds itself out as an official retailer for IQOS branded products in Turkey, thereby creating the impression that the products offered on the website are provided by the Complainant or at least by an official dealer.
In the circumstances the Panel holds that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. See Goyard St-Honoré v. Huachao Chen,WIPO Case No. D2014-1165.
The Panel finds that the above constitutes registration and use in bad faith pursuant to the third requirement of paragraph 4(a) 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 be transferred to the Complainant.
Gökhan Gökçe
Sole Panelist
Date: September 9, 2018
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