The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is phillip morris, phillip morris of Xanthi, Greece. 2. The Domain Name and Registrar
The disputed domain name is registered with Realtime Register B.V. (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 disputed domain name. On November 15, 2018, 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 date 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 the same date.
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 the Respondent of the Complaint, and the proceedings commenced on November 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2018.
The Center appointed Alejandro Touriño as the sole panelist in this matter on December 20, 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 part of the group of companies affiliated to Philip Morris International Inc., which is one of the leading international tobacco companies, operating in more than 180 markets. The Complainant is the owner of a large portfolio of trademark registrations around the world for combusted cigarettes and for smoke-free products. In particular, the Complainant is the owner of the following trademarks IQOS for smoke-free products:
- International Registration IQOS No. 1218246 registered on July 10, 2014 designating, among others, the territory of Turkey;
- International Registration IQOS No. 1329691 registered on August 10, 2016 designating, among others, the territory of Turkey.
According to the current record, the disputed domain name was registered on May 19, 2018 and is currently inactive. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
The Complainant is a subsidiary of Philip Morris International, Inc., one of the leading international tobacco companies, owner of a large portfolio of registered trademarks, including IQOS in numerous jurisdictions, including, but not limited to, Turkey since 2014. The disputed domain name reproduces the IQOS trademark in its entirety along with the geographical term “euro” and the generic Top-Level Domain (“gTLD”) “.com”, resolving to an official website which provides Iqos branded goods in Europe. Thus, the disputed domain name is confusingly similar to the trademark registrations IQOS of the Complainant.
The Respondent does not have a legitimate interest in the disputed domain name. 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 the Complainant. 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 known or in any way related to the Complainant and is not authorized to use the IQOS trademarks. The Respondent is not an authorized distributor or reseller of the Iqos products. The Respondent is not providing any accurate information on his identity in the WhoIs information.
The Respondent registered and used the disputed domain name in bad faith. The disputed domain name resolves to a Turkish language online shop allegedly offering, among others, the Complainant’s Iqos branded products as well as offering competing accessories of other commercial origin. The website hosted at the disputed domain name is clearly suggesting to be an official dealer of the Complainant, since it is prominently using the IQOS trademark at the top left of the website, being a location where Internet users usually expect to find the name of the online shop and/or the name of the provider of the website. The Respondent is further using a high number of the Complainant’s official product images and marketing material with no authorization from the Complainant. However, the Respondent is not only promoting the Complainant’s products but also competing goods of other commercial origin. It is evident from the Respondent’s use of the disputed domain name that the Respondent knew of the Complainant’s IQOS trademarks when registering the disputed domain name. The Respondent has registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users 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. Furthermore, the Respondent is not providing any information on his identity in the WhoIs information. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “a Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a 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
To satisfy paragraph 4(a)(i) of the Policy, the Complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
In the case at hand, the Complainant has evidenced to own trademarks registrations for IQOS since 2014. The disputed domain name wholly includes the Complainant’s trademark IQOS, and the addition of the geographical term “euro” and the gTLD “.com” does not avoid a finding of confusing similarity. The Complainant’s trademark is recognizable within the disputed domain name notwithstanding the insertion of both elements, that do not serve to prevent the disputed domain name from being confusingly similar to the Complainant’s trademark, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
As explained at section 1.7 of the WIPO Overview 3.0: “While each case is judged on its own merits, in cases 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 for purposes of UDRP standing”. Section 1.8 of the Overview also comments that; “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to IQOS trademark in which the Complainant has rights.
The first part of the paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. In particular, the Complainant has never given any permission and has never authorized the Respondent to use any of the Complainant’s trademarks. The Complainant does not have any relationship or association with the Respondent. The Respondent is not known by the disputed domain name, is not using it to offer bona fide goods and services and is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent is not an authorized distributor or reseller of the Iqos products. The Panel also finds that the disputed domain name resolves to an online shop allegedly offering, among others, the Complainant’s Iqos branded products as well as competing accessories of other commercial origin, prominently using the IQOS trademark, thus clearly suggesting to be an official dealer of the Complainant. Said behavior may not be found as legitimate interest according to the Policy and prior decisions of the Center.
In view of the foregoing, the Panel accepts and adopts the Complainant’s submission that it is not possible to conceive circumstances in which the Respondent could legitimately use the disputed domain name. The Complainant has established a prima facie case which the Respondent has not sought to rebut and accordingly the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, see WIPO Overview 3.0, section 2.1. Furthermore, the Respondent has not provided any explanation for the use of the Complainant’s trademark in the disputed domain name and the Panel cannot find anything in its favor, therefore the Panel concludes that the Respondent has registered and used the disputed domain name trying to capitalize on the Complainant’s goodwill in the mark in order to mislead Internet users.
Under the present circumstances, this does not constitute use of the disputed domain name in connection with a bona fide offering of goods or services within the meaning of the Policy.
The Panel thus finds that the Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(ii) of the Policy the Complainant must establish that the Respondent has registered and used the disputed domain name in bad faith.
The Panel finds that the Complainant is a subsidiary of a leading international tobacco company, owner of a large portfolio of registered trademarks, including the trademark IQOS since 2014, two years before the creation of the disputed domain name by the Respondent. It has further been confirmed in past panel decisions that the Complainant has a widespread reputation in the IQOS trademarks with regard to its products and services (see Philip Morris Products S.A. v. Yang Jiang Nan,WIPO Case No. D2018-1869,– ). In addition to this, the disputed domain name resolves to a Turkish language online shop offering the Complainant’s Iqos branded products as well as competing products. Consequently, it is likely that the Respondent knew of the existence of the Complainant’s trademark when it registered the disputed domain name, as it includes the Complainant’s trademark in full and offers products both of the Complainant and its competitors.
On top of that, the Respondent has refused to participate in the present proceeding in order to put forward relevant arguments in its support.
Furthermore, the Respondent is using the IQOS trademark at the top left of the website, being a location where Internet users usually expect to find the name of the online shop and/or the name of the provider of the website, clearly suggesting to be an official dealer of the Complainant. The Respondent is further using a high number of the Complainant’s official product images and marketing material with no authorization from the Complainant. The Respondent has registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users 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.
It is the Panel’s view that the Respondent’s registration and use of the disputed domain name constitutes a disruption of the Complainant’s business. The Panel cannot find any justification for the registration and use of the disputed domain name in such circumstances except to find that the Respondent registered and used the disputed domain name for commercial gain taking advantage of the Complainant’s well-known trademark.
For the above reasons the Panel concludes that the disputed domain name was registered and is being used in bad faith, within the meaning of the paragraph 4(a)(iii) of the Policy.
Accordingly, the Panel concludes that the third element of the Policy has been met. 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.
Alejandro Touriño
Sole Panelist
Date: December 31, 2018
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