The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Osman Yol, Osman of Istanbul, Turkey. 2. The Domain Names and Registrar
The disputed domain names and is registered with GoD, LLC GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2018. On November 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 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.
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 of the Complaint, and the proceedings commenced on December 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 26, 2018.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on January 16, 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 has submitted evidence that it is the owner of a large number of trademark registrations in numerous countries, including the following:
IQOS (word) with international registration number 1218246 and registration date July 10, 2014.
IQOS (device) with international registration number 1329691 and registration date August 10, 2016.
HEETS (word/device) with international registration number 1328679 and registration date July 20, 2016.
HEETS (word) with international registration number 1326410 and registration date July 19, 2016.
IQOS THIS CHANGES EVERYTHING (word) with international registration number 1343294 and registration date December 12, 2016.
Humming bird (device) with international registration number 1331054 and registration date October 11 2016.
The disputed domain name was registered by the Respondent on April 20, 2018 and was registered by the Respondent on September 25, 2018. 5. Parties’ Contentions A. Complainant
The Complainant, Philip Morris Products S.A., is part of the group of companies affiliated to Philip Morris International Inc., which is the leading international tobacco company, with products sold in approximately 180 countries and a brand portfolio containing brands such as MARLBORO.
Philip Morris International Inc. has developed the product IQOS, which is a controlled heating device into which specially designed tobacco products under the brand names “Heets” and “HeatSticks” are inserted and heated to generate a nicotine-containing aerosol. The IQOS products were first launched by Philip Morris International Inc. in Nagoya, Japan in 2014. Today the IQOS products are available in key cities in around 43 markets across the world. As a result of a USD 4.5 billion investment and extensive international sales and marketing efforts, the IQOS products have achieved considerable international success and reputation, and already, almost 6 million legal-aged smokers have switched to the smoke-free products worldwide.
The Respondent is a Turkish individual. The Respondent is not known or in any way related to the Complainant or any affiliate and is not authorized to use the IQOS trademark.
The disputed domain name is forwarded to the domain name which resolves to an online shop where not only the Complainant’s goods are offered for sale, but also goods, produced by competitors to the Complainant. Although the website is provided in Turkish, prices are displayed in EUR and USD, which is an indication that the Respondent’s website is directed to an international public.
The Respondent’s website is passing itself off as an official dealer by displaying the Complainant’s trademarks, logos and official product images. The Respondent’s online shop does not provide any details regarding the provider of the website, not does it acknowledge the Complainant as the trademark owner. Consumers will be under the impression that the online shop belong to the Complainant or one of its official distributors.
The term IQOS is a purely imaginative term with no inherent meaning. The disputed domain names reproduce the IQOS trademark in its entirety with the addition of the descriptive term “sepeti” which is Turkish for “cart”. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register domain names that incorporate the IQOS trademark.
The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. On the contrary, the Respondent’s behavior shows a clear intent to obtain a commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademarks owned by the Complainant. Firstly, the Respondent is not an authorized distributor or reseller of the IQOS products. Secondly, the Respondent’s website does not meet the requirements set out by numerous panel decisions for a bona fide offering of goods.
The illegitimacy of the Respondent’s use of the disputed domain names is further demonstrated by the fact that the Complainant does not currently offer its IQOS branded products for sale in Turkey. The Respondent’s online shop creates the false impression that the Complainant has launched these products in Turkey.
It is evident from the Respondent’s use of the disputed domain names that the Respondent knew of the Complainant’s trademark IQOS when registering the disputed domain names. The Respondent started offering the IQOS and HEETS branded products immediately after registering the disputed domain names.
It is also evident from the Respondent’s use of the disputed domain names that the Respondent registered and used the disputed domain names 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.
By reproducing the Complainant’s trademark in the disputed domain names and prominently displaying a variation of the Complainant’s registered logos at the top of the website as well as presenting the Complainant’s registered logos and slogans on the landing page and using the Complainant’s official product images and marketing materials, the Respondent’s website clearly suggests that the website under the disputed domain names belongs to the Complainant or is an official affiliated dealer endorsed by the Complainant.
The fact that the Respondent’s website does not provide any information regarding the identity of the website provider clearly shows that the Respondent wishes to intentionally create the impression that the products offered on the website are provided by the Complainant or at least by an official dealer. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondents have no rights or legitimate interests in the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered trademark IQOS. The disputed domain names and incorporate the Complainant’s trademark IQOS in its entirety with the addition of the term “sepeti”, which is Turkish for “cart”. The addition of a dictionary term, such as “cart”, does not prevent a finding of confusing similarity under the first element. It is standard practice to disregard the generic Top-Level Domain (“gTLD”) under the confusingly similar test.
Having the above in mind, the Panel finds that the disputed domain names and are confusingly similar to the Complainant’s IQOS trademark and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show, at least prima facie, that the Respondent has no rights or legitimate interests with respect to the disputed domain names. The Respondent may establish a right or legitimate interest in the disputed domain names by demonstrating any of the following non-exhaustive circumstances listed in paragraph 4(c) of the Policy:
(i) that it has made preparations to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services prior to any notice of the dispute; or
(ii) that it is commonly known by the disputed domain names, even if it has not acquired any trademark rights; or
(iii) that it is making a legitimate, noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Complainant’s trademark registration for IQOS predates the Respondent’s registration of the disputed domain names and . The Complainant has not licensed, approved or in any way consented to the Respondent’s registration and use of the trademark in the disputed domain names.
From the evidence in the case, it is clear that the Respondent’s commercial website, to which the disputed domain names resolve, contains direct references to the Complainant’s products and IQOS trademark. Furthermore, the evidence indicates that the Respondent has copied and reproduced several of the Complainant’s trademarks, photographs and other official marketing material in an attempt to either pass itself off as the Complainant or as an official affiliated dealer endorsed by the Complainant. On the website, to which the disputed domain names resolve, the Respondent is, according to the submitted evidence, offering not only the Complainant’s products for sale but also competing accessories of other commercial origin.
Given the above, the Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Although given the opportunity, the Respondent has not rebutted the Complainant’s prima facie case. The Respondent has not submitted any evidence in this case to demonstrate that the Respondent is the owner of any trademark rights similar to the disputed domain names or that the Respondent is or has been commonly known by the disputed domain names.
By not submitting a response, the Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain names. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the disputed domain names were registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain names; or
(ii) circumstances indicating that the disputed domain names were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided there is a pattern of such conduct; or
(iii) circumstances indicating that the disputed domain names were registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the disputed domain names have intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.
The evidence in the case demonstrates that the Respondent’s website displays the Complainant’s trademarks IQOS, HEETS, THIS CHANGES EVERYTHING and the hummingbird logo. In addition, the Respondent’s website displays photographs and other official marketing material belonging to the Complainant. Given the above, the Panel finds, in the absence of contrary evidence, that the Respondent knew or should have known of the Complainant’s trademark at the time the Respondent registered the disputed domain names.
By using the disputed domain names in combination with the Complainant’s trademarks, photographs and official marketing material, there is an increased risk of confusion as Internet users may more easily be confused or misled into believing that the disputed domain names and website belong to or are in some way associated with the Complainant.
Furthermore, the Complainant has submitted evidence demonstrating that the Respondent is offering not only the Complainant’s products but also competing accessories of other commercial origin for sale via the website to which the disputed domain names and resolve.
Thus, the evidence in the case before the Panel indicates that the disputed domain names and have intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark IQOS as to the source, sponsorship, affiliation, or endorsement of the websites or of a product or service on the website as described under paragraph 4(b)(iv) of the Policy.
There is no evidence in the case that refutes the Complainant’s submissions.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain names and have been registered and are 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 names and be transferred to the Complainant.
Johan Sjöbeck
Sole Panelist
Date: January 30, 2019
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