The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by DM Kisch Inc., South Africa.
The Respondent is Domain Administrator, Registrant of (apiname com) of Izmit, Turkey / Anl Girgin, Teknoloji Sarayi of Denizli, Turkey. 2. The Domain Names and Registrar
The disputed domain names and are registered with Atak Domain Hosting Internet ve Bilgi Teknolojileri Limited Sirketi d/b/a Atak Teknoloji (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2019. On February 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 8, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 8, 2019, 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 amended Complaint on March 8, 2019.
The Center verified that the Complaint together with the amended 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 March 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 2, 2019.
The Center appointed Selma Ünlü as the sole panelist in this matter on April 12, 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 is part of the group of companies affiliated to Philip Morris International Inc., an international tobacco company who sells products in approximately 180 countries.
The Complainant has developed a controlled heating device branded IQOS into which specially designed tobacco products under the brand names HEETS and “HeatSticks” are inserted and heated to generate nicotine-containing aeroseol. Presently, the Complainant’s 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, around 9.6 million relevant consumers are using the IQOS products worldwide.
The Complainant owns the registered IQOS and HEETS trademarks around the world. The Complainant is the owner of the registered International Trademark No. 1218246 for IQOS (word), registered on July 10, 2014; the International trademark No. 1338099 for IQOS (device), registered on November 22, 2016; the International Trademark No. 1329691 for IQOS (device), registered on August 10, 2016; International Trademark No.1328679 for HEETS (word/device), registered since July 20, 2016 and International Trademark No.1326410 for HEETS (word), registered on July 19, 2016.
The Respondent has used a privacy registration service provider to prevent identification on public WhoIs servers. The identity of the registrant of the disputed domain names was revealed by the Registrar.
The Respondent has not submitted any Response to the contentions raised in the Complaint.
The disputed domain names and were registered on October 30, 2018, and December 18, 2018, respectively.
The disputed domain names and did not resolve to any active websites when visited by the Panel. According to the evidence submitted, the disputed domain names previously resolved to websites suggesting to be the official dealer’s of Complainant’s products in Turkey. 5. Parties’ Contentions A. Complainant
Pursuant to paragraph 4(i) of the Policy, the Complainant requests the Panel to make a decision for the disputed domain names to be transferred to the Complainant. The Complainant submits the grounds for these proceedings listed in paragraph 4(a) of the Policy.
In summary, the Complainant contends the following: Confusingly Similar
The Complainant states that it owns registered IQOS trademarks not only in Turkey but also in several other jurisdictions.
The Complaint alleges that the disputed domain names and are confusingly similar to its IQOS trademark registrations, since the disputed domain names contain the Complainant’s IQOS trademarks enitrely in addition to the terms “atis”, “maganiz”, and “platform” which does not dispel the overall confusingly similarity to its registered IQOS trademarks. Rights or Legitimate Interests
The Complainant alleges that the Respondent has never been licensed or permitted to use any of the Complainant’s trademarks or to register domain names incorporating the Complainant’s IQOS trademark.
It is also stated by the Complainant that the disputed domain names are not being used to provide bona fide offering of good and/or services. On the contrary, the Respondent clearly intents to unfairly gain commercial profit from the disputed domain names. The Respondent is not an authorized distributor or reseller of the Complainant’s products. The websites provided under the disputed domain names do not meet the requirements for a bona fide offering of goods and/or services under the Policy.
Since the disputed domain names are confusingly similar to the Complainant’s registered trademarks, they will mislead the consumers and tarnish the trademarks owned by the Complainant. This confusion is created and supported by the Respondent’s incorporation of the trademark of the Complainant into the disputed domain names and prominent use thereof at the top left of the websites. The websites of the Respondent also contain the official product visuals of the Complainant which are subject to copyright protection, yet the copyright is claimed by the Respondent unlawfully.
The website also includes the designation “IQOS Türkiye Satış” (meaning: “IQOS Turkey Sales”) which also contains the registered trademark of the Complainant without authorization. This designation is alleged to increase the false impression created by the disputed domain names.
The Complainant also alleges that the illegitimacy of the Respondent’s use of the disputed domain names is clear as the Complainant does not currently offer for sale its IQOS and HEETS branded products in Turkey. Accordingly, online shops at the disputed domain names will likely create the false impression that the Complainant has officially introduced its IQOS products to the Turkish market. Registered and Used in Bad Faith
The Complainant asserts that the disputed domain names have been registered and used in bad faith.
The Respondent started using the disputed domain names for the alleged offer of the Complainant’s IQOS and HEETS branded products immediately after registering them. IQOS is a purely imaginative term that has no inherent meaning. The Complainant claims that the Respondent must have been aware of the Complainant and its trademarks when registering the disputed domain names, to attract the customers of the Complainant.
The Complainant alleges that the Respondent has been using the disputed domain names in bad faith to gain commercial profit by creating confusing similarity with the Complainant’s trademarks. The Complaint also alleges that the display of the Complainant’s registered IQOS trademark at the top left of the websites, as well as the use of the Complainant’s official copyright protected product images, creates the impression that the websites belong to the Complainant or to an official dealer of the Complainant. 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 and on the basis of the Complaint where no Response has been submitted.
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 names are identical or confusingly similar to the trademark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant has the burden of proving that all these requirements are fulfilled. A. Identical or Confusingly Similar
The Policy requires the Complainant to demonstrate that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of several international registrations of the IQOS trademark.
The Panel finds that the addition of the terms “atis” which can be read by the Internet users as “satis” (meaning: “sale”) by completing the missing letter “s” with the last letter of the phrase “iqos”; and “maganiz” which can be read as “magazaniz” (meaning: “your store”), does not prevent the confusingly similarity between the disputed domain names and the Complainant’s IQOS trademarks. In the same manner, the Panel finds that “platform” does not prevent a finding of confusingly similarity.
In similar UDRP cases (see, e.g., Sanofi-Aventis v. Gideon Kimbrell,WIPO Case No. D2010-1559; Turkcell Iletisim Hizmetleri A.S. v. Vural Kavak,WIPO Case No. D2010-0010; Greenbrier IA, Inc. v. Moniker Privacy Services/Jim Lyons,WIPO Case No. D2010-0017; and Zodiac Marine & Pool, Avon Inflatables Ltd and Zodiac of North America Inc. v. Mr. Tim Green,WIPO Case No. D2010-0024), the respective UDRP panels found that adding descriptive words does not remove the likelihood of confusion between a trademark and a domain name incorporating said trademark. In this regard, see also, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
The Panel recognizes the Complainant’s trademark rights and concludes that the disputed domain names are confusingly similar with the Complainant’s IQOS trademarks. Therefore, the Panel concludes that the requirements of paragraph 4(a)(i) of the Policy are fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iïi) you [the Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In light of the evidence submitted in this case, the Panel finds that the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names for the purposes of the Policy.
The Complainant has not granted the Respondent any right or license to use the IQOS trademarks and there is no evidence that the Respondent is commonly known by the disputed domain names.
Consequently, in the absence of any response, the Panel accepts the Complainant’s allegations as true that the Respondent has no authorization to use the IQOS trademark in the disputed domain names.
Moreover, the Panel finds that the composition of the disputed domain names are such, that they effectively impersonate or suggest sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.
Hence, as the Complainant has made out its prima facie case, and as the Respondent has not demonstrated any rights or legitimate interests as illustrated under paragraph 4(c) of the Policy, nor has the Panel found any other basis for finding any rights or legitimate interests of the Respondent in the disputed domain names, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Finally, the Complainant must show that the disputed domain names have been registered and are being used in bad faith under paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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.”
By consideration of the foregoing, the Panel is of the opinion that due to the long-standing rights of the Complainant in the trademarks IQOS, the targeted use of the website at the disputed domain names, the Respondent was aware of the Complainant and its IQOS trademarks at the time of registration of the disputed domain names. See e.g., Ebay Inc. v.Wangming,WIPO Case No. D2006-1107; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087. Referring to Parfums Christian Dior v. Javier Garcia Quintas and C, WIPO Case No. D2000-0226, the Panel believes that the awareness of the Complainant’s trademarks at the time of the registration of the disputed domain names is to be considered an inference of bad faith registration, due to the nature of the disputed domain names.
This intention has also been shown by the use of the Complainant’s trademarks at the top left side of the websites and the alleged offering for sale of products not yet available to the Turkish market.
The Panel is of the opinion that Internet users may fall into the false impression that the disputed domain names are the Complainant’s official domain name or related, associated or sponsored by the Complainant.
Therefore, in light of the above-mentioned circumstances of the present case, the Panel finds that the disputed domain names have been registered and are being used in bad faith and that the Complainant has established the third element under paragraph 4(a)(iii) 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 names, and , be transferred to the Complainant.
Selma Ünlü
Sole Panelist
Date: May 14, 2019
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