The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by DM Kisch Inc., South Africa.
The Respondent is Serhat Kocapinar, Inlife Bilisim of Istanbul, Turkey. 2. The Domain Names and Registrar
The disputed domain names and are registered with PDR Ltd. d/b/a PublicDomainR 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 1, 2019, 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 March 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2019.
The Center appointed Fabrizio Bedarida 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, Philip Morris Products S.A., a Swiss company established under the laws of Switzerland, is part of the group of companies affiliated to Philip Morris International Inc. (jointly referred to as “PMI”).
PMI is one of the leading international tobacco companies, with products sold in approximately 180 countries.
In the course of transforming its business from combustible cigarettes to Reduced Risk Products (or “RRPs”, which PMI defines as products that present, are likely to present, or have the potential to present less risk of harm to smokers who switch to those products instead of continuing to smoke), PMI has developed a number of products. One of these RRPs developed and sold by PMI is branded IQOS. IQOS 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 Complainant has proven to be the owner of the IQOS and HEETS marks.
The Complainant is inter alia the owner of:
International Registration IQOS (word) No. 1218246 registered on July 10, 2014.
International Registration IQOS (device) No. 1338099 registered on November 22, 2016.
International Registration IQOS (device) No. 1329691 registered on August 10, 2016.
The disputed domain names and were registered by the Respondent on October 9, 2018 and November 3, 2018 respectively.
The Complainant’s trademark registrations predate the registration of the disputed domain names.
The disputed domain names are linked to two online shops allegedly offering the Complainant’s Iqos and Heets branded products. On these websites a great number of the Complainant’s copyright-protected official product images and marketing materials are displayed.
The content of the Respondent’s websites is in Turkish, and all prices are indicated in Turkish lira (TL).
Both websites contain the designation “İQOS TÜRKİYE” at the top of the respective websites, and messages such as “IQOS Heets Sigara Satış Sitesi İstanbul” (i.e., IQOS Heets Cigarette Sale Site Istanbul) and “İqos perpa mağazası. İqos orjinal sipariş sitesi” (i.e., İqos perpa store. İqos original order site).
However, the Complainant’s Iqos and Heets branded products are not currently sold in Turkey. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are confusingly similar to the IQOS trademarks, that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names have been registered and are being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Complainant to obtain the transfer of the disputed domain names, paragraphs 4(a)(i)-(iii) of the Policy require that the Complainant must demonstrate to the Panel that:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 are being used in bad faith. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established rights in the IQOS trademark.
The disputed domain name reproduces the IQOS trademark in its entirety combined with the term “perpa” ( i.e., the name of a trade center in the district of Şişli, Istanbul) and the “.com” generic Top-Level Domain (“gTLD”) indicator.
The disputed domain name reproduces the IQOS trademark in its entirety combined with the descriptive terms “elektronik” (electronic) and “sigara” (cigarette) and the “.com” indicator.
The gTLD suffix is generally disregarded under the test for confusing similarity for the purposes of the Policy, and the addition of descriptive and/ or geographical terms to a trademark in a domain name is normally considered insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. In this sense WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8: “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”.
The Panel finds that the Complainant’s IQOS trademark is clearly recognizable in the disputed domain names, and that the addition of the terms “perpa” and “elektronik” and “sigara” respectively are insufficient to avoid a finding of confusing similarity.
Therefore, the Panel finds that the disputed domain names are confusingly similar to the IQOS trademark in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to be commonly known by the name “Iqos” or by any similar name. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain names, or any use in connection with a bona fide offering of goods or services. The Respondent’s behavior shows a clear intent to obtain unfair commercial gain, with a view to misleadingly diverting consumers or to tarnishing the trademarks owned by the Complainant. The Respondent offers for sale what appears to be the Complainant’s products, without disclosing the relationship between the Complainant and the Respondent.
Moreover, the illegitimacy of the Respondent’s use of the disputed domain name is further shown by the fact that the Complainant does not currently offer its Iqos and/or Heets branded products for sale in Turkey, while the on-line shops hosted at the disputed domain names create the false impression that the Complainant has officially introduced the Iqos and/or Heets products into the Turkish market.
Finally, the Respondent has not replied to the Complainant’s contentions, alleging any rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain names were registered in bad faith and have been used in bad faith.
Indeed, the Complainant gives several bases for its contention that the disputed domain names were registered and have been used in bad faith.
Particularly relevant are the Complainant’s unchallenged assertions (which the Panel accepts and partially reports below) that:
The Respondent could not be unaware of the existence of the Complainant’s trademarks when registering the disputed domain names;
The term “Iqos” is purely imaginative, and is not commonly used to refer to tobacco products. Both the disputed domain names contain the Complainant’s IQOS trademark, and in addition one of them is combined with terms describing the Complainant’s products (i.e., electronic cigarettes), and the other with a term “perpa”, which refers to a trade center in Istanbul where mainly electrical equipment is sold. It is therefore unlikely that the Respondent chose the disputed domain names without the intention of invoking a misleading association with the Complainant. It is evident also from the Respondent’s use of the disputed domain names that the Respondent knew of the Complainant’s trademarks when registering the disputed domain names. It also appears that the Respondent started offering what appears to be the Complainant’s Iqos (and Heets) branded products immediately after registering the disputed domain names;
The Respondent’s knowledge of the IQOS and HEETS marks is particularly obvious, given that the IQOS and HEETS logos are displayed on the websites at the disputed domain names;
In addition, by displaying the Complainant’s registered trademarks (IQOS and HEETS) on the Respondent’s websites, the Respondent misled consumers into believing that the Complainant or an affiliated dealer were the source of the website. This suggestion is further supported by the Respondent’s use of the Complainant’s official product images on its websites and from the messages “IQOS Heets Sigara Satış Sitesi İstanbul” (i.e., IQOS Heets Cigarette Sale Site Istanbul) and “İqos perpa mağazası. İqos orjinal sipariş sitesi” (i.e., İqos perpa store. İqos original order site) which are also displayed on these websites.
Further inference of bad faith is given by the fact that the Complainant does not currently offer its Iqos and/or Heets branded products for sale in Turkey, while the online shops provided under the disputed domain names clearly create the false impression that the Complainant has officially introduced the Iqos and/or Heets products into the Turkish market.
This Panel finds that the above use of the disputed domain names constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use under paragraph 4(b)(iv) of the Policy.
Finally, the Respondent has not responded to (nor denied) the assertions made by the Complainant in this proceeding.
Accordingly, the Panel finds that the Complainant has satisfied 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.
Fabrizio Bedarida
Sole Panelist
Date: April 18, 2019
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