The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by DM Kisch Inc., South Africa.
The Respondent is Domain Admin Contact ID 6549367, FBS INC, Whoisprotection biz of Istanbul, Turkey / Mahir Sultanov of Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with FBS Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed in English 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 name. On March 4, 2019, 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 March 7, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center transmitted an email to the Parties regarding the language of the proceeding. The Complainant filed an amended Complaint on March 7, 2019, and confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and Turkish of the Complaint, and the proceedings commenced on March 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2019.
The Center appointed Selma Ünlü as the sole panelist in this matter on April 17, 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., a leading international tobacco company which 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 a flavorful nicotine-containing aerosol. 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 on 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 name was revealed by the Registrar.
The disputed domain name is linked to an online shop allegedly offering the Complainant’s IQOS and HEETS branded products. The Complainant’s IQOS trademark is being used at the top left of the website related to disputed domain name.
The Respondent has not submitted any Response to the contentions raised in the Complaint.
The disputed domain name was registered on December 21, 2018. 5. Parties’ Contentions A. Complainant
Pursuant to paragraph 4(i) of the Policy, the Complainant requests the Panel to make a decision requesting the transfer of the disputed domain name 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 in several jurisdictions including but not limited to Turkey.
The Complainant alleges that the disputed domain name is confusingly similar to its IQOS trademark registrations, since the disputed domain name contains the Complainant’s IQOS trademarks entirely alongside with the geographical term “tr”.
The Complainant asserts that the addition of the merely generic, descriptive, or geographical wording “tr” (which is an abbreviation for Turkey) would normally be insufficient to avoid confusingly similarity under the first element of the UDRP. The Complainant states that any visitor of the disputed domain name will reasonably expect to find a website commercially linked to the owner of the IQOS trademarks. Rights or Legitimate Interests
The Complainant states that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its IQOS trademarks. The Respondent is not an authorized distributor or reseller of the IQOS products. The Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent is also not known under the name “Iqos”.
Additionally, the Complainant also states that the Respondent’s website at the disputed domain name is not providing a bona fide offering of goods and/or services since the requirements set by the Policy are not met by the Respondent. Registered and Used in Bad Faith
The Complainant indicates that the disputed domain name has been registered and used in bad faith.
The Complainant states that the Respondent knew the Complainant’s IQOS trademarks when registering the disputed domain name. It has been confirmed in past panel decisions that the Complainant has a widespread reputation in the IQOS marks with regard to its products and services. The Complainant alleges that the Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, Internet uses/relevant consumers to the website at the disputed domain name by creating a likelihood of confusion with the Complainant’s IQOS trademarks.
The Complaint also alleges that the display of the Complainant’s registered IQOS trademark at the top left of the website, as well as the use of the Complainant’s official copyright protected product images, creates an the impression that the website provided under the disputed domain name belongs to the Complainant or to an official affiliated 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 name is 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 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 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 name is 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 disputed domain name includes the Complainant’s IQOS trademark in its entirety and the addition of the geographical term “tr” (which is an abbreviation for “Turkey”). Further to section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), this addition does not prevent a finding of confusing similarity between the disputed domain name and the registered trademarks of the Complainant.
The Panel recognizes the Complainant’s trademark rights and concludes that the disputed domain name is 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.
The burden of proof is on the Complainant to demonstrate that the Respondent does not have rights or legitimate interests in the disputed domain name. However, once the Complainant has made out a prima facie case, then the Respondent may, by, inter alia, showing one of the above circumstances, demonstrate rights or legitimate interests in the disputed domain name. See section 2.1 of the WIPO Overview 3.0.
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 name for the purposes of the Policy.
The Complainant has not granted the Respondent any right or license to use the IQOS trademarks as well and there is no evidence that the Respondent it commonly known by the disputed domain name.
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 name.
Moreover, the Panel finds that the composition of the disputed domain name is such, that it effectively impersonates or suggests 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 name, 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 name has been registered and is 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 and the targeted use of the website at the disputed domain name, the Respondent was aware of the Complainant and its IQOS trademarks at the time of registration of the disputed domain name. 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 name is to be considered an inference of bad faith registration, due to the nature of the disputed domain name.
This intention has also been shown by the use of the registered trademarks of the Complainant at the top left side of the website and the 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 name is the Complainant’s official domain name or related, associated, or sponsored by the Complainant.
Furthermore, as previously noted, the composition of the disputed domain name is such, that it effectively impersonates or suggests sponsorship or endorsement by the Complainant.
Therefore, in light of the above-mentioned circumstances of the present case, the Panel finds that the disputed domain name has been registered and is 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 name be transferred to the Complainant.
Selma Ünlü
Sole Panelist
Date: May 1, 2019
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