The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Roger Bundy, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is 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 May 9, 2019. On May 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 10, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 14, 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 the same day.
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 May 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2019.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on June 14, 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. is a company which is part of the group of companies affiliated to Philip Morris International Inc. (jointly referred to as “PMI”). PMI is the leading international tobacco company, with products sold in approximately 180 countries. PMI’s unequalled brand portfolio contains brands like MARLBORO, the world’s number one international selling cigarette brand since 1972.
The Complainant owns a large portfolio of well-known trademarks. Among them, but by no means limited to, are the following trademark registrations:
- International Registration IQOS (word) No. 1218246 registered on July 10, 2014, designating Antigua and Barbuda, Albania, Algeria, Armenia, Bosnia and Herzegovina, Bahrain, Belarus, Colombia, Cuba, Egypt, European Union, Georgia, Israel, India, Iceland, Kyrgyzstan, Kazakhstan, Morocco, Monaco, Republic of Moldova, Montenegro, Mongolia, New Zealand, Oman, Philippines, Serbia, Tunisia, Turkey, Ukraine, Viet Nam;
-International Registration IQOS (device) No. 1338099 registered on November 22, 2016, designating Albania, Algeria, Armenia, Australia, Azerbaijan, Bosnia and Herzegovina, Bahrain, Belarus, Colombia, Egypt, European Union, Georgia, Israel, India, Iceland, Japan, Republic of Korea, Kazakhstan, Morocco, Monaco, Montenegro, Mexico, Norway, New Zealand, Oman, Philippines, Serbia, Russian Federation, Singapore, Turkey, Ukraine, United States of America;
- International Registration HEETS (word/device) No. 1328679 registered on July 20, 2016, designating Albania, Armenia, Australia, Azerbaijan, Bahrain, Belarus, Bosnia and Herzegovina, Botswana, China, Colombia, Egypt, United States of America, Russian Federation, Philippines, Georgia, India, Iceland, Israel, Japan, Kenia, Kyrgyzstan, Liechtenstein, Morocco, Mexico, Monaco, Montenegro, Mozambique, Norway, New Zealand, OAPI, Republic of Korea, Republic of Moldova, Serbia, Singapore, Oman, Turkmenistan, Turkey, European Union, Ukraine, Uzbekistan, Viet Nam;
-International Registration HEETS (word) No. 1326410 registered on July 19, 2016, designating Albania, Armenia, Australia, Azerbaijan, Bahrain, Belarus, Bosnia and Herzegovina, Botswana, China, Colombia, Egypt, United States of America, Russian Federation, Philippines, Georgia, India, Iceland, Israel, Japan, Kenia, Kyrgyzstan, Liechtenstein, Morocco, Mexico, Monaco, Montenegro, Mozambique, Norway, New Zealand, OAPI, Republic of Korea, Republic of Moldova, Serbia, Singapore, Oman, Turkmenistan, Turkey, European Union, Ukraine, Uzbekistan, Viet Nam.
The Domain Name was registered on April 16, 2019 and was resolving, at the time the Complaint was filed, to a website selling what appears to be the Complainant’s products and competing tobacco products. 5. Parties’ Contentions A. Complainant
The Complainant has registered trademark rights in IQOS. The Complainant submits that the Domain Name is confusingly similar to the Complainant’s IQOS trademark. The Complainant states that the addition of the generic terms “satis platformu” (in English “sales platform”) reinforces the confusing similarity with the Complainant’s IQOS trademarks.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant asserts that the Respondent is unable to demonstrate rights or legitimate interests in the Domain Name. The Respondent has not been allowed by the Complainant to make any use of its trademarks.
Further, the Complainant alleges that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name. The Complainant considers the Respondent’s behavior showing a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the Complainant’s trademark. Firstly, the Respondent is not an authorized distributor or reseller of the Complainant’s products under the IQOS trademark. Secondly, according to the Annex 8 to the Complaint, the Respondent’s website sold competing tobacco products and/or accessories of other commercial origin. Thirdly, the Respondent’s website did not meet the requirements for a bona fide offering of goods set forth in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (the “Oki Data test”) as the Domain Name suggests affiliation with the Complainant, the Respondent’s website used original images of the Complainant without authorization and did not provide information regarding the identity of the provider of the Respondent’s website, while the Respondent’s website also offered products that compete with those of the Complainant.
The Complainant argues that the Respondent had knowledge of the Complainant and its products at the time of registration of the Domain Name. The Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s registered IQOS trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on his website or location. It constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
The Complainant adds that; by reproducing the Complainant’s registered trademark in the Domain Name and the header of the website, the Respondent’s website clearly suggests that the Complainant or an affiliated dealer of the Complainant is the source of the website, which it is not. This suggestion is further supported by the Respondent’s use of the Complainant’s official product images and marketing materials, accompanied by a copyright notice claiming the copyright for the website and its contents. Finally, the fact that the Respondent is using a privacy protection service to hide its true identity may in itself constitute a factor indicating bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Domain Name contains the Complainant’s well-known trademark IQOS with the descriptive terms “satis platformu”. The addition of these terms does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)
The extension “.com” is generally not to be taken into consideration when examining the identity or similarity between the Complainant’s trademark and the Domain Name.
Therefore, the Panel finds that the Domain Name is confusingly similar to the trademark IQOS in which the Complainant has rights, satisfying the condition of the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Domain Name.
It is clear that the Respondent has not demonstrated any bona fide offering of goods and services for its use of the Domain Name, nor has the Respondent shown that it has been commonly known by the Domain Name. Rather, the evidence of the Complainant suggests that the Respondent has used the Domain Name in an attempt to trade off the goodwill associated with the Complainant’s trademark.
The Complainant also showed, inter alia, that the Respondent has neither a license nor any other permission to use the Complainant’s trademark in the Domain Name or otherwise.
Further, the Respondent’s website, as described above, does not meet the Oki Data criteria as the relationship between the Respondent and the Complainant is not disclosed and the Respondent is selling competing products.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
Taking into account the Respondent’s use of the Domain Name, the Panel concludes that the Respondent was aware of the Complainant and its business when the Respondent registered the Domain Name.
The Respondent has attempted to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. By reproducing the Complainant’s trademark in the Domain Name and on the web page, the Respondent’s website suggested the Complainant or an affiliated dealer as the source. This is supported by the Respondent’s use of the Complainant’s official product images and marketing materials. The use of a privacy protection service and the fact that the Respondent has not replied to the Complainant’s contentions, further point to bad faith.
The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of 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 Domain Name be transferred to the Complainant.
Dilek Ustun Ekdial
Sole Panelist
Date: June 25, 2019
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