The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Hanefi Çelik, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2019. On May 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 24, 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 May 24, 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 May 27, 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 June 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2019. The Center received communications from the Respondent on June 17, 19 and 24, 2019. The Complainant requested the suspension of administrative proceeding by email on June 25, 2019. The Center notified that the administrative proceeding is suspended until July 25, 2019. On July 9, 2019, the Complainant requested to reinstitute the proceeding. The Center notified the reinstitution of proceeding by email on July 9, 2019.
The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on July 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. is a company which is part of the group of companies affiliated to Philip Morris International Inc. Philip Morris International Inc. is one of the leading international tobacco companies, with products sold in approximately 180 countries.
The Complainant is selling smoke-free cigarettes under its IQOS brand and owns several international trademark registrations for IQOS including the following:
- International Registration No. 1218246 for the trademark IQOS extended to Turkey, registered July 10, 2014, covering tobacco products and electronic cigarettes, in classes 9, 11 and 34;
- International Registration No. 1329691 for the trademark IQOS logo extended to Turkey, registered August 10, 2016, covering tobacco products and electronic cigarettes, in classes 9, 11 and 34;
The disputed domain name was registered on May 1, 2019, in the name of the Respondent who is a physical person domiciled in Istanbul, Turkey. The disputed domain name resolved to an active website in Turkish offering the Complainant’s products for sale before the commencement of the proceedings. At the time of the decision, disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s trademark IQOS and that the addition of the geographical term “turkiye” (which refers to the term “Türkiye” which in turn means “Turkey” in Turkish) and the descriptive term “satis” (which refers to the term “satış” which in turn means “sales” in Turkish) reinforce the association between the disputed domain name and the Complainant’s trademark as Internet users will likely assume that the disputed domain name is used for the official IQOS online shop in Turkey.
The Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, mainly because the Complainant has neither licensed nor otherwise authorized the Respondent to use its marks or to apply for or use any domain name incorporating the trademark IQOS. The Complainant further asserts that the conditions of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 for a bona fide offering of goods and services by an authorized or non-authorized third party are not satisfied.
Finally, in addressing the question of registration and use of the disputed domain name in bad faith, the Complainant observes that the Respondent is well aware of the Complainant’s trademark considering that the Respondent is using the Complainant’s marketing material, including the hummingbird logo and that the Respondent’s website clearly suggests that the website belongs to the Complainant or is an official affiliated dealer endorsed by the Complainant. In this regard, the Respondent has used privacy shield in order hide its identity.
The fact that the website does not provide any information on the true identity of the website provider clearly shows that the Respondent intentionally creates the impression that the products offered on the Respondent’s website are provided by the Complainant or at least an official dealer by misleading users on the source of the website and thereby attract, for commercial gain, Internet users to the website. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
However, the Respondent submitted informal communications on June 17, 2019, June 19, 2019 and June 24, 2019. The Panel notes that the Respondent requested in its latter email communication dated June 24, 2019, that the disputed domain name be transferred to the Complainant. 6.1. Effect of the unilateral consent to transfer by the Respondent
The Panel must decide whether to grant a unilateral transfer as requested by the Respondent.
Several prior UDRP decisions show that it is the panel’s discretion to issue a transfer when the respondent has given its unilateral and unambiguous consent to transfer, or to address the conditions for transfer under paragraph 4(a) of the Policy. See, e.g., Vienna Beef Ltd. v. Texas International Property Associates,WIPO Case No. D2007-1133 (where there is a finding that a full discussion of the merits was appropriate despite the respondent’s alleged willingness to unilaterally transfer the domain name).
Although the Panel has the authority to order a transfer based on the Respondent’s consent without further analysis, the Panel considers it appropriate in the circumstances of this case, absent a signed stipulation between the parties or a withdrawal of the Complaint, to proceed to consider the merits of the case. 6.2. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove, during the administrative proceedings, to merit a finding that the disputed domain name be transferred to the Complainant:
(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) the disputed domain name has been registered and is being used in bad faith.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
As indicated above, the Complainant holds several trademark registrations for the IQOS trademark. The disputed domain name integrates the Complainant’s IQOS trademark in its entirety. The disputed domain name differs from the registered IQOS trademark by the addition of the geographical term “turkiye” which refers to “Turkey” and the descriptive word “satis” which refers to “sales” in the Turkish language, which does not serve to distinguish or differentiate the disputed domain name from the Complainant’s trademark.
Several UDRP panels have ruled that the mere addition of a descriptive element does not sufficiently differentiate a disputed domain name from a complainant’s registered trademark (see, e.g., Société des Produits Nestlé S.A. v. MrT LLC,WIPO Case No. D2012-1356; Allianz SE v. Roy Lee / Traffic‑D,WIPO Case No. D2012-1459; Swarovski Aktiengesellschaft v. mei xudong,WIPO Case No. D2013-0150; and Swarovski Aktiengesellschaft v. ,WIPO Case No. D2013-0335).
As regards the generic Top-Level Domain (“gTLD”) “.com”, it is typically disregarded under the confusing similarity test under the Policy.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The onus is on the Complainant to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and it is then for the Respondent to rebut this case.
Although the Respondent did not file a Response, a respondent’s default does not automatically result in a decision in favor of the complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 and the cases cited therein.
However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
As there are no exceptional circumstances for the failure of the Respondent to submit a Response, the Panel infers that the Respondent does not deny the facts asserted and contentions made by the Complainant. Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441.
A number of UDRP decisions have addressed the question of when a reseller’s use of a mark constitutes a bona fide offering of goods and services. The consensus view was articulated in Oki Data Americas, Inc. v. ASD, Inc., supra. See WIPO Overview 3.0 at section 2.8. In that case, the authorized reseller’s domain name incorporated the complainant’s OKIDATA trademark in full. The panel in Oki Data Americas, Inc. v. ASD, Inc., supra, concluded that for a respondent to demonstrate that a resale offering was bona fide, the following conditions must be met:
“- the respondent must actually be offering the goods or services at issue;
- the respondent must use the corresponding website to sell only the trademarked goods, otherwise there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods;
- the site itself must accurately disclose the respondent’s relationship with the trademark owner, i.e., respondent may not falsely suggest that it is the trademark owner, or that the website is the official site, if that is not the case; and
- the respondent must not try to “corner the market” in all relevant domain names, or deprive the trademark owner of reflecting its own mark in a domain name.”
In this case, it appears from the website, that the Respondent has been operating its business of selling electronic cigarettes exclusively for the Complainant’s products under the disputed domain name.
That being said, the Respondent is using the stylized version and the logo of the IQOS trademark on the website as well as the registered hummingbird trademark. Moreover, the website includes the photos of the Complainant’s IQOS branded products and uses the marketing material of the Complainant. All of these circumstances give the impression that the Respondent is affiliated with the Complainant or it is an authorized dealer of the Complainant.
Another relevant point is that the Complainant does not currently offer for sale its IQOS branded products in the territory of Turkey whereas the disputed domain name includes the geographical term “Turkey” in the Turkish language. Lastly, there is no disclaimer on the webpage connected to the disputed domain name regarding the relationship between the Complainant and the Respondent or the lack thereof.
For these reasons, the Panel concludes that the Respondent is not making use of the disputed domain name in connection with a bona fide offering of goods or services.
In the Panel’s view the Complainant has made out its prima facie case under this element of the Policy and the Respondent has failed to rebut it. Accordingly, the Complaint succeeds in relation to the second element 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.
Considering the Panel’s finding under the second element, the Panel finds that the registration and use of the disputed domain name falls under the circumstances described under paragraph 4(b)(iv) of the Policy, namely, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by seeking to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by the Complainant. 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.
Emre Kerim Yardimci
Sole Panelist
Date: July 25, 2019
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