The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Safak Sari, Turkey. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2020. On May 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 11, 2020, 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 14, 2020 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 14, 2020. 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 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 6, 2020. The Center appointed Daniel Peña as the sole panelist in this matter on June 13, 2020. 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. On June 12, 2020, the Respondent sent an email to the Center after the deadline to reply set forth by the Policy. In this extemporaneous communication, there are no substantive arguments or reasonable justification for the non-response in time that may be taken into account by the Panel. 4. Factual Background The Complainant is a company which is part of the group of companies affiliated to Philip Morris International Inc. Philip Morris International Inc. is a leading international tobacco company, with products sold in approximately 180 countries. The Complainant owns for its new innovative smoke-free products a large portfolio of 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 several countries, including Turkey; - International Registration (device) No. 1338099 registered on November 22, 2016 designating several countries, including Turkey; - International Registration (device) No. 1329691 registered on August 10, 2016 designating several countries, including Turkey; and - International Registration (device) No. 1347235 registered on January 24, 2017 designating some countries among other Turkey. The disputed domain name was registered on April 24, 2019 and is linked to an online shop offering repair and maintenance services for the Complainant’s IQOS System. 5. Parties’ Contentions A. Complainant The Complainant’s parent company is known for innovating across its brand portfolio. In the course of transforming its business from combustible cigarettes to Reduced Risk Products (or “RRPs”, which Philip Morris International Inc. 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 versus continued smoking), Philip Morris International Inc. has developed a number of RRP products. One of these RRPs developed and sold by Philip Morris International Inc. is called IQOS. IQOS is a precisely controlled heating device into which specially designed tobacco products are inserted. The IQOS system also consists of an IQOS Pocket Charger, specially designed to charge the IQOS Holder. The IQOS System was first launched by the Complainant’s parent company in Nagoya, Japan in 2014 and has obtained an extraordinary 18.3% share of the market in Japan. Today the IQOS System is available in key cities in around 53 markets across the world. As a result of a USD 6 billion investment and extensive international sales and marketing efforts (in accordance with local laws), the IQOS System has achieved considerable international success and reputation, and over 10 million relevant consumers have converted to the IQOS System worldwide. The IQOS System has been almost exclusively distributed through the Complainant’s parent company official IQOS stores and websites and selected authorized distributors and retailers. The Complainant is not known or in any way related to the Complainant and is not authorized to use the IQOS trademarks. The disputed domain name reproduces the IQOS trademark in its entirety, in addition to the nondistinctive and descriptive word “servis”. This unlawful association is exacerbated by the use of the Complainant’s official product images without the Complainant’s authorization. The Complainant has made a prima facie case that the Respondent lacks any rights or legitimate interests in the disputed domain name. 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 trademark. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. On the contrary, the Respondent’s behaviour shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademarks owned by the Complainant. The Respondent is not an authorized distributor, reseller or repair services operator of the IQOS System. In the website which is identified by the domain name The Complainant does not currently offer for sale its IQOS System in the territory of Turkey, and the online shop provided under the disputed domain name The Respondent started offering repair services for the Complainant’s IQOS System immediately after registering the disputed domain name. Furthermore, the term IQOS is purely an imaginative term and unique to the Complainant. The term “iqos” is not commonly used to refer to tobacco products or electronic devices. It is therefore beyond the realm of reasonable coincidence that the Respondent chose the disputed domain name, without the intention of invoking a misleading association with the Complainant. The Respondent registered and used the disputed 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 its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. In this regard we may refer to the above explanations. By reproducing the Complainant’s registered trademark and associated content in the website, the Respondent’s website clearly suggests the Complainant or an affiliated and authorised repair services operator of the Complainant as the source of the website, which it is not. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is 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 name; and (iii) the disputed domain name has been registered and is being used in bad faith. Considering these requirements, the Panel rules as follows: A. Identical or Confusingly Similar The Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademarks. The Respondent’s incorporation of the Complainant’s trademark in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant’s marks. Mere addition of the dictionary term “servis” to the Complainant’s mark does not prevent a finding of confusing similarity. The expression “servis” that is added has the meaning of “service” in Turkish language which is the one that coincides with the domicile of the Respondent. Further, the addition of other terms (whether descriptive, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element. The nature of such term(s) may however bear on assessment of the second and third elements. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). This Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain “.com” to the disputed domain name does not prevent a finding of confusing similarity for purposes of the Policy (see Carlsberg A/S v. Xu Guo Xing,WIPO Case No. D2017-0301; Philip Morris USA Inc. v. Shimei Wang,WIPO Case No. D2016-2517; Livelle v. Martijn Noordermer,WIPO Case No. D2016-2524). The Panel is satisfied that the disputed domain name is identical or confusingly similar to the Complainant’s mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth. Refraining from submitting a formal Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain name. The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner. The Respondent did not submit a formal Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b). Furthermore, the unrebutted claim of the Complainant that the disputed domain name is being used for deliberately attracting Internet users to its website in the mistaken belief that it was the website of the Complainant, or otherwise linked to or authorized by the Complainant supports a finding that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; (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; (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 its 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 its website or location. In the Panel’s view, a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the widespread commercial recognition of the trademark IQOS is such that the Respondent, must have had knowledge of the trademark before registering the disputed domain name. The Respondent appears to have chosen the disputed domain name in order to deliberately attract Internet users to its website in the mistaken belief that it was the website of the Complainant, or otherwise linked to or authorized by the Complainant. That impression is only reinforced by the content of the Respondent’s site whereby the Complainant’s marks and content are included. For this Panel’s view, the use of bad faith is configured by the inclusion of the expression “servis” (service in English) in the disputed domain name together with the effective provision of technical services to the Complainant’s devices through the web page to which the disputed domain name is directed, and the absence of a disclaimer disclosing the relationship between the Parties (or its lack thereof). As such, the Panel is satisfied that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of the products on its website. Under paragraph 4(b)(iv) of the Policy, this circumstance shall be evidence of the registration and use of a domain name in bad faith. The Panel concludes that the disputed domain name was registered and is being used in bad faith. 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, Daniel Peña
Sole Panelist
Date: June 27, 2020
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