The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Ozgur Ceridi, 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 June 5, 2020. On June 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 8, 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 June 9, 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 June 10, 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 June 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2020. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on July 14, 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. 4. Factual Background The Complainant is part of the Philip Morris International Inc. (hereinafter referred to as “PMI”), an international tobacco conglomerate that sells tobacco products in around 180 countries of the world. One of its products is the IQOS system, a precisely controlled heating device into which tobacco products under the trademarks HEETS or HEATSTICKS are inserted and heated to generate flavorful nicotine-containing aerosol. Such products are being marketed in key cities in around 53 markets across the world through official IQOS stores and websites and selected authorized distributors and retailers. The Complainant owns among others the following trademarks (Annexes 6 and 7 to the Complaint): - International registration No. 1218246 for the word mark IQOS, registered on July 10, 2014, in classes 9, 11, and 34; - International registration No. 1338099 for the device mark IQOS, registered on November 22, 2016, in class 35; - International registration No. 1329691 for the device mark IQOS, registered on August 10, 2016, in classes 9, 11, and 34; - International registration No. 1326410 for the word mark HEETS, registered on July 19, 2016, in classes 9, 11, and 34; and - International registration No. 1328679 for the device mark HEETS, registered on July 20, 2016, in classes 9, 11, and 34. The disputed domain name was registered on November 13, 2018, and is being used in connection with an online shop written in Turkish allegedly offering the Complainant’s IQOS system, displaying the Complainant’s IQOS and HEETS products. 5. Parties’ Contentions A. Complainant The Complainant claims to have developed the IQOS system, first launched in Nagoya, Japan in 2014. Asserting to have invested USD 6 billion in extensive international sales and marketing efforts to promote its IQOS system, the Complainant states that its new product has obtained considerable international success and reputation, approximately having over 10 million relevant consumers. According to the Complainant, the disputed domain name was registered through a privacy registration service provider, so as to conceal the identity of the real owner and operator of the disputed domain name. After the unveiling of the details and confirmation to the Center the Complainant asserted that the Respondent is not known or in any way related to any company belonging to PMI and is not authorized to use the IQOS and HEETS trademarks. Also according to the Complainant, the use of the disputed domain name in connection with an online shop allegedly offering the Complainant’s products, targeting the Turkish market, clearly characterizes an attempt to pass itself off as an official online retailer of the Complainant’s products in Turkey, where such products are not currently sold. Furthermore, the unauthorized reproduction of the Complainant’s official product images and marketing materials, without the Complainant’s authorization, strengthens the false impression to Internet users that the Respondent is connected with or one of the Complainant’s official distributors. In addition to that, the Complainant argues that the website that resolves from the disputed domain name does not show any details regarding the provider of the online shop, leaving the Internet user under the false impression that such website is connected with the Complainant or would be one of the Complainant’s official distributors, what is not true. Under the Complainant’s view the disputed domain name incorporates the Complainant’s IQOS trademark and is thus confusingly similar therewith, being the addition of the non-distinctive word “park” insufficient to avoid a finding of confusing similarity under the Policy. The Complainant further contends that the unlawful association with the Complainant’s trademarks is exacerbated by the use of the Complainant’s official product images and marketing materials without the Complainant’s authorization. Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that: i. it has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its IQOS trademark or a domain name which will be associated with this trademark; ii. the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, rather showing 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; iii. the Respondent is not an authorized reseller of the Complainant’s IQOS system; iv. the criteria for a bona fide offering of goods or services as established in Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903 are not met, given that the Respondent does not accurately disclose the lack or relationship with the Complainant; v. the disputed domain name and the content of the website to which it resolves suggest at least an affiliation with the Complainant which in fact does not exist; vi. the website uses the Complainant’s official product images and marketing materials without authorization, further supporting the false impression of endorsement of the disputed domain names with the Complainant; vii. the website to which the disputed domain name resolves include no information regarding the identity of the provider of the website which further serves to perpetuate the false impression of a commercial relationship between the disputed domain name and the Complainant; and viii. 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 for sale its IQOS System in Turkey which is the market targeted by the Respondent in the online store to which the disputed domain name resolves. As to the registration and use of the disputed domain name, the Complainant states that: i. the Respondent knew of the Complainant’s trademark when registering the disputed domain name; ii. the mark IQOS is not commonly used to refer to tobacco products and therefore it is beyond the realm of reasonable coincidence that the Respondent chose the disputed domain name without intention of invoking a misleading association with the Complainant; iii. the purpose of the Respondent’s registration of the disputed domain name was 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; iv. by reproducing the Complainant’s registered trademarks in the disputed domain names and in the title of the website, the Respondent’s website suggests the Complainant or an affiliated dealer of the Complainant as the source of the website which is not the case; being this suggestion also supported by the Respondent’s use of the Complainant’s official product images and marketing materials; and v. the choice to retain a privacy protection service so as to hide the Respondent’s true identity is a further indication of bad faith as recognized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.6. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark 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. The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name. In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar The Complainant has established rights over the IQOS trademark. The disputed domain name incorporates the Complainant’s trademark with the addition of the term “park” and the “.com” Top-Level Domain (“TLD”) insufficient to avoid a finding of confusing similarity under the Policy which, as recognized by past UDRP panels, involves a “comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (WIPO Overview 3.0, section 1.7). For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a nonexclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are: (i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the Respondent (as individuals, businesses, or other organizations) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element. In that sense, and according to the evidence submitted, the Complainant has made a prime facie case against the Respondent which has not been commonly known by the disputed domain name and is neither an authorized reseller of the Complainant’s IQOS system nor has it been licensed or otherwise permitted to use any of the Complainant’s trademarks or to register a domain name incorporating its IQOS trademark. Also according to the evidence submitted by the Complainant, the use made of the disputed domain name in connection with an online shop allegedly offering the Complainant’s products, reproducing the Complainant’s IQOS and HEETS logos in a prominent manner, together with the unauthorized reproduction of the Complainant’s official marketing materials and product images, clearly suggest at least an affiliation with the Complainant, which in fact does not exist. In addition to that, not disclosing the lack of relationship with the trademark owner does not meet the criteria for a bona fide offering of goods or services as established in Oki Data Americas, Inc. v. ASD, Inc, supra and, which is, under this Panel’s view enhanced by the nature of the disputed domain name which carries a risk of implied affiliation with the Complainant. Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a 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 a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. In this case, both the registration and use of the disputed domain name in bad faith can be found pursuant to Policy, paragraph 4(b)(iv) in view of the reproduction of the IQOS trademark, as well as the online shop that is available at the webpage resolving from the disputed domain name, together with the unauthorized reproduction of the Complainant’s official marketing materials and product images, which create a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement thereof. Therefore, the Panel finds that the disputed domain name was registered and has been used in bad fath. 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 Wilson Pinheiro Jabur
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name.
Sole Panelist
Date: July 28, 2020
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