The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Cihan Atalay, 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 August 18, 2020. On August 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 19, 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 August 19, 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 August 20, 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 August 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2020. The Center appointed Federica Togo as the sole panelist in this matter on September 17, 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 a company, which is part of the group of companies affiliated to Philip Morris International Inc., which is a leading international tobacco company, with products sold in approximately 180 countries. The Complainant is the registered owner of several trademarks worldwide consisting of or containing the term IQOS, e.g. International Registration No. 1218246, IQOS (verbal) registered on July 10, 2014, for goods and services in classes 9, 11, and 34 and designating amongst others Turkey. It results from the information disclosed by the Registrar that the disputed domain name was registered on May 8, 2018. Furthermore, the undisputed evidence provided by the Complainant proves that the disputed domain name The Complainant has developed and sold a number of Reduced Risk 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. One of these products is called IQOS, which is a precisely controlled heating device into which specially designed tobacco products are inserted and heated to generate a flavourful nicotine-containing aerosol. The IQOS system also consists of an IQOS Pocket Charger, specially designed to charge the IQOS Holder (collectively referred to as the IQOS System). The IQOS System was first launched in Japan in 2014 and is today available in key cities in around 53 markets across the world. It has achieved considerable international success and reputation and over 10 million relevant consumers have converted to it worldwide. To date, the IQOS System has been almost exclusively distributed through official IQOS stores and websites and selected authorized distributors and retailers and is not currently sold in Turkey. The Complainant contends that its trademarks are well-known. It results from the Complainant’s undisputed allegations that the disputed domain name The Complainant contends that the disputed domain name is confusingly similar to its trademark, since it reproduces the IQOS trademark in its entirety, in addition to the non distinctive and descriptive word “ofis” (informal translation “office”). Any Internet user when visiting a website provided under the disputed domain name will reasonably expect to find a website commercially linked to the owner of the IQOS trademarks. This unlawful association is exacerbated by the use of the Complainant’s official product images without the Complainant’s authorization. The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, 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. According to the Complainant’s non-contested allegations, the Respondent uses the disputed domain name for redirecting users to an online shop where both the Complainant’s IQOS System and competing tobacco products and/or accessories of other commercial origin are sold. However, the Respondent is not an authorized distributor or reseller of the IQOS System and its unauthorized promotion of sales of those goods alongside sales of competing goods – all in connection with a domain name that reproduces the IQOS mark – does not amount to a legitimate noncommercial or fair use of the disputed domain name. In the present case, the Respondent is not only offering the Complainant’s products but also competing tobacco products and accessories of other commercial origin. This is sufficient to exclude a legitimate interest in the form of a bona fide offering of goods. Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. It is evident from the Respondent’s use of the disputed domain name that the Respondent knew of the Complainant’s IQOS trademark when registering the disputed domain name. By reproducing the Complainant’s registered trademark in the disputed domain name and the title of the website, the Respondent’s website clearly suggests the Complainant or an affiliated dealer of the Complainant as 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, accompanied by a copyright notice claiming the copyright for the website and its contents. In addition, the Respondent is not only using the Complainant’s IQOS trademark for the purposes of offering for sale the IQOS System, but also for purposes of offering for sale third party products of other commercial origin. Such abusive use of the Complainant’s IQOS trademark for purposes of promoting competing products is a clear-cut trademark infringement and constitutes clear evidence of the Respondent’s bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled: (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 Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. It results from the evidence provided that the Complainant is the registered owner of various trademark registrations for the term IQOS. Reference is made in particular to International Registration No. 1218246 IQOS (verbal) registered on July 10, 2014, for goods and services in classes 9, 11, and 34 and designating amongst others Turkey. This trademark registration predates the creation date of the disputed domain name, which is May 8, 2018. Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g. Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-1923; F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, Inc.,WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464; Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-1409). This Panel shares this view and notes that the Complainant’s registered trademark IQOS is fully included in the disputed domain name. In addition, it is the view of this Panel that the addition of the letters “ofis” does not avoid that the trademark IQOS is clearly recognizable within the disputed domain name and cannot exclude the confusing similarity between the disputed domain name and the Complainant’s trademark. The Complainant is therefore deemed to have satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name. According to the Complaint, which has thus remained unchallenged, the Complainant has not authorized the Respondent’s use of the trademark IQOS, e.g. by registering the disputed domain name comprising said trademark entirely. Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy. Finally, it results from the Complainant’s non-contested evidence that the disputed domain name resolves to a website on which both the Complainant’s IQOS goods and competing goods are sold. Since this use is clearly commercial, it cannot be considered 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 pursuant to paragraph 4(c)(iii) of the Policy. Furthermore, such use cannot be qualified a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy and the Oki Data jurisprudence (e.g. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903) as it is misleading and diverting consumers, making them erroneously believe that the Respondent is an authorized dealer, retailer, or re-seller of IQOS products, and is authorized to promote sales of IQOS products alongside of competing goods. This is reinforced by the following facts: (1) the Respondent did not add any note, information or disclaimer pointing out that it actually has no relationship with the Complainant; (2) the website is accessible under a domain name that comprises Complainant’s trademark entirely, see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (‘WIPO Overview 3.0’), section 2.8.1: “Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark. The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.” It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith. One of these circumstances is that the Respondent by using the disputed domain name, 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 its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy). It is the view of this Panel that these circumstances are met in the case at hand. It results from the Complainant’s documented allegations that the disputed domain name resolves to a website on which both the Complainant’s IQOS goods and competing goods are sold. For the Panel, it is therefore evident that the Respondent positively knew the Complainant’s mark. Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent also knew that the disputed domain name included the Complainant’s trademark when it registered the disputed domain name. Registration of the disputed domain name which contains a third party’s mark, in awareness of said mark and in the absence of rights or legitimate interests amounts to registration in bad faith (see e.g., F. Hoffmann-La Roche AG v. Jatin Jani, Expired Domains LLC,WIPO Case No. D2019-0344; KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100; and Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320). The finding of bad faith registration and use is supported by the further circumstances resulting from the case at hand which are (i) the Respondent’s failure to submit a response; (ii) its failure to provide any evidence of actual or contemplated good-faith use; (iii) the implausibility of any good faith use to which the domain name may be put; and (iv) the Respondent concealing its identity behind a privacy shield. In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to 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 Federica Togo
Sole Panelist
Date: October 1, 2020
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