The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Turan Altunoglu, 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 October 23, 2020. On October 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 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 October 26, 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 October 26, 2020. The Registrar also indicated that the language of the Registration Agreement was Turkish. The Center sent an email communication in English and Turkish, to the Parties on October 26, 2020, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of the proceeding, a Complaint translated into Turkish, or a request for English to be the language of the proceeding; and inviting the Respondent to comment on the language of the proceeding. The Complainant filed a request for English to be the language of the proceeding on October 26, 2020. The Respondent did not comment on the language of the proceeding. 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 in English and Turkish of the Complaint, and the proceedings commenced on November 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2020. On November 5, 2020, the Center received informal communications in Turkish from the Respondent, however, the Respondent did not submit any formal response. Accordingly, the Center notified the Parties that it was proceeding to panel appointment on November 24, 2020. The Center appointed Kaya Köklü as the sole panelist in this matter on December 3, 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. group, which is a group of companies active in the field of tobacco and smoke-free products. The Complainant owns various word and figurative HEETS trademark registrations around the world, including in Turkey, where the Respondent is located. According to the Complaint, the Complainant is, inter alia, the registered owner of the International Trademark Registration No. 1328679 (registered on July 20, 2016) and No. 1326410 (registered on July 19, 2016) for HEETS, both providing trademark protection, inter alia, for electronic cigarettes as covered in classes 9, 11, and 34 (hereinafter collectively referred to as “HEETS trademark”). The Respondent is an individual from Turkey. The disputed domain name was registered on September 16, 2020. The screenshots, as provided by the Complainant (Annex 8 to the Complaint), show that the disputed domain name resolves to a website in the Turkish language, which is used for offering allegedly various kinds of smoke-free products under the trademark HEETS as well as third party competing products of other commercial origin. Additionally, the HEETS trademark as well as product images of the Complainant are prominently used without any visible disclaimer describing the (lack of) relationship between the Parties. 5. Parties’ Contentions A. Complainant The Complainant is of the opinion that the disputed domain name is confusingly similar to its HEETS trademark. Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is rather argued that the disputed domain name falsely suggests that there is some official or authorized link between the Complainant and the Respondent. Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant belıeves that the Respondent must have been well aware of the Complainant’s HEETS trademark when registering the disputed domain name, particularly as the Respondent prominently uses the Complainant’s trademark on the website linked to the disputed domain name and its genuine product images without authorization and any disclosure of the lack of relationship between the Complainant and the Respondent. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. However, on November 5, 2020, the Center received informal email communications in Turkish from the Respondent. In its email communications, the Respondent indicated that it will not accept a decision, which orders the transfer of the disputed domain name to the Complainant. Also, the Respondent indicated that if the disputed domain name is transferred and/or used by the Complainant, it will file a counter action and claim damages of around USD 10,000. 6. Discussion and Findings 6.1. Language of the Proceeding The Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of the administrative proceeding shall be English. Although the language of the Registration Agreement is Turkish, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceeding in Turkish and request a Turkish translation of the Complaint while the Respondent has failed to raise any objection or respond to the Center’s communication about the language of the proceeding, even though communicated in Turkish and in English. In its email communications of November 5, 2020, the Respondent – instead of arguing on the merits and the Complainant’s contentions – used his right to respond in Turkish merely to express a threat of counterclaims, in case the disputed domain name will be transferred to the Complainant. In light of the above, the Panel concludes that the Respondent will not be prejudiced by a Decision being rendered in English. 6.2. Substantive Issues According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark 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. Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228. However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views stated therein. A. Identical or Confusingly Similar The Panel finds that the Complainant has registered trademark rights in the mark HEETS by virtue of various trademark registrations worldwide, including in Turkey. The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered HEETS trademark, as it fully incorporates the Complainant’s trademark. As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would generally not prevent a finding of confusing similarity. The mere addition of the term “perpa” (which is the name of a commercial center in Şişli, Istanbul) does not, in view of the Panel, serve to avoid a finding of confusing similarity between the disputed domain name and the Complainant’s HEETS trademark. Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name. While the burden of proof on this element remains with the Complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c). In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s trademark HEETS in a confusingly similar way within the disputed domain name. There is also no indication in the current record that the Respondent is commonly known by the disputed domain name. In the absence of a formal response, the Respondent has particularly failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name. In this regard, the Panel is particularly convinced that the Respondent cannot be assessed as a legitimate dealer for the Complainant’s products in light of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”) and thus is not entitled to use the disputed domain name accordingly. The criteria as set forth in Oki Data are apparently not fulfilled in the present case. The Panel particularly notes that the website which is linked to the disputed domain name does not accurately and prominently disclose the relationship, or rather the lack thereof, between the Respondent and the Complainant, thus creating the false impression that the Respondent might be an official and authorized reseller/distributor for the Complainant’s products in Turkey. The Panel further notes that the Respondent offers also third party competing products of other commercial origin for sale on the website linked to the disputed domain name. In the Panel’s view, this takes the Respondent out of the Oki Data safe harbour for purposes of the second element. In addition, the Panel notes that the nature of the disputed domain name carries a risk of implied affiliation or association, as stated in section 2.5.1 of the WIPO Overview 3.0. As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith In the Panel’s view, the Respondent has registered and is using the disputed domain name in bad faith. The Panel is convinced that the Respondent must have had the Complainant’s trademark in mind when registering the disputed domain name just recently. In view of the Panel, the Respondent has registered the disputed domain name solely for the purpose of creating an association with the Complainant and its smoke-free products. After having reviewed the Complainant’s screenshots of the website linked to the disputed domain name (Annex 8 to the Complaint), the Panel is convinced that the Respondent has intentionally registered the disputed domain name in order to generate traffic to its own website. The Panel particularly notes that the Respondent has not published any visible disclaimer on the website linked to the disputed domain name to explain that there is no existing relationship between the Respondent and the Complainant. Rather, the use of product images of the Complainant, the use of the Complainant’s HEETS trademark on the website linked to the disputed domain name as well as the nature of the disputed domain name is, in view of the Panel, sufficient evidence that the Respondent intentionally tries to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation or endorsement of its website. The Panel further notes that the Respondent offers also third party competing products of other commercial origin for sale on the website linked to the disputed domain name. The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, 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 Kaya Köklü
Sole Panelist
Date: December 15, 2020
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