The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Yunus Emre Ozturk, HEETS Elektronik, 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 January 20, 2021. On January 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 20, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 January 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2021. The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on March 3, 2021. 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. (jointly referred to as “PMI”). PMI is a leading international tobacco company, with products sold in approximately 180 countries. PMI’s unequalled brand portfolio contains brands like MARLBORO (outside of the United States of America and Canada), the world’s number one international selling cigarette brand since 1972. The Complainant owns a large portfolio of well-known trademarks. Among them, but by no means limited to, are the following trademark registrations: - International Registration HEETS (word/device) No. 1328679 registered on July 20, 2016, designating Albania, Armenia, Australia, Azerbaijan, Bahrain, Belarus, Bosnia and Herzegovina, Botswana, China, Colombia, Egypt, United States of America, Russian Federation, Philippines, Georgia, India, Iceland, Israel, Japan, Kenia, Kyrgyzstan, Liechtenstein, Morocco, Mexico, Monaco, Montenegro, Mozambique, Norway, New Zealand, African Intellectual Property Organization, Democratic People’s Republic of Korea, Republic of Moldova, Serbia, Singapore, Oman, Turkmenistan, Turkey, European Union, Ukraine, Uzbekistan, Viet Nam; - International Registration HEETS (word) No. 1326410 registered on July 19, 2016, designating Albania, Armenia, Australia, Azerbaijan, Bahrain, Belarus, Bosnia and Herzegovina, Botswana, China, Colombia, Egypt, United States of America, Russian Federation, Philippines, Georgia, India, Iceland, Israel, Japan, Kenia, Kyrgyzstan, Liechtenstein, Morocco, Mexico, Monaco, Montenegro, Mozambique, Norway, New Zealand, African Intellectual Property Organization, Democratic People’s Republic of Korea, Republic of Moldova, Serbia, Singapore, Oman, Turkmenistan, Turkey, European Union, Ukraine, Uzbekistan, Viet Nam. - International Registration IQOS (word) No. 1218246 registered on July 10, 2014, designating Antigua and Barbuda, Albania, Algeria, Armenia, Bosnia and Herzegovina, Bahrain, Belarus, Colombia, Cuba, Egypt, European Union, Georgia, Israel, India, Iceland, Kyrgyzstan, Kazakhstan, Morocco, Monaco, Republic of Moldova, Montenegro, Mongolia, New Zealand, Oman, Philippines, Serbia, Tunisia, Turkey, Ukraine, Viet Nam. The Domain Name was registered on January 7, 2021 and resolves to a website selling what appears to be the Complainant’s products and competing tobacco products and offering the Complainant’s IQOS System. 5. Parties’ Contentions A. Complainant The Complainant has registered trademark rights in HEETS. The Complainant submits that the Domain Name is confusingly similar to the Complainant’s HEETS trademark. The Complainant states that the addition of the descriptive word “elektronik” (in English “electronic”) reinforces the confusing similarity with the Complainant’s HEETS trademarks. The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant asserts that the Respondent is unable to demonstrate rights or legitimate interests in the Domain Name. The Respondent has not been allowed by the Complainant to make any use of its trademarks. Further, the Complainant alleges that the Complainant’s IQOS System is not currently sold in Turkey. Notwithstanding, the Respondent’s website is clearly purporting to be an official online retailer of the Complainant’s IQOS System in Turkey by using the Complainant’s trademark HEETS in the Domain Name together with the descriptive word “elektronik”. The Respondent’s website is prominently using the Complainant’s registered HEETS trademark in the heading of the website, being a location where users / relevant consumers usually expect to find the name of the online shop and/or the name of the provider of the website. Any user/ relevant consumer being confronted with the Domain Name and the Respondent’s website provided thereunder will usually expect to find the name of the online shop and/or the name of the provider of the website. The Complainant argues that the Respondent had knowledge of the Complainant and its products at the time of registration of the Domain Name. The Respondent registered and used the 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 HEETS trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on his website or location. It constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules requires the panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing: (i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and The Domain Name The generic Top-Level Domain (“gTLD") extension “.com” is generally not to be taken into consideration when examining the identity or similarity between the Complainant’s trademark and the Domain Name. Therefore, the Panel finds that the Domain Name is confusingly similar to the trademark HEETS in which the Complainant has rights, satisfying the condition of the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Domain Name. It is clear that the Respondent has not demonstrated any bona fide offering of goods and services for its use of the Domain Name, nor has the Respondent shown that it has been commonly known by the Domain Name. Rather, the evidence of the Complainant suggests that the Respondent has used the Domain Name in an attempt to trade off the goodwill associated with the Complainant’s trademark. The Complainant also showed, inter alia, that the Respondent has neither a license nor any other permission to use the Complainant’s trademark in the Domain Name or otherwise. The Respondent’s website has the look and feel to be an official site of the Complainant and is selling what appears to be HEETS and IQOS products with the Complainant’s logo displayed. It appears that a disclaimer was added on the very bottom of the website under the Domain Name after the Notification of Complaint stating: “This web generation is not officially affiliated with the Heets Brand. Published visuals and texts are used as representations.” The Panel notes that this disclaimer is not sufficiently prominent or noticeable and in any case was added just after the Complaint was notified to the Respondent. Accordingly, the disclaimer does not by itself grant legitimate rights or interests to the Respondent over the Domain Name as the addition of a disclaimer can only be a supportive factor of overall findings. A reseller or distributor can be making a bona fide offering of goods or services and thus have a right or legitimate interest in a domain name only if the following cumulative requirements are met (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, WIPO Overview 3.0, section 2.8.1): (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. These requirements are not cumulatively fulfilled in the present case. The Domain Name suggests that it is an official site of the Complainant or affiliated to or endorsed by the Complainant by stating the following “ürünlerimiz firmamız tarafından garantilidir” which reads in English as “our products are warranted by our company”. The website associated with the Domain Name extensively reproduces without authorization by the Complainant the Complainant’s trademarks and its official product images, while it includes a hardly visible, general and ambiguous disclaimer, without any statement as to the true ownership of the website under the Domain Name or the ownership of the trademarks by the Complainant and its (or lack of) relationship to the Respondent. The website under the Domain Name does not include any information regarding the identity of the provider of the associated website, which was only presented as “HEETS ELEKTRONIK”, including the Complainant’s registered HEETS trademark. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith Taking into account the Respondent’s use of the Domain Name, the Panel concludes that the Respondent was aware of the Complainant and its business when the Respondent registered the Domain Name. The Respondent has attempted to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. By reproducing the Complainant’s trademarks in the Domain Name and on the web page, the Respondent’s website suggests to be an affiliated dealer of the Complainant. This is supported by the Respondent’s use of the Complainant’s official product images and marketing materials. The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of 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 Domain Name, Dilek Ustun Ekdial
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Sole Panelist
Date: March 16, 2021
Full & Egal Universal Law Academy