The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Emin Abbasov, EMKA Aksesuar Ltd. Sti., 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 March 19, 2021. On March 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 22, 2021, 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 March 22, 2021, 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 March 23, 2021. The Registrar indicated that the language of the Registration Agreement was Turkish. The Center sent an email communication to the Complainant in English and Turkish on March 22, 2021, 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. The Complainant filed a request for English to be the language of proceedings on March 23, 2021. 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 of the Complaint in English and Turkish, and the proceedings commenced on March 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 21, 2021. The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on April 28, 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 part of the group of companies affiliated to Philip Morris International Inc. Philip Morris International Inc. is one of the leading international tobacco companies, with products sold in approximately 180 countries. The Complainant is selling smoke-free cigarettes under its IQOS brand and owns several international trademark registrations for IQOS including the following: - International Registration No. 1218246 for the trademark IQOS designating Turkey, registered on July 10, 2014, covering tobacco products and electronic cigarettes, in classes 9, 11, and 34; - International Registration No. 1338099 for the trademark IQOS device designating Turkey, registered on November 22, 2016, covering tobacco products and electronic cigarettes, in class 35. The disputed domain name was registered on September 12, 2019, and resolves to an active website in Turkish offering repair services for the Complainant’s products. 5. Parties’ Contentions A. Complainant The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s trademark IQOS and that the addition of the non-distinctive term “tamiri” and the geographical term “istanbul” do not prevent a finding of confusing similarity between the disputed domain name and the trademark IQOS. The Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, mainly because the Complainant has neither licensed nor otherwise authorized the Respondent to use its marks or to apply for or use any domain name incorporating the trademark IQOS. The Complainant further asserts that the conditions of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 for a bona fide offering of goods or services by a third party are not satisfied. Finally, in addressing the question of registration and use of the disputed domain name in bad faith, the Complainant observes that the Respondent is well aware of the Complainant’s trademark considering that the Respondent is using the Complainant’s IQOS logo and the respective product images with copyright indication giving impression that they are owned by the website provider and that the Respondent’s website clearly suggests that the website belongs to the Complainant or is an official affiliated operator endorsed by the Complainant. The fact that the website does not provide any information on the true identity of the website provider clearly shows that the Respondent intentionally creates the impression that the products offered on the Respondent’s website are provided by the Complainant or at least an official authorized repair operator by misleading users on the source of the website and thereby attracting, for commercial gain, Internet users to the website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. The Registrar has confirmed that the language of the registration agreement is Turkish. The Complaint was filed in English and the Complainant has requested English to be the language of the proceeding on the grounds that: - past UDRP panels have accepted English as the language of the proceeding in similar circumstances; - the disputed domain name is composed of Latin script, rather than Turkish script; and - the Complainant has no knowledge of Turkish, and so the Complaint was filed in English being a common language in global business in which the Respondent is doing business; In view of the above, the Complainant contends that the Respondent must necessarily be familiar with the English language. Paragraphs 10(a) and (b) of the Rules vest the panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated equality and each party is given a fair opportunity to present its case. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost-effective manner. The Respondent did not comment on the language or express any interest in participating in the proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint and its annexes into Turkish, would lead to undue burdens being placed on the Complainant and undue delay to the proceeding, which is supposed to be an inexpensive and expeditious avenue for resolving domain name disputes. Having considered all the matters above, the Panel determines under paragraph 11 of the Rules that the language of the proceeding shall be English. 6.2. Substantive Issues Paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove, during the administrative proceedings, to merit a finding that the disputed domain name be transferred to the Complainant: (a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (c) the disputed domain name has been registered and is being used in bad faith. Pursuant to paragraph 15(a) of the Rules, the Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. As indicated above, the Complainant holds several trademark registrations for the IQOS trademark. The disputed domain name integrates the Complainant’s IQOS trademark in its entirety. The disputed domain name also includes the additional descriptive term “tamiri” which means “repairs” in the Turkish language and the geographical term “istanbul”. Several UDRP panels have ruled that the mere addition of a term (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity between a disputed domain name and a complainant’s registered trademark. Therefore, it is the Panel’s view that the use of such words together with a registered trademark does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark (see, e.g., Société des Produits Nestlé S.A. v. MrToys.com LLC,WIPO Case No. D2012-1356; Allianz SE v. Roy Lee / Traffic-Domain.com,WIPO Case No. D2012-1459; Swarovski Aktiengesellschaft v. mei xudong,WIPO Case No. D2013-0150; and Swarovski Aktiengesellschaft v. www.swarovski-outlet.org,WIPO Case No. D2013-0335). As regards to the generic Top-Level Domain (“gTLD”) “.com”, it is typically disregarded under the confusing similarity test under the Policy. Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests The onus is on the Complainant to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and it is then for the Respondent to rebut this case. Although the Respondent did not file a Response, a respondent’s default does not automatically result in a decision in favor of the complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 and the cases cited therein. However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. As there appear to be no exceptional circumstances for the failure of the Respondent to submit a Response in this case, the Panel infers that the Respondent does not deny the facts asserted and contentions made by the Complainant. Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441. A number of UDRP decisions have addressed the question of when a reseller’s use of a mark constitutes a bona fide offering of goods or services. The general view on this was articulated in Oki Data Americas, Inc. v. ASD, Inc., supra. See WIPO Overview 3.0 at section 2.8. In that case, the panel concluded that for a respondent to demonstrate that a resale offering was bona fide, the following conditions must be met: - the respondent must actually be offering the goods or services at issue; - the respondent must use the corresponding website to sell only the trademarked goods, otherwise there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods; - the site itself must accurately disclose the respondent’s relationship with the trademark owner, i.e., respondent may not falsely suggest that it is the trademark owner, or that the website is the official site, if that is not the case; and - the respondent must not try to “corner the market” in all relevant domain names, or deprive the trademark owner of reflecting its own mark in a domain name. In this case, it appears from the website, the Respondent has been operating its business of repairing electronic cigarettes under the disputed domain name. Moreover, the Respondent is using the IQOS logo together with a telephone number underneath and is using the product images of the Complainant with an indication of a copyright notice giving the false impression that the Respondent is affiliated with the Complainant, or it is an authorized repair operator of the Complainant in Turkey. Lastly, the website of the Respondent does not provide any information regarding its ownership, and also the website does not have any indication regarding the relationship or lack thereof with the Complainant. In addition, the Panel notes that the nature of the disputed domain name carries a risk of implied affiliation with the Complainant’s trademark. See section 2.5.1 of the WIPO Overview 3.0. For these reasons, the Panel concludes that the Respondent is not making use of the disputed domain name in connection with a bona fide offering of goods or services. In the Panel’s view the Complainant has made out its prima facie case under this element of the Policy and the Respondent has failed to rebut it. Accordingly, the Complaint succeeds in relation to the second element of the Policy. C. Registered and Used in Bad Faith Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Considering the Panel’s finding under the second element, the Panel finds that the registration and use of the disputed domain name falls under the circumstances described under paragraph 4(b)(iv) of the Policy, namely, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by seeking to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Another relevant point is that the Complainant does not currently offer for sale its IQOS branded products in the territory of Turkey whereas the disputed domain name includes the descriptive term “tamiri” (which means “repairs”) in the Turkish language and, as stated above, the disputed domain name website claims to be the affiliated with and authorized to repair the Complainant’s IQOS products, which gives the false impression that the Respondent is the Complainant’s official and authorized repair service operator in the Turkish market. Lastly, there is no disclaimer on the webpage connected to the disputed domain name regarding the relationship between the Complainant and the Respondent or the lack thereof. Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by the Complainant. 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 Emre Kerim Yardimci
Sole Panelist
Date: May 19, 2021
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