The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Abuzer kadayif, Turkey.
2. The Domain Name and RegistrarThe disputed domain name,
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2021. On August 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 23, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 24, 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 August 25, 2021.
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 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 23, 2021.
The Center appointed Tony Willoughby as the sole panelist in this matter on September 30, 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.
The invitation to the Complainant to file an amendment to the Complaint stemmed from the fact that the registrant details of the Domain Name were redacted and not fully available in the public WhoIs at the time of the submission of the Complaint. In response to the Center’s registrar verification request, the Registrar disclosed the name and address of the entity in whose name the Domain Name is currently registered. The amended Complaint names the underlying registrant as the Respondent.
4. Factual BackgroundThe Complainant is a member of the group of companies headed by Philip Morris International Inc., a leading international tobacco company. In addition to its core business of production and sale of combustible cigarettes, the group of companies of which the Complainant forms part has since 2014 included the production and sale of non-combustible alternatives, which it markets under inter alia the trade marks IQOS and HEETS.
The Complainant is the registered proprietor of numerous trade mark registrations covering these trade marks. For present purposes it is only necessary to detail four of those registrations, all four of which are for tobacco-related goods in one or more of classes 9, 11 and 34 and in all of which Turkey, the Respondent’s home jurisdiction, is designated as one of the countries covered, namely:
- International Registration No. 1218246 IQOS (word) registered on July 10, 2014.
- International Registration No. 1461017 IQOS (figurative) registered on January 18, 2019.
- International Registration No. 1326410 HEETS (word) registered on July 19, 2016.
- International Registration No. 1328679 HEETS (figurative) registered on July 20, 2016.
The Domain Name was registered on August 7, 2021 and is connected to a Turkish language website promoting the sale of products purporting to be the Complainant’s products under and by reference to inter alia the trade marks IQOS and HEETS. Featured prominently at top left on the home page is the Complainant’s IQOS trade mark appearing in the stylized logo form covered by International Registration No. 1461017 detailed above. The prices on the website are quoted in Turkish lira. At the bottom of the home page is a copyright notice reading “© 2018 IQOS 3 DUO – IQOS Heets IQOS 3 DUO – IQOS Heets”.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the Domain Name is confusingly similar to its IQOS registered trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. GeneralAccording to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly SimilarThe Domain Name comprises the name “iqos”, followed by “dua3” and the “.com” generic Top-Level Domain identifier.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage:
“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
The Complainant’s IQOS trade mark is readily recognizable in its entirety in the Domain Name. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate InterestsThe Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. In support of that contention the Complainant asserts that it has no connection with the Respondent and has granted the Respondent no permission to use its IQOS trade mark. Furthermore, the Domain Name is not the name of the Respondent.
The Turkish language website to which the Domain Name is connected offers for sale products appearing to be the IQOS products of the Complainant and quoting prices in Turkish lira, even though, according to the Complainant, it does not supply its IQOS products to Turkey.
The screenshots of the Respondent’s website produced in evidence by the Complainant feature images of the Complainant’s products accompanied by a copyright notice crediting the Respondent. The Complainant asserts that the images are copyright images created by the Complainant. That may well be the case, but the Panel was unable to verify it from the evidence before it.
The Complainant correctly points out that, on its face, the Respondent’s website appears to be an official website of the Complainant. It features prominently the Complainant’s IQOS logo device and images of and text relating to the Complainant’s products, but contains nothing to indicate the true owner of the site.
The Panel accepts the Complainant’s assertion that it has not authorized the Respondent’s use of the IQOS trade mark in this or any other way. However, there are circumstances under which the unauthorized use of a third party’s trade mark in a domain name may give rise to the acquisition by a respondent of rights or legitimate interests in respect of that domain name. The issue frequently falls to be considered where, as here, the respondent is using the domain name to connect to a website selling the goods of the complainant.
The issue is addressed in Section 2.8.1 of the WIPO Overview 3.0:
“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’ [a test derived from the decision in Oki Data Americas, Inc. v. Asdinc.com,WIPO Case No. D2001-0903], 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.”
The Domain Name fails the Oki Data test in one important respect. While the website appears to be devoted exclusively to IQOS products, it also appears to be an official website of the Complainant. At any rate, there is nothing on the website to indicate that it is not such a website and the copyright notice, featuring as it does the primary trade marks of the Complainant in this area, is calculated to indicate a formal connection with the Complainant. The website does not “accurately and prominently disclose the registrant’s relationship with the trademark holder.”
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad FaithIn this case, the Domain Name is likely to be seen by many Internet users as a domain name of the Complainant and on entering the website they will find nothing there to disabuse them. They will be purchasing through that website, confident that they are dealing with the Complainant or at least an entity authorized by the Complainant.
Paragraph 4(b)(iv) of the Policy provides that a circumstance leading to a finding of bad faith registration and use under the Policy is where the Respondent has used the Domain Name intentionally to attract Internet users to the Respondent’s website for commercial gain “by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of [the] web site […]”.
Here, it is clear that the Respondent (a) registered the Domain Name for the purpose for which he has been using it and (b) has been using it in a manner calculated to induce visitors to his website to believe that they are trading with the Complainant or an entity authorized by the Complainant.
The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name,
Tony Willoughby
Sole Panelist
Date: October 12, 2021