The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Cihan Bayrak, Elit, Turkey.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2021. On October 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 6, 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 October 7, 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 October 8, 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 October 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 12, 2021.
The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on November 18, 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 Complainant is Philip Morris Products S.A., a Swiss company and a subsidiary of Philip Morris International, Inc., the leading international tobacco and smoke-free products company, with products sold in approximately 180 countries. The Complainant has developed the IQOS system, a precisely controlled heating device into which tobacco products are inserted and heated to generate a flavourful nicotine containing aerosol.
The IQOS system was first launched in 2014 in Japan and today is available in around 67 markets around the world, being distributed through official stores and websites and selected authorized distributors and retailers.
The Complainant owns several trademark registrations for IQOS around the world, including the International trademark registration No. 1218246, for the mark IQOS (word), registered on July 10, 2014, as well as the International registration No. 1338099, for the mark IQOS (device), registered on November 22, 2016, both of them designating Turkey.
The disputed domain name was registered on September 14, 2021 and the website resolves to an online shop allegedly offering the Complainant’s IQOS system, in Turkish.
5. Parties’ Contentions A. ComplainantThe Complainant argues that the disputed domain name incorporates the Complainant’s registered trademark IQOS, with the addition of the non-distinctive term “tek”, which could be informally translated from Turkish as “single”. According to the Complainant, the addition of this word would be insufficient to avoid a finding of confusing similarity with the Complainant’s trademark.
The Complainant alleges that the Respondent registered the disputed domain name without authorization, is not known or in any way related to the Complainant and that it lacks any right or legitimate interest in respect to the disputed domain name.
In addition, the Complainant says that the Respondent’s use of the disputed domain name or preparation to use the disputed domain name demonstrates no intent to use it with a bona fide offering of goods or services. On the contrary, the Respondent’s behavior shows a clear intent to obtain unfair commercial gain.
The Complainant demonstrates that the disputed domain name is linked to an online store offering, in the Turkish language, the Complainant’s IQOS system as well as tobacco products and other accessories from other competitors. Since the Complainant’s IQOS system is not currently sold in Turkey and the website reproduces IQOS trademark and its logo, in addition to the Complainant’s official materials and images, it gives a false impression of an affiliation with the Complainant.
The Complainant adds that the website linked to the disputed domain name includes no information regarding the identity of the respective provider.
According to the Complainant, it is evident that the Respondent knew of the Complainant’s trademark when registering the disputed domain name. The term IQOS is not commonly used to refer to tobacco products. Besides, by reproducing the Complainant’s trademark in the disputed domain name and in the title of the website, the Respondent’s website suggests the Complainant or an affiliated dealer as the source of the website, which is not true. Finally, the fact that the Respondent is using a privacy protection service to hide its true identity may indicate bad faith.
The Complainant requests the transfer of the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsAs per paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly SimilarThe evidence presented demonstrates that the Complainant is the owner of several trademark registrations for IQOS around the world, including International registrations also designating Turkey, where the Respondent is located.
The Complainant’s trademarks predate the disputed domain name.
The disputed domain name incorporates the Complainant’s trademark IQOS in its entirety. The addition of the term “tek” (translated as “single” from Turkish) does not avoid confusing similarity between the disputed domain name and the Complainant’s trademark. In this regard, it is the general view among UDRP panels that the addition of merely dictionary, descriptive or geographical words to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP (for example, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110).
Also, as numerous prior UDRP panels have already recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate InterestsThe Respondent has not submitted a response to the Complaint.
There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register domain names containing the trademark IQOS.
There is no evidence that the Respondent is commonly known by the disputed domain name.
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Instead, there is enough evidence in the Complaint that the disputed domain name was registered and used with the intention of attracting Internet users, for commercial gain, creating a likelihood of confusion with the Complainant’s trademark IQOS.
The Panel finds that the use of the disputed domain name, which incorporates the Complainant’s trademark, to allegedly offer for sale Complainant’s IQOS products along with other competing products, does not correspond to a bona fide use of the disputed domain name under the Policy.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithThe trademark IQOS is registered by the Complainant in several jurisdictions as per the documents presented in the Complaint.
The disputed domain name incorporates the Complainant’s trademark IQOS in its entirety and the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant’s IQOS mark is very distinctive and the term “iqos” has no relation with tobacco products. Thus, a domain name that comprises such a mark and resolves to a website disclosing tobacco related products is already suggestive of the registrant’s bad faith.
The addition of the descriptive term “tek” (“single”) to a disputed domain name linked to a website in the Turkish language is indeed very likely to mislead Internet users into believing that the disputed domain name belongs to the Complainant in Turkey. The present case seems to indicate that the Respondent has taken advantage of the fact that the Complainant does not currently sell products in Turkey to unduly obtain some commercial gain.
In addition, the Respondent still reproduced in the website the trademark IQOS and official material from the Complainant. Therefore, it seems clear that the Respondent’s intention was to make profit by deceiving Internet users.
Moreover, the Respondent has chosen not to respond to the Complainant’s allegations. In these circumstances, and as found in the UDRP panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”.
Therefore, this Panel concludes that the Respondent has intentionally attempted to obtain any kind of commercial gain with the registration of the disputed domain name.
This Panel finds that the Respondent’s attempt of taking undue advantage of the trademark IQOS as described in paragraph 4(b)(iv) of the Policy has been demonstrated.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith.
7. DecisionFor 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,
Mario Soerensen Garcia
Sole Panelist
Date: December 1, 2021