The Complainant is Philip Morris Products S.A., Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Domain Admin, Isimtescil.net / Whoisprotection.biz / Mahir Sultanov, 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 25, 2021. On October 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 26, 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 28, 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 amendment to the Complaint on October 28, 2021.
The Center verified that the Complaint together with the amendment to 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”).
The Center sent an email communication in English and Turkish to the parties on October 28, 2021 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Turkish. The Complainant sent an email to the Center requesting English to be the language of the proceeding on October 28, 2021. The Respondent did not comment on the language of the proceeding.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2021.
The Center appointed Kaya Köklü as the sole panelist in this matter on December 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 BackgroundThe 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 IQOS trademark registrations around the world, including in Turkey, where the Respondent appears to be located. According to the Complaint, the Complainant is, inter alia, the registered owner of the International Trademark Registration No. 1218246 (registered on July 10, 2014) and No. 1329691 (registered on August 10, 2016) for IQOS, covering trademark protection, inter alia, for electronic cigarettes as covered in classes 9 and 11 (Annex 5 to the Complaint).
The Complainant also owns and operates various domain names that incorporate the IQOS trademark, such as
The Respondent is reportedly located in Turkey.
The disputed domain name was registered on May 10, 2020.
The screenshots, as provided by the Complainant, show that the disputed domain name resolves to a website in the Turkish language, which is used for offering various kinds of IQOS smoke-free products and further competing third-party products (Annex 7 to the Complaint). On the associated website, the IQOS word mark as well as further registered trademarks and official product images of the Complainant are prominently used. Furthermore, the associated website provides for a copyright notice stating “© IQOS Türkiye Satış ve Teknik Servis Merkezi”, which is Turkish and means “© IQOS Turkey Sales and Technical Service Center” in the English language. At the very bottom of the associated website, there is a small printed notice in Turkish and English language indicating that the website is not officially affiliated with the IQOS trademark (Annex 7 to the Complaint).
5. Parties’ Contentions A. ComplainantThe Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is confusingly similar to its IQOS 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 with 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 particularly argues that the Respondent must have been well aware of the Complainant’s IQOS trademark, when registering the disputed domain name, particularly as the Respondent uses the Complainant’s IQOS trademark on the associated website and its official product images without authorization.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Language of the ProceedingThe 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 even to respond to the Complaint or respond to the Center’s communication about the language of the proceeding, even though communicated in Turkish and in English. The Panel notes that the Respondent was given the opportunity to respond in Turkish and that this opportunity remained unused by the Respondent.
Consequently, the Panel is convinced that the Respondent will not be prejudiced by a decision being rendered in English.
6.2. Substantive IssuesAccording 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 captured therein.
A. Identical or Confusingly SimilarThe Panel finds that the Complainant has registered trademark rights in the IQOS mark by virtue of various trademark registrations, including trademark registrations covering protection in Turkey, where the Respondent is reportedly located.
The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered IQOS trademark. In the Panel’s view, the disputed domain name contains a phonetically identical and, hence, a confusingly similar misspelling of the Complainant’s IQOS trademark. This assessment is further supported by the content of the website associated to the disputed domain name.
As stated at section 1.15 of the WIPO Overview 3.0, the content of a website associated to a disputed domain name is usually disregarded for the assessment of confusing similarity under the first element, but may in exceptional circumstances be considered by a panel, if it appears prima facie that the Respondent seeks to target a trademark through the disputed domain name.
In the present case, the content of the website associated to the disputed domain name is clearly showing the Complainant’s trademark and products and, hence, prima facie justifies the Panel’s conclusion for the purpose of the first element that the Respondent is targeting the IQOS trademark, having registered the disputed domain name due to its confusing similarity.
As further 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. In the present case, the mere addition of the country name “Türkiye” does not, in view of the Panel, serve to avoid a finding of confusing similarity between the disputed domain name and the Complainant’s IQOS trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe 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 IQOS trademark 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 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 adequately disclose the relationship, or rather the lack thereof, between the Respondent and the Complainant. The small disclaimer at the very bottom of the associated website (Annex 7 to the Complaint) is in view of the Panel not clear and sufficiently presented to prevent the false impression supported by the look and feel of the associated website that the Respondent might be an official and authorized distributor for the Complainant’s products in Turkey (particularly noting the prominent IQOS logo at the top of the website). The Panel further notes that the Respondent offers also third party competing products of other commercial origin for sale on the associated website, which, in the Panel’s view, this takes the Respondent out of the Oki Data safe harbour for purposes of the second element.
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 FaithIn 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 IQOS trademark in mind when registering the disputed domain name.
It rather appears that 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 associated website (Annex 7 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 further believes that the small disclaimer on the bottom of the associated website is not sufficient to explain in reasonable clarity that there is no existing relationship between the Respondent and the Complainant. Rather, the use of official product images of the Complainant and the IQOS trademark on the associated website as well as the nature of the disputed domain name is, in view of the Panel, compelling evidence that the Respondent intentionally tries to attract, for commercial gain, Internet users to its website by deliberately creating a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation or endorsement of its website. The use of the disputed domain name to sell third-party competing products further shows the Respondent’s bad faith.
In addition, the Panel is of the opinion that the Respondent’s failure to respond to the Complainant’s contentions also supports the conclusion that it has registered and is using the disputed domain name in bad faith. The Panel is convinced that, if the Respondent had legitimate purposes in registering and using the disputed domain name, it would have probably responded.
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. 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
Kaya Köklü
Sole Panelist
Date: December 17, 2021