The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Osman Albayrak, Turkey.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2021. On December 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 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 December 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 December 23, 2021.
The Center sent an email communication in English and Turkish to the parties on December 22, 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 December 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, and the proceedings commenced on December 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 18, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2022.
The Center appointed Kaya Köklü as the sole panelist in this matter on January 27, 2022. 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, among others, 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 6 to the Complaint).
The Respondent is reportedly an individual from Turkey.
The disputed domain name was registered on May 23, 2021.
The screenshots, as provided by the Complainant (Annex 8 to the Complaint), show that the disputed domain name resolves to a website in the Turkish language, which is used for offering repair and maintenance services for IQOS smoke-free heaters. On the website, the IQOS word and figurative mark as well as official product images of the Complainant are prominently used without any visible disclaimer describing the (lack of) relationship between the Parties (Annex 8 to the Complaint).
5. Parties’ Contentions A. ComplainantThe 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 between 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 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 prominently uses the Complainant’s IQOS trademark and official product images on the website associated to the disputed domain name, without authorization and any disclosure of the lack of relationship between the Complainant and the Respondent.
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 appears to be located.
The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s IQOS trademark. As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the additions of other terms would not prevent a finding of confusing similarity. The mere addition of the term “tamir”, (which is Turkish and means “repair” in the English language) does not, in view of the Panel, serve to prevent 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 and repair service 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 associated to the disputed domain name does not adequately disclose the relationship, or rather the lack thereof, between the Respondent and the Complainant. Quite the opposite, the prominent use of the Complainant’s IQOS trademark as well as official product images in addition to the nature of the disputed domain name is, in view of the Panel, sufficient evidence that the Respondent intentionally tries to create the false impression that the Respondent might be an official and authorized repair service for the Complainant’s products in Turkey. In the Panel’s view, this takes the Respondent out of the Oki Data safe harbour for purposes of the second element.
The Panel therefore concludes that the disputed domain name was registered and is 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.
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 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 8 to the Complaint), the Panel is convinced that the Respondent has intentionally registered the disputed domain name in order to generate traffic to his own website, by deliberately creating a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation or endorsement of his website.
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, he 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: February 9, 2022