The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Tarik Sucu, GPM, Turkey. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2019. On August 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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 5, 2019, 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 6, 2019.
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 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 4, 2019.
The Center appointed Tony Willoughby as the sole panelist in this matter on September 10, 2019. 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.
On September 18, 2019, the Panel, noting that the Domain Name features a combination of trade marks of both the Complainant and British American Tobacco, issued Procedural Order No. 1 inviting the Complainant “to provide the Panel (via the Center) with any form of assurance it may be able to obtain such that in the event that the Panel decides the case in favour of the Complainant, British American Tobacco would have no objection to the Domain Name being transferred to the Complainant”.
On September 26, 2019, the Respondent emailed the Center in the following terms: “Hello. I guess, you just want to domain? If there is not any other problem I can give the domains without discuss. Just I need 301 redirect to another domain. (new domain will not have any contents about Kent and GLO).” The Complainant then emailed the Center on September 27, 2019, indicating that it might request that the proceedings be suspended to allow settlement discussions to take place, but no such request has been made.
On September 27, 2019, British American Tobacco wrote to the Complainant confirming that they do not object to the Domain Name being transferred to the Complainant. 4. Factual Background
The 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 Complainant has since 2014 commenced the production and sale of non‑combustible alternatives, which it markets under the trade marks IQOS and HEETS.
The Complainant is the registered proprietor of numerous trade mark registrations covering those trade marks. For present purposes, it is only necessary to cite two of them, namely International Registrations covering Turkey, the home jurisdiction of the Respondent:
International Registration No. 1218246 IQOS (word) registered on July 10, 2014, in classes 9, 11 and, 34 for inter alia batteries for electronic cigarettes, electronic vaporizers and tobacco products.
International Registration No. 1326410 HEETS (word) registered on July 19, 2016, in classes 9, 11 and, 34 for a similar range of goods.
The Domain Name was registered on June 13, 2019, and is connected to a Turkish language website offering (or purporting to offer) products of the Complainant and British American Tobacco, the proprietor of the trade marks KENT and GLO, which also feature in the Domain Name. The homepage features a button labelled “cesitlere goz at”, which is translated by Google Translate as “look at the types”. The Panel clicked on that button and was redirected to a page at inviting the visitor to download Mobirise Web Builder. The homepage also features images of the Complainant’s and British American Tobacco’s products accompanied by buttons labelled “siparis ver”, which is translated by Google Translate as “order”. Each of those links leads to Mobirise Web Builder. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its IQOS and HEETS registered trade marks; 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. Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According 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 Similar
The Domain Name features prominently within it the Complainant’s IQOS and HEETS registered trade marks. Those trade marks being readily recognizable within the Domain Name, the Panel finds that the Domain Name is confusingly similar to trade marks in which the Complainant has rights. C. Rights or Legitimate Interests
The Respondent’s website is a Turkish language website hosted in the Palau country code Top-Level Domain (“ccTLD”) and purports to offer for sale products of the Complainant and British American Tobacco. Yet when one visits the website and clicks on the homepage link reading (in translation from the Turkish) “look at the types”, one is presented not with types of products indicated by the trade marks, but an advertisement for a website builder.
The Complainant asserts that its products are not sold in either Turkey or Palau. It further asserts that it has not granted the Respondent any permission to use its trade marks.
While there are circumstances under which it is permissible for a reseller of goods to use in a domain name the brand name of the product that it is reselling, the use must be fair and must amongst other things, accurately indicate its relationship with the trade mark owner. Guidance is to be found in section 2.8.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0”), which includes the following passage:
“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’, 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.”
On the evidence before the Panel the Respondent appears to be failing requirements (i) and (iii) in that it is not obvious to the Panel that the Respondent is selling any IQOS or HEETS branded products and, as asserted by the Complainant, the website does appear to be a website of the owners of the featured trade marks, namely the Complainant and British American Tobacco. There is nothing on the homepage to counteract that impression.
The Panel finds that the Complainant has made out a prima facie case, in other words a case calling for an answer from the Respondent. The Respondent has failed to provide a formal response.
In the absence of any explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
On the evidence before the Panel, it seems clear to the Panel that the Domain Name is on its face deceptive in that it indicates that it and any website to which it is connected is associated in some way with the products of the companies whose trade marks feature in it. In fact, as indicated in section 4 above, the Panel found nothing of that kind on visiting the website, merely a link to a website builder. Furthermore, the Domain Name and the website to which it is connected falsely implies an association between the holder of the Domain Name (i.e. the Respondent) and the Complainant and British American tobacco.
It seems inconceivable to the Panel that the Respondent can have any satisfactory explanation for his registration and use of the Domain Name. The Respondent has had an opportunity of providing an explanation, but has declined to do so. In the absence of any explanation from the Respondent, the Panel finds on the balance of probabilities that he registered the Domain Name for the purpose for which he is using it. It seems probable to the Panel that the links to Mobirise Website Builder (see section 4 above) generate revenue for the Respondent. Whether or not that is the case, in the view of the Panel registration and use of the Domain Name for the use that the Respondent is making of it cannot on any basis be regarded as anything other than abusive.
The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, and having regard to the terms of the letter from British American Tobacco (section 3 above), the Panel orders that the Domain Name be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: October 3, 2019
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