WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Kostas Martakis

Case No. D2018-1868

1. The Parties

The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.

The Respondent is Kostas Martakis of Kavala, Greece.

2. The Domain Name and Registrar

The disputed domain name <iqos-plus.com> is registered with Realtime Register B.V. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 16, 2018. On August 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 17, 2018, 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 August 17, 2018 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 August 17, 2018.

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").

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 10, 2018.

The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on September 19, 2018. 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 Background

The Complainant Philip Morris Products, S.A. is part of the group Philip Morris International, Inc., a leading international tobacco company having business in approximately 180 countries.

The Complainant has innovated, developed and sold a number of products such as smoke-free products. One of such products is branded as IQOS, a controlled heating device into which specially designed tobacco products under the trademarks HEETS and HEATSTICKS are inserted and heated to generate a flavourful nicotine-containing aerosol.

The Complainant is the owner of the following International Trademark Registrations, among others:

The disputed domain name <iqos-plus.com> was registered on January 23, 2018.

The disputed domain name resolves to a website that purports to be an online store offering both the Complainant's products and other competing accessories of third parties for delivery in Turkey.

5. Parties' Contentions

A. Complainant

The Complainant alleges to be the owner of the IQOS trademarks in a number of jurisdictions. Accordingly, the disputed domain name is confusingly similar to the Complainant's registrations. The addition of a merely generic, descriptive o geographical wording to a trademark in a domain name would be normally insufficient in itself to avoid a finding of confusingly similarity.

With regard to the second requirement, the Complainant asserts that it has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the domain name incorporating its IQOS trademark.

Further, the corresponding website to which the disputed domain name resolves does not meet the requirements set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

A reseller or distributor can be making a bona fide offering of goods or services and thus have a legitimate interest in the domain name at issue only if certain requirements are met. The Complainant claims that the Respondent is not only promoting the Complainant's products but also competing accessories of other commercial origin. This in itself prevents the finding of a bona fide offering of goods on behalf of the Respondent.

The Complainant also argues that the Respondent suggests an affiliation with the Complainant and its IQOS trademark, as the domain name reproduces the IQOS trademark in its entirety together with the generic marketing term "plus". However, this is not the case. Further, the Complainant points out that currently it is not offering its IQOS branded products in Turkey and the Respondent is creating the false impression to be an official site when this is not the case.

In respect to the third element the Complainant affirms that it is apparent that Respondent's use of the disputed domain name shows that the Respondent knew of the Complainant's IQOS trademarks when registering the disputed domain name.

In addition, the Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant's IQOS trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of a product on the Respondent's website.

By reproducing the Complainant's trademark in the disputed domain name and prominently displaying the Complainant's registered logo at the top of the website as well as using the Complainant's official product images, the Respondent's website clearly suggests that the website under the disputed domain name belongs to the Complainant or is an official affiliated dealer endorsed by the Complainant.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

In order for the Panel to decide to grant the remedy of transfer of the disputed domain name to the

Complainant, it is necessary that the Complainant proves, as required by paragraph 4(a) of the Policy, 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.

There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Under paragraph 14(a) of the Rules in the event of such a "default" the Panel is still required "to proceed with a decision on the complaint", whilst under paragraph 14(b) it "shall draw such inferences there from as it considers appropriate". This dispute resolution procedure is accepted by the domain name registrant as a condition of registration. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate.

A. Identical or Confusingly Similar

The Complainant's mark IQOS is completely reproduced and recognizable in the disputed domain name <iqos-plus.com>. The addition of the term "plus", does not prevent a finding of confusing similarity. See paragraph WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8.

Further, it is well established in decisions under the UDRP that indicators for generic Top-Level Domains ("gTLDs") are typically irrelevant to the consideration of identity or confusing similarity between a trademark and a domain name.

Accordingly, the first requirement is met under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has not licensed or otherwise permitted the Respondent's use of any of its trademarks.

The evidence provided by the Complainant shows that the disputed domain name was used to redirect to a website that purported to offer IQOS products for delivery in Turkey. However, this country is not a market in which the Complainant offers its products, e.g. IQOS. Further, the corresponding site sells other competitive products other than the Complainant's. Such use cannot be called legitimate for the purpose of the Policy.

Moreover, the website fails to recognize any relationship between the Complainant and the Respondent. Such a silence suggests that the website belongs to the Complainant or is an official site. However, this is not the case. Creating confusion in the minds of the consumers as to an association between the website and the Complainant cannot be legitimate.

According to the WIPO Overview 3.0, section 2.1: "[W]here a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name." However the Respondent did not file a response to the Complaint. Thus, the Respondent did not come forward with such appropriate allegation or evidence before the Panel.

The Complainant has therefore demonstrated that the Respondent lacks rights or legitimate interests in the disputed domain name to the satisfaction of the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

In the Panel's opinion the Respondent targeted the Complainant's mark. The Panel finds that the composition of the disputed domain name effectively impersonates or suggests sponsorship or endorsement by the Complainant. Further, the Respondent's website is used to misleadingly imply that it is the Complainant or affiliated otherwise with the Complainant, whereas that is not the case.

Accordingly, the Panel finds that the evidence demonstrates that the Respondent must have had the Complainant or its trademarks in mind when selecting the disputed domain name. See Philip Morris Products S.A. v. Contact Privacy Inc. Customer 0150128648 / Chen Yu Chen, HeatShopUSA, WIPO Case No. D2018-0601.

With the evidence produced by the Complainant, the Panel is of the view that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a)(iii) of the Policy. In these circumstances, the Panel finds that the Respondent intentionally registered the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement of such website and consequently that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

Consequently, the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.

7. Decision

For 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 <iqos-plus.com> be transferred to the Complainant.

Manuel Moreno-Torres
Sole Panelist
Date: September 24, 2018