WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Kazim Akgul
Case No. D2017-2521
1. The Parties
The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Kazim Akgul of Istanbul, Turkey, self-represented.
2. The Domain Names and Registrar
The disputed domain names <iqosdunyasi.com> and <iqosfiyat.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 19, 2017. On December 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 20, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 December 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 19, 2018. The Respondent sent an informal email communication on January 31, 2018.
The Center appointed Kaya Köklü as the sole panelist in this matter on February 5, 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 is part of the Philip Morris International Inc. group, which is a well-known group of companies 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. According to the provided documents in the case file, the Complainant is, inter alia, the registered owner of the International Trademark Registrations No. 1218246 (registered on July 10, 2014) and No. 1329691 (registered on August 10, 2016), both covering trademark protection, inter alia, for products as covered in classes 9 and 11.
The Complainant also owns and operates various domain names which incorporate the IQOS trademark, such as <iqos.com>.
The Respondent is an individual located in Istanbul, Turkey.
Both disputed domain names were registered on May 26, 2017.
The screenshots, as provided by the Complainant in the case file, show that the disputed domain name <iqosdunyasi.com> resolved to a website in the Turkish language, which was used for offering various kinds of IQOS smoking free products. On this website, the Respondent prominently used the IQOS figurative trademark as well as promotional pictures taken from the Complainant's website. Currently, the disputed domain name <iqosdunyasi.com> does not resolve to an active website.
According to own investigations carried out by the Panel, the disputed domain name <iqosfiyat.com> also resolves to a website in the Turkish language. On this website, users can find a collection of information on the Complainant's products. According to the copyright notice on that website, "IQOS TÜRKİYE", which means "IQOS TURKEY", is alleged to be the source of this information.
5. Parties' Contentions
The Complainant requests the transfer of the disputed domain names.
The Complainant is of the opinion that the disputed domain names are 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 names. It is rather argued that the disputed domain names falsely suggest 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 names 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 names, particularly as the Respondent prominently uses the Complainant's word and figurative IQOS trademarks on the websites linked to the disputed domain names without any disclosure of the missing relationship between the Complainant and the Respondent.
The Respondent did not reply to the Complainant's contentions.
However, on January 31, 2018, the Center received an email communication from the Respondent in Turkish language. In his email, the Respondent asserts to have shut down the website linked to the disputed domain names and stopped any active use. Furthermore, he asked for clarification on the subject matter of the dispute. However, the Respondent did not comment on the Complainant's contentions and did not file a specific request with regard to the administrative proceedings.
6. Discussion and Findings
According 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 names are 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 names; and
(iii) the disputed domain names have been registered and are 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 Complaint'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 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered trademark rights in the mark IQOS by virtue of various trademark registrations, including trademark registrations covering protection in Turkey, where the Respondent is located.
The Panel further finds that the disputed domain names are confusingly similar to the Complainant's registered IQOS trademarks, as they fully incorporate the Complainant's trademark. The mere addition of the descriptive terms "dünyasi" or "fiyat", which are Turkish terms and mean respectively "world of" and "price" in the English language, does, in view of the Panel, not serve to distinguish the disputed domain names from the Complainant's registered IQOS trademarks.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain names.
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 of evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain names 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 names 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 trademark IQOS in a confusingly similar way within the disputed domain names.
There is also no indication in the current record that the Respondent is commonly known by the disputed domain names. Furthermore, the Respondent has 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 names.
In this regard, the Panel is 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 names accordingly. The criteria as set forth in Oki Data are apparently not fulfilled in the present case. The Panel particularly notes that the Respondent's websites which are linked to the disputed domain names do not adequately disclose the relationship, or lack thereof, between the Respondent and the Complainant, thus creating the false impression that the Respondent might be an official and authorized distributor for the Complainant's products in Turkey. In view of the Panel, this takes the Respondent out of the Oki Data safe harbour for purposes of the second element. Moreover, the Panel notes that the disputed domain name <iqosdunyasi.com> does not currently resolve to an active website.
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 Faith
The Panel is further convinced that the Respondent has registered and is using the disputed domain names in bad faith.
The Panel notes the reputation and wide recognition of the Complainant's trademark IQOS in the field of water heaters. The Panel is convinced that the Respondent must have had this well-known trademark in mind when registering the disputed domain name.
It even appears that the Respondent has registered the disputed domain name solely for the purpose of creating an association with the Complainant, in particular with its smoke-free products. After having reviewed the Complainant's screenshots of the websites linked to the disputed domain names, the Panel is convinced that the Respondent has intentionally registered the disputed domain names in order to generate traffic to its own websites. The Panel notes that the Respondent has not published any visible disclaimer on the websites linked to the disputed domain names to explain that there is no existing relationship between the Respondent and the Complainant. Quite the opposite, the design of the websites linked to the disputed domain names, the prominent use of the Complainant's word and figurative IQOS trademark, the use of official promotional material of the Complainant and the use of a misleading copyright notice in the name of "IQOS TÜRKİYE" is sufficient evidence in view of the Panel that the Respondent intentionally tried to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant's IQOS trademark as to the source, sponsorship, affiliation or endorsement of its websites.
In any case, the Respondent does in view of the Panel not meet the Oki Data principles on various elements, namely lack of a disclaimer and misrepresenting itself as the trademark owner by prominently using the Complainant's logo and figurative trademark on its websites.
The fact that the disputed domain name <iqosdunyasi.com> is currently inactive does not prevent a finding of bad faith.
The Panel therefore concludes that the disputed domain names were registered and are 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.
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 names <iqosdunyasi.com> and <iqosfiyat.com> be transferred to the Complainant.
Date: February 19, 2018