WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Registration Private, Domains By Proxy, LLC / Ã§agri demirbas
Case No. D2018-1242
1. The Parties
Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Ã§agri demirbas of Ankara, Turkey.
2. The Domain Name and Registrar
The disputed domain name <iqooos.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2018. On June 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 5, 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 Complainant on June 12, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on June 13, 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 Respondent of the Complaint, and the proceedings commenced on June 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 6, 2018.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on July 23, 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
Complainant is a leading tobacco company, with sales in approximately 180 countries. In the course of transforming its business from combustible cigarettes to Reduced Risk Products (RPPs)1, Complainant has developed the IQOS RRP, which was introduced in 2014 and is available in 38 markets worldwide. It is not yet available for sale in Turkey. IQOS RRPs are only available through Complainant’s stores and websites, and through authorized distributors and dealers.
Complainant is the owner of various international trademark registrations for IQOS, designating different jurisdictions including Turkey, e.g. International Trademark No. 1218246 registered on July 10, 2014. Complainant also owns international trademark registrations for a stylized IQOS mark, and a hummingbird in flight logo.
Registration Private, Domains By Proxy, LLC is a privacy registration service provider, which acts as a front company for domain name registrants. The real owner is Ã§agri demirbas. (This decision will use “Respondent” to refer to both the named Respondent and the actual registrant.) The disputed domain name was registered on March 10, 2018.
Respondent has an active website under the disputed domain name <iqooos.com>, which is linked to an online shop allegedly offering for sale Complainant’s IQOS RRP, as well as other competing products. The website is in Turkish, Respondent’s home country. The website suggests a relationship with Complainant due to use of the stylized IQOS mark on the home page. Furthermore, in the “About Us” section, it says “As IQOS, we have been waiting for you …” (emphasis added). It also states “[w]ith more than a year of experience in the IQOS sector …”. It also uses Complainant’s hummingbird logo. The website does not acknowledge Complainant as the owner of the various international trademarks, and leaves the impression that it is affiliated with Complainant or an authorized user.
5. Parties’ Contentions
Complainant asserts that it has rights in the IQOS international trademarks. It contends that the disputed domain name is confusingly similar to Complainant’s mark because it consists of Complainant’s IQOS mark in its entirety, and that the only difference between Complainant’s mark and the disputed domain name is the misspelling of IQOS. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
A. Identical or Confusingly Similar
To satisfy paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.
Complainant has rights to the IQOS trademark through its various international trademark registrations, designating different jurisdictions including Turkey.
The disputed domain name is confusingly similar to Complainant’s IQOS mark. It contains Complainant’s IQOS mark in its entirety, then adds “oo” to create an intentional misspelling, which is typosquatting. Numerous UDRP decisions have held that the intentional misspelling of a trademark does not negate a finding of confusing similarity. See, e.g.,Wachovia Corporation v. Peter Carrington,
WIPO Case No.
Accordingly, the Panel finds that Complainant has rights in the IQOS mark and that the disputed domain name is confusingly similar to Complainant’s mark. Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Complainant alleges it has exclusive rights in the IQOS mark and has not authorized Respondent to register and use the disputed domain name <iqooos.com>. Despite the fact that Respondent refers to itself “as IQOS,” which gives the impression that Respondent is the trademark owner, Complainant states Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the IQOS mark.
Complainant also alleges that Respondent is not known under the mark, and Respondent has made no showing that it has any rights or legitimate interests in using the disputed domain name or a bona fide offering of goods or services under the mark. Respondent’s offer for sale of the IQOS products creates the impression that Complainant is currently offering its trademarked goods in Turkey, though it is not. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name. Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
It is difficult to conceive that Respondent did not know of Complainant’s mark and products when Respondent registered the disputed domain name. Complainant sells its IQOS products in 38 markets. All of this occurred before Respondent registered <iqooos.com> on March 10, 2018. Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant’s mark when Respondent registered the disputed domain name, and therefore registered it in bad faith. See, e.g., Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, in which the panel found it “inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant’s rights and interests”.
Intentional misspelling – typosquatting – has consistently been found to constitute bad faith, pursuant to Policy paragraph 4(b)(iii). See, e.g.,Neuberger Berman Inc. v. Alfred Jacobsen,
WIPO Case No.
D2000-0323. As set forth above, Respondent has engaged in typosquatting by making a small variation to Complainant’s IQOS mark and Complainant’s “www.iqos.com” website, which might result from the Internet user’s inadvertent error in typing Complainant’s domain name. Typosquatting is considered “virtually per se registration and use in bad faith” Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568. See alsoS.A.C.I. Falabella v. Hector Ramirez, Case No. DCO2015-0012 and cases sited therein. This prevents Complainant’s potential customers from finding Complainant’s products, which has the effect of disrupting Complainant’s business under paragraph 4(b)(iii) of the Policy.
Typosquatting also evidences Respondent’s attempt “to attract, for commercial gain, Internet users to [Respondent’s] web site… by creating a likelihood of confusion with the complainant’s mark as to the source sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on your web site or location”. Particularly as here, where Respondent refers to itself “as IQOS” and offers for sale products bearing Complainant’s IQOS mark, as well as other competing products, clearly Respondent is attempting to create the impression that it is affiliated with Complainant and is attracting users for commercial gain. This is in violation of paragraph 4(b)(iv) of the Policy.
This Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith in violation of paragraph 4(b) of the Policy.
Finally, it should be noted that there is a long line of UDRP decisions that found that Complainant has rights in the IQOS mark and that the disputed domain names are confusingly similar to Complainant’s mark, that the respondents have no rights or legitimate interests in the disputed domain names, and that the respondents have registered and used the disputed domain names in bad faith, and resulted in transfer of the disputed domain names to Complainant. See, e.g., Philip Morris USA Inc. v. Domains by Proxy / Ray A Board, WIPO Case No. D2016-0840. This decision is consistent with this line of previous UDRP decisions.
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 <iqooos.com> be transferred to Complainant.
Sandra A. Sellers
Date: August 3, 2018
1 Complainant defines RRPs as controlled heating devices into which specially designed tobacco products are inserted to generate a flavorful nicotine-containing aerosol, which has the potential to present less risk of harm to smokers who switch to these products as opposed to continuing to smoke traditionally cigarettes.