WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Yuksel Kambal
Case No. D2018-1873
1. The Parties
The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Yuksel Kambal of Istanbul, Turkey.
2. The Domain Names and Registrar
The disputed domain names <iqosmy.net> and <iqosmy.org> 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 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 names. On August 17, 2018, 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 August 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 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 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 reduce risk products such as smoke-free products. One of such products is branded as IQOS, a controlled heating device into which a 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:
Date of registration
July 10, 2014
August 10, 2016
The disputed domain names <iqosmy.net> and <iqosmy.org> were registered on July 4, 2018.
According to the evidence in the Complaint, both disputed domain names resolve to online shops that purport to be an online store offering both the Complainant’s products and other competing accessories of third parties. The websites associated with the disputed domain names do not show any details regarding the identity of the entity or person responsible for the site.
The website provided on <iqosmy.net> refers to the website “www.iqos.com.tc” at the bottom of the website. The URL “www.iqos.com.tc” forwarded to a website provided by <iqosmy.org> which resolved to an online IQOS website shop. However, the Panelist has checked the site to which <iqosmy.org> resolves and is currently inactive and on the other hand, the URL “www.iqos.com.tc” is redirecting these days to a Complainant’s competitive third party website, e.g., “www.myjoyetech.com”.
5. Parties’ Contentions
The Complainant alleges to be the owner of the IQOS trademarks in a number of jurisdictions. Accordingly, the disputed domain names are confusingly similar to the Complainant’s trademarks. 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 disputed domain name incorporating its IQOS trademark.
Further, the corresponding websites to which the disputed domain names resolve 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 trademarks, as the domain names reproduce the IQOS trademark in its entirety together with the generic term-adjective “my”. 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. The Complainant notes that both websites use the title “IQOS Türkiye” (meaning “IQOS Turkey” in English).
In respect to the third element the Complainant affirms that it is apparent that the Respondent’s use of the disputed domain names shows that the Respondent knew of the Complainant’s IQOS trademarks when registering the disputed domain names.
In addition, the Respondent registered and used the disputed domain names with the intention to attract, for commercial gain, Internet users to the websites by creating a likelihood of confusion with the Complainant’s IQOS trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of a product on the Respondent’s websites. By reproducing the Complainant’s trademark in the disputed domain names and prominently displaying the Complainant’s registered logo at the top of the websites as well as using the Complainant’s official product images, the Respondent’s websites clearly suggest that the websites under the disputed domain names belong to the Complainant or is an official affiliated dealer endorsed by the Complainant.
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 names to the Complainant, it is necessary that the Complainant proves, as required by paragraph 4(a) of the Policy, that:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are 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 holds registrations for the IQOS trademark, as set out in section 4 above.
Both disputed domain names include the IQOS trademark and the adjective “my”. Accordingly, the Complainant’s mark IQOS is completely reproduced and recognizable in the disputed domain names <iqosmy.org> and <iqosmy.net>. The addition of the adjective “my” does not prevent a finding of confusingly similarity. See 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 generic
Top-Level Domains (“gTLDs”) are typically irrelevant to the consideration of identity or confusing similarity between a trademark and a domain name.
Therefore, the first requirement is met under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In relation to paragraph 4(a)(ii) of the Policy, the Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed domain names. As such, the Respondent has not been licensed or otherwise authorized to use the Complainant’s IQOS mark.
Further, the evidence provided by the Complainant shows that the disputed domain names were used to forward the consumer to websites 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. However, the fact that the websites fail to provide information about the publisher of the sites gives raise to confusion. By no displaying such credentials the Respondent is creating confusion to the consumers who are suggested to be on official site rather than the Respondent’s. With such an omission consumers may believe that the websites belong to the Complainant or are official sites. However, this is not the case. Creating confusion in the minds of the consumers as to an association between the websites and the Complainant cannot be legitimate.
Further, the corresponding sites are selling other competitive products other than the Complainant’s. Such use cannot be called legitimate for the purpose of the Policy.
To support these findings see Oki Data Americas, Inc. v. ASD, Inc., supra.
According to 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
The Panel finds that by incorporating the Complainant’s mark in the disputed domain names and by using them, its brand and image in the corresponding websites, the Respondent was trying to, misleadingly, imply that it is the Complainant or affiliated with the Complainant. Under these circumstances and in respect to the registration of the disputed domain names the Panel reaches the conclusion that the Respondent must have had the Complainant or its trademark in mind when selecting the disputed domain names. See Philip Morris Products S.A. v. Contact Privacy Inc. Customer 0150128648 / Chen Yu Chen, HeatShopUSA, WIPO Case No. D2018-0601.
With regard to the use of the disputed domain names the Panel has looked at the screenshots of the Respondent’s websites provided as evidentiary documents by the Complainant. The Panel finds that the Respondent registered the disputed domain names to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of such websites. The Panel finds that the Respondent has attempted to impersonate or create an impression of affiliation with the Complainant, while no authorization or license had been granted by the Complainant.
It follows that the disputed domain names have been registered and are 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.
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 <iqosmy.net> and <iqosmy.org> be transferred to the Complainant.
Date: September 27, 2018