WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Cihan Atalay
Case No. D2018-1879
1. The Parties
The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) of Burlington, Massachusetts, United States of America (“United States”) / Cihan Atalay of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <iqosturk.com> is 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 17, 2018. On August 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 18, 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 20, 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 20, 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 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2018. The Respondent submitted a brief email communication on August 20, 2018, in which he enquired about the proceeding. The Center provided the Respondent with an explanation about the proceeding. Apart from his informal email communication, the Respondent did not submit a formal response. Accordingly, on September 11, 2018, the Center notified the Parties that it would proceed to panel appointment.
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 name <iqosturk.com> was registered on January 11, 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 but labelled with the Complainant’s IQOS logo. The website is provided in Turkish and an indication of being a Turkish Sales Center is next to the use of the IQOS trademark and logo. Additionally, at the bottom the website provides a copyright notice claiming to belong to IQOS Turk.
5. Parties’ Contentions
The Complainant asserts that the disputed domain name reproduces the Complainant’s IQOS trademark in its entirety along with the descriptive geographic term “turk”. Accordingly, the disputed domain name is confusingly similar to the Complainant’s trademarks. The addition of a merely generic, descriptive or geographical wording to a trademark in a domain name would be normally insufficient in itself to avoid a finding of confusing similarity.
The Complainant affirms that it has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating the IQOS trademark. Thus, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Indeed the Complainant contends that the Respondent is misleadingly diverting consumers and not making a bona fide offering. In addition, the Complainant refers to the case Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 to support the Respondent’s non-bona fide undertaking. As such, by promoting third parties’ competing accessories and by attempting to impersonate or suggest affiliation with the Complainant, the Respondent intends to obtain a commercial gain. For the latter, the Complainant points out that the Respondent is using the IQOS mark on the website together with an indication on the top of the website of being a Turkish Sales Center. The Complainant notes that it is not currently offering IQOS branded products in Turkey while the website creates the false impression that the Complainant has launched its products in Turkey. In the Complainant’s view there is no clear indication as to the relationship between the Parties and impersonation or affiliation between the Parties arise from the appearance of the website.
With regard to the third element, the Complainant affirms that it is apparent that the 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.
Further, 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.
Finally, the Complainant contends that the use of a privacy protection service to hide the Respondent’s true identity may in itself constitute a factor indicating bad faith. This approach is to be applicable in the present case. Accordingly, the Respondent’s intention is to hide its true identity in order to uphold and strengthen the false impression that the website provided under the disputed domain name is endorsed with 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 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 has provided evidence of its IQOS trademark registrations in numerous jurisdictions, including Turkey.
The Complainant’s mark IQOS is completely reproduced and recognizable in the disputed domain name <iqosturk.com>. The addition of the term “turk” does not prevent a finding of confusing 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.
Accordingly, 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 name.
The evidence provided by the Complainant shows that the disputed domain name was used to forward the consumer to a website that purported to be an IQOS Turkish Sales Center. However, this country is not a market in which the Complainant offers its products, e.g., IQOS, nor is the Respondent a licensee or an authorized dealer to use the Complainant’s IQOS mark.
Moreover, the fact that the website fails to provide information about the publisher of the site gives rise to confusion. By not displaying such credentials the Respondent is creating confusion to the consumer who is given a false impression of being in an official site rather than the Respondent’s. The IQOS Turkish Sales Center notice depicted on the site is insufficient and confusing. Accordingly, with such an omission consumers may believe that the website belongs to the Complainant or is an official site. Creating confusion in the minds of the consumers as to an association between the website and the Complainant cannot be legitimate. This approach is in line with the Complainant’s allegations and the case Oki Data Americas, Inc. v. ASD, Inc., supra.
Furthermore, the website at the disputed domain name sells competing accessories of third parties.
Under these circumstances and 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 reply to the Complainant’s contentions. 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
Upon the conclusions on the previous requirements the Panel finds that the registration was in bad faith. By incorporating the Complainant’s marks in the disputed domain name and by using its brand and image on the corresponding website, the Respondent must have had the Complainant or its trademarks in mind when selecting the disputed domain name for registration. See Philip Morris Products S.A. v. Contact Privacy Inc. Customer 0150128648 / Chen Yu Chen, HeatShopUSA, supra.
With regard to the use of the disputed domain name the Panel has looked at the screenshots of the Respondent’s website produced by the Complainant in the case file. The Panel finds that the Respondent 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 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 is to be pointed out that the specific reference of being an IQOS Turkish Center on the Respondent's website supports such a finding.
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 name <iqosturk.com> be transferred to the Complainant.
Date: September 28, 2018