WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Unal Ocalan
Case No. D2019-1367
1. The Parties
The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Unal Ocalan, Turkey.
2. The Domain Name and Registrar
The disputed domain name <iqostrend.net> 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 June 14, 2019. On June 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 2019, 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 June 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2019.
The Center appointed Ian Lowe as the sole panelist in this matter on July 11, 2019. 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 of companies affiliated with Philip Morris International, Inc (“PMI”). PMI is an international tobacco company with products sold in around 180 countries. In 2014, PMI launched its IQOS System that comprises a device that heats tobacco sufficiently to generate a flavourful nicotine-containing vapour without burning the tobacco. The IQOS System is now available in key cities in around 44 markets around the world and approximately 7.3 million consumers worldwide have converted from smoking cigarettes to the IQOS System.
The IQOS System has been distributed almost exclusively through PMI’s official IQOS stores and websites and selected authorized distributors and retailers. It is not currently sold in Turkey.
The Complainant is the proprietor of a number of registered trademarks in respect of IQOS including International trademark number 1218246 IQOS, registered on July 10, 2014, designating around 35 territories including the European Union and Turkey; and International trademark number 1338099, in respect of the IQOS device mark (the “IQOS Logo”), registered on November 22, 2016, designating over 30 territories including the European Union and Turkey. The Complainant is also the proprietor of International trademark number 1331054, in respect of a turquoise bird device (the “Bird Logo”), registered on January 24, 2017, designating over 40 territories including the European Union and Turkey.
The disputed domain name was registered on January 31, 2018. It resolves to a website in the Turkish language (the “Website”) comprising an online shop purporting to offer the Complainant’s IQOS System for sale. The indicated prices are in Turkish lira. The Website prominently uses the IQOS mark and the IQOS Logo and Bird Logo at the top of its web pages and use copies of a number of the Complainant’s official product images. A copyright notice at the bottom of the Website claims copyright in the material on the Website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its IQOS trademark, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For this Complaint to succeed in relation to the disputed domain name the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
A. Identical or Confusingly Similar
The Complainant has uncontested rights in the IQOS trademark (the “Mark”), both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its use of the Mark over a number of years. Ignoring the generic Top-Level Domain (“gTLD”) “.net”, the disputed domain name comprises the entirety of the Mark, together with the word “trend”. In the view of the Panel, the addition of this term does not detract from the confusing similarity of the disputed domain name to the Mark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the disputed domain name. The Respondent has used the disputed domain name not in connection with a bona fide offering of goods or services, but for a website featuring the IQOS word mark and logo and the Bird Logo, purporting to offer IQOS products for sale without the authority of the Complainant. Furthermore, the Website features unauthorized copies of images of the Complainant’s products. The Respondent is not an authorized sales agent of the Complainant and the Complainant’s products are not for sale in Turkey, yet in the Panel’s view the use of the Complainant’s Mark and images falsely represents to Internet users that the Respondent is authorized by the Complainant to sell the products in Turkey. The Panel considers that such unauthorized activity on the part of the Respondent does not give rise to rights or legitimate interests in respect of the disputed domain name. The Respondent has chosen not to respond to the Complaint or to take any steps to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Since the Respondent has used the disputed domain name for a website prominently featuring the Complainant’s Mark and Bird Logo and has operated an online shop purporting to offer the Complainant’s products for sale, the Panel is in no doubt that the Respondent had the Complainant and its rights in the Mark in mind when it registered the disputed domain name. In light of the Respondent’s use of the Mark and copies of the Complainant’s images of its products, the Panel considers that the Respondent has registered and used the disputed domain name with a view to confusing Internet users into believing that the Website was associated with or authorised by the Complainant.
In the Panel’s view, the use of disputed domain name for such activity, clearly with a view to commercial gain, amounts to paradigm bad faith registration and use for the purposes of the Policy.
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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 <iqostrend.net> be transferred to the Complainant.
Date: July 15, 2019