WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Yüksel Kambal
Case No. D2019-1552
1. The Parties
The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Yüksel Kambal, Turkey.
2. The Domain Name and Registrar
The disputed domain name <iqos-tr.net> is registered with 1API GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2019. On July 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 4, 2019, 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 July 10, 2019 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 amended Complaint on July 12, 2019.
The Center verified that the Complaint together with the amended 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 July 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2019.
The Center appointed Eduardo Machado as the sole panelist in this matter on August 23, 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 to Philip Morris International Inc (“PMI”). and is the leading international tobacco company, with products sold in approximately 180 countries.
The Complainant has developed and is selling, since 2014, the IQOS, which is one of its Reduced Risk Products (“RRPs”). The IQOS is a precisely controlled heating device into which specially designed tobacco products under the brand names HEETS or “HeatSticks” are inserted and heated to generate a flavorful nicotine-containing aerosol. The IQOS system is available in key cities in around 44 markets across the world.
The IQOS system has been almost exclusively distributed through PMI’s official IQOS stores and websites and selected authorized distributors and retailers.
The Complainant is the owner of rights related to its IQOS system, including the composite mark IQOS (International Registration No. 1338099 and No. 1329691, registered on March 8, 2018 and on April 27, 2017, respectively), the word mark HEETS (International Registration No. 1326410, registered on August 24, 2017), and the composite mark HEETS (International Registration No. 1328679, registered on October 19, 2017).
The disputed domain name was registered on June 13, 2019. The disputed domain name currently points to a website that it is advertising and offering the Complainant’s supposed tobacco products as well as repair and maintenance services to the Complainant’s IQOS products.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is confusingly similar to the Complainant’s registered marks.
The Complainant argues that the disputed domain name reproduces the IQOS trademark in its entirety, in addition to the geographical abbreviation for Turkey, i.e., “tr”. The Complainant further alleges that the addition of the geographical term is not enough to prevent the association and confusion of the disputed domain name to the Complainant’s registered trademarks.
Moreover, the Complainant alleges that the possibility of confusion is exacerbated by the use of the Complainant’s official products images and marketing materials without the Complainant’s authorization in the disputed domain name <iqos-tr.net>.
In addition, the Complainant argues that the Respondent is not known or in any way related to the Complainant or any of its affiliates and was not authorized to use the IQOS trademarks.
The Complainant argues that it has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register any domain names incorporating its IQOS trademark. In this sense, the Complainant maintains that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and that the Respondent is using the disputed domain name in bad-faith, with the intention to obtain an unfair commercial gain by diverting the Complainant’s costumers.
Furthermore, the Complainant alleges that the website at the disputed domain name attempts to appear as an official online retailer of the Complainant’s IQOS system in Turkey by using the Complainant’s IQOS trademark in the disputed domain name and by using the Complainant’s registered logo at the top of the website.
The Complainant affirms that the Respondent’s misappropriation of the IQOS mark in the disputed domain name is no accident and that the Respondent chose to misuse the IQOS mark to divert Internet users from the Complainant’s websites by capitalizing on the public recognition of the Complainant’s rights related to the IQOS trademarks.
Finally, the Complainant argues that the Respondent registered and is using the disputed domain name in bad faith considering that the Respondent knew about the Complainant’s IQOS products and trademark rights related to such when registering the disputed domain name and, in this sense, registered the disputed domain name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s registered IQOS trademark.
Moreover, the Complainant mentions that the use of images of official products sold by the Complainant in the disputed domain name, along with the use of a privacy protection tool to hide the Respondent’s identity, can constitute a factor indicating bad-faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy states three elements, specified in paragraph 4(a), that must be established by the Complainant to obtain the requested relief. These elements are:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
Ownership of a trademark registration is generally sufficient evidence that a Complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1). As disclosed through Annex 06 of the Complaint, the Complainant is the owner of trademark registrations for the IQOS mark since 2017.
The disputed domain name incorporates, in its entirety, the Complainant’s IQOS mark, having only added the geographical abbreviation for Turkey, “tr”, which is insufficient to prevent the confusing similarity and association with the Complainant’s IQOS products and trademarks (see Philip Morris Products S.A. v. Perfect Privacy, LLC / Mustafa Anil Tunckol, WIPO Case No. D2018-0317).
In this sense, the disputed domain name consists of the reproduction of the Complainant’s marks (i.e., IQOS) along with the term “tr”, an abbreviation of the country Turkey, in order create user confusion when users attempt to access the Respondent’s website at the disputed domain name searching for the Complainant’s products. The Panel therefore finds that paragraph 4(a)(i) has been satisfied based upon the disputed domain name being confusingly similar to the Complainant’s IQOS mark.
In addition, the use of the generic Top-Level Domain (“gTLD”) “.net” is irrelevant in order to establish identity or confusing similarity between the disputed domain name and the Complainant’s trademark (see Topvintage.nl BV v. DOMAIN ADMIN, WIPO Case No. D2017-1019 (“the various gTLDs in each of the disputed domain names are commonly disregarded for the purposes of comparison in cases under the Policy on the grounds that they are required for technical reasons only”); see also Volkswagen AG v. Todd Garber, WIPO Case No. D2015-2175).
The Panel, thus, concludes that the Complainant has established the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
There is no evidence that the Respondent has, before any notice of the dispute, ever been commonly known by the disputed domain name nor has made or is making a legitimate noncommercial or fair use of the disputed domain name. On the contrary, the disputed domain name currently directs to a website which is apparently selling the Complainant’s products without any authorization from the Complainant.
In this regard, it is important to note that the Complainant has never authorized, licensed or permitted, in any way, the Respondent to register or use the disputed domain name, which entirely incorporates the Complainant’s IQOS trademark.
Considering the evidence on file and that the Respondent failed to send a Response to the Complaint, the Panel finds that there are no elements suggesting that the Respondent has or might have had rights or legitimate interests in respect of the disputed domain name.
The Panel, therefore, concludes that the Respondent has no rights or legitimate interests in the disputed domain name and, therefore, the condition established at paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the holder’s website or location.
The Panel finds that the circumstances described in paragraph 4(b)(iv) of the of the Policy fit those of the current proceeding.
The Complainant has proven that that the Respondent, by registering the disputed domain name which reproduces the entirety of the IQOS mark, did so with the clear intention of attracting the Complainant’s costumers to the disputed domain name for commercial gain, profiting off the Complainant’s registered IQOS mark and products, without the Complainant’s authorization.
The website at the disputed domain name is currently advertising what appears to be the Complainant’s products, and is making use of official images of the Complainant’s products, in a clear attempt of the Respondent to pass off as the Complainant’s reseller or representative in Turkey, which is not true and can be harmful not only to the Complainant but to its customers that are being misled by the Respondent.
Furthermore, the registration of the disputed domain name by the Respondent does not predate the Complainant’s earlier first use and registration of the IQOS marks. The Panel thus concludes that the Respondent has registered and is using the disputed domain name in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <iqos-tr.net> be transferred to the Complainant.
Date: August 29, 2019