WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Registration Private, Domains By Proxy, LLC / Kadir Sayir, Kadir

Case No. D2019-2348

1. The Parties

The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Kadir Sayir, Kadir, Turkey.

2. The Domain Name and Registrar

The disputed domain name <iqoskibris.net> 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 September 26, 2019. On September 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 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 September 30, 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 October 1, 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 October 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2019.

The Center appointed Knud Wallberg as the sole panelist in this matter on October 30, 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 Philip Morris Products S.A. is an affiliated company of Philip Morris International Inc. (jointly referred to as “PMI”), a leading international tobacco company, with products sold in approximately 180 countries.

IQOS is one of PMI’s brands, which are developed and used for smoke-free tobacco products. IQOS was first introduced in Nagoya, Japan in 2014 and now is available in around 40 markets across the world. The IQOS products have been almost exclusively distributed through PMI’s official IQOS stores, websites, selected authorized distributors and retailers. The IQOS system also consists of an IQOS Pocket Charger, specially designed to charge the IQOS Holder (collectively referred to as the IQOS System).

The trademark IQOS has been registered for goods in international class 34 in a variety of countries, including in Turkey, where the Respondent resides, under International Registrations No. 1218246 dated July 10, 2014, and No. 1338099 dated November 22, 2016.

The Respondent registered the disputed domain name <iqoskibris.net> on December 12, 2018. As of the date of this Decision the disputed domain name is used to redirect to a web shop at “www.iqosavm.com” that allegedly offers the Complainant’s IQOS System, as well as competing third party accessories to this system. However, the disputed domain name used to resolve to an identical web shop at “www.iqoskibris.net”.

5. Parties’ Contentions

A. Complainant

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant contends that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights, since the disputed domain name reproduces the registered trademark IQOS in its entirety. The addition of the geographical indication “kipris” and the addition of the generic Top-Level Domain “gTLD” suffix “.net” in the disputed domain name does not dispel a likelihood of confusion.

2. The Respondent has no rights or legitimate interests in respect of the domain name.

The Complainant further submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is neither a licensee of the Complainant, nor otherwise authorized to use the Complainant’s IQOS trademark.

Also, the Respondent has not made use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.

The disputed domain name itself suggests an affiliation with the Complainant and its IQOS trademark, as the domain name reproduces the IQOS trademark in its entirety together with the geographical indication “kipris” (Cyprus), which is an attempt to indicate that the website provided under the disputed domain name is an official online store for IQOS branded products.

Moreover, the fact that the Respondent is not only offering the Complainant’s products but also competing tobacco accessories and/or products of other unknown commercial origin is in itself sufficient to exclude a legitimate interest in the form of a bona fide offering of goods.

The Complainant further points out that the illegitimacy of the Respondent’s use of the disputed domain name is further shown by the fact that the Complainant does not currently offer for sale its IQOS System in the territory of Turkey, and that the online shop provided under the disputed domain name creates the false impression that the Complainant has officially introduced the IQOS System into the Turkish market.

3. The domain name was registered and is being used in bad faith.

The Complainant finally asserts that the disputed domain name was registered and is being used in bad faith. The Complainant claims that it is evident from the Respondent’s use of the disputed domain name that the Respondent knew of the Complainant’s IQOS trademark when registering the disputed domain name. The word “iqos” is thus a purely imaginative term that is unique to the Complainant. The term IQOS is not commonly used to refer to tobacco products, and it is therefore beyond the realm of reasonable coincidence that the Respondent chose the disputed domain name, without the intention of invoking a misleading association with the Complainant. Additionally, the Respondent is not only using the Complainant’s IQOS trademark for the purposes of offering for sale the IQOS System, but is also using the mark to offer for sale products and accessories of other commercial origin that are competing with the Complainant’s products.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules the panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

A. Identical or confusingly similar

The Panel finds that the disputed domain names <iqoskibris.net> is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark IQOS. The disputed domain name incorporates the said mark in full with the addition of the term “kipris”, which is the Turkish name for Cyprus. The gTLD “.net” does not dispel a finding of confusing similarity as it is disregarded under the first element confusing similarity test, see section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been satisfied.

B. Rights or legitimate interests

According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark. Under the circumstances present in this case, the burden of producing evidence of any rights or legitimate interests in the disputed domain names shifts to the Respondent.

The Panel recognizes that there may be some limited situations where the registration and use of a domain name that specifically refers to and incorporates the trademark of another entity may serve legitimate purposes. As it is stated in section 2.8.1 of the WIPO Overview 3.0.

“Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.

The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.”¹

In this case, the Respondent is not an authorized dealer or reseller of the Complainant’s products and services. Moreover, the disputed domain name is currently used to redirect Internet users to a website, on which the Complainant’s products as well as products that are in competition with the Complainant’s products and services appears to be offered. The Respondent does thus clearly not meet the above outlined requirements under the Oki Data principles.

Moreover, the Panel notes that the disputed domain name carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.

In the circumstances present here, the Respondent’s registration and use of the disputed domain name indicates its lack of rights or legitimate interests therein, and consequently the prerequisites in the Policy, paragraph 4(a)(ii) are also considered fulfilled.

C. Registered and used in bad faith

Paragraph 4(a)(iii) of the Policy further provides the requirement to prove registration and use in bad faith. Paragraph 4(b) regulates, by way of example, the kind of evidence that may satisfy the same.

Given the circumstances of the case and in particular the evidence on record of the use of disputed domain name, it is inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s marks. Further, due to the nature of the Respondent’s business the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name which could attract Internet users in a manner that is likely to create confusion for such users.

The Panel therefore finds that the disputed domain name was registered in bad faith.

As explained above the disputed domain name is currently used to redirect Internet users to a website at “www.iqosavm.com”, and previously to an identical web shop at “www.iqoskibris.net”, which offers what appears to be products of the Complainant but which also appears to offer products that are in competition with some of the products that are offered by the Complainant. Although the Panel has not been able to establish whether the Respondent is also the owner of the website to which the disputed domain name redirects, it seems evident that the Respondent is using the disputed domain name in a way that intentionally attempts to attract, for commercial gain, Internet users to the said website by creating a likelihood of confusion as to the affiliation or endorsement of the website by the Complainant, just as the registration and use is liable to disrupt the business of the Complainant. See section 3.1.4 of the WIPO Overview 3.0.

Bearing these facts and the facts mentioned above the Panel finds that the disputed domain name has been registered and is being used in bad faith, cf. paragraph 4(a)(iii) and 4(b) of the Policy.

The Complainant has requested the Panel that the disputed domain name be transferred to it.

7. Decision

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 <iqoskibris.net> be transferred to the Complainant.

Knud Wallberg
Sole Panelist
Date: November 13, 2019

¹ See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.