WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Faruk Pazarlama

Case No. D2019-3077

1. The Parties

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

The Respondent is Faruk Pazarlama, Turkey.

2. The Domain Names and Registrar

The disputed domain names <iqos212.com> and <iqos34.site> are registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2019. On December 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 18, 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 December 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2020.

The Center appointed Marilena Comanescu as the sole panelist in this matter on January 17, 2020. 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.

The language of the proceedings is English which is the language of the registration agreement for the disputed domain names.

4. Factual Background

The Complainant is a subsidiary of Philips Morris International, Inc., an international tobacco company which is selling its products in approximately 180 countries worldwide.

The Complainant manufactures tobacco products, including a system promoted under the mark IQOS, which is an alternative to combustible cigarettes and consists of a controlled heating device into which specially designed tobacco products are inserted and heated to generate a flavourful nicotine-containing aerosol. The IQOS System was launched in Japan in 2014 and, with investments of USD 6 billion in sales and marketing, it is currently sold in 51 markets across the globe reaching approximately 8 million relevant consumers. The Compainant’s IQOS System is primarily distributed through official or endorsed stores.

At the time of filing the Complaint, the IQOS System was not available in the territory of Turkey.

The Complainant holds a large portfolio of trademarks, including the following:

- the International trademark registration number 1218246 for the word IQOS, registered on July 10, 2014, and designating many countries worldwide, including Turkey, and covering goods in Nice classes 9, 11, and 34; and
- the International trademark registration number 1338099 for the stilyzed word IQOS, registered on November 22, 2016, and designating many countries worldwide, including Turkey, and covering services in Nice class 35.

The disputed domain name <iqos212.com> was registered on November 14, 2019, respectively the disputed domain name <iqos34.site> was registered on November 12, 2019. At the time of filing the Complaint, the disputed domain names were connected to commercial websites, with similar content, offering IQOS branded goods, displaying the Complainant’s trademark and official product images and providing a notice of copyright protection for the websites content, all such facts without the authorization or approval of the Complainant.

The parties have been involved in at least five past UDRP disputes¹ , all decided against the Respondent. See Philip Morris Products S.A. v. Faruk Pazarlama, WIPO Case No. D2018-1162 for the domain name <iqostr.org>; Philip Morris Products S.A. v. Faruk Pazarlama, WIPO Case No. D2019-1243 for the domain names <iqoselit.org> and <iqosmarketi.com>; Philip Morris Products S.A. v. FarukPazarlama, WIPOCase No. D2019-1516 for the domain name <iqosal.org>; Philip Morris Products S.A. v. Faruk Pazarlama, WIPO Case No. D2019-1866 for the domain name <iqosiparis.com>; and Philip Morris Products S.A. v. Faruk Pazarlama, WIPO Case No. D2019-2242 for the domain name <heetsturkey.com>.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to its distinctive trademark IQOS, the Respondent has no rights or legitimate interests in the disputed domain names, and the Respondent registered and is using the disputed domain names in bad faith.

B. Respondent

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

6. Discussion and Findings

In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:

(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 the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.

The Panel will further analyze the potential concurrence of the above circumstances.

A. Identical or Confusingly Similar

The Complainant holds rights in the IQOS trademark.

The disputed domain names <iqos212.com> and <iqos34.site> incorporate the Complainant’s trademark IQOS with an additional string of numbers, “121” respectively “34”. However, such addition does not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain names.

Numerous UDRP panels have considered that the addition of other terms (whether descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to escape a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0.

Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g.,“.com”, “.site”, “.info”, “.org”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0.

Given the above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark IQOS, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization whatsoever to use the mark IQOS, that the Respondent is not commonly known by the disputed domain names, and that the Respondent has not used the disputed domain names in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.

Under the Policy, “where 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0.

The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.

There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain names.

Further, there is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain names, or has been known by this disputed domain names, or is making any legitimate noncommercial or fair use of the disputed domain names. In fact, at the time of drafting the Complaint the disputed domain names resolve to commercial websites featuring the IQOS trademark and offering for sale unauthorized products bearing the Complainant’s trademarks without the Complainant’s consent.

In this case, assuming that the products or at least some of the products offered for sale under the disputed domain names were genuine IQOS branded products, the key question under this element is whether the Respondent’s use of the disputed domain names for such resale amounts to a bona fide offering of goods under paragraph 4(c)(i) of the Policy. The current state of UDRP panel decisions in relation to this issue is helpfully summarized in section 2.8 of theWIPO Overview 3.0 as follows:

Normally, a reseller, distributor or service provider can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, the site’s accurately and prominently disclosing the registrant's relationship with the trademark holder and the respondent must not try to “corner the market” in domain names that reflect the trademark.

This summary is based on UDRP panel decisions such as Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. At least two conditions that are outlined have clearly not been satisfied by the Respondent in this case: at the time of drafting the Complaint, on the websites corresponding to the disputed domain names there was no accurate information regarding the Respondent and its relationship with the Complainant thus generating a likelihood of confusion for the Internet users accessing Respondent’s websites; and the Respondent registered at least five other domain names comprising the Complainant’s IQOS mark, see cases listed in paragraph 4supra.

For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain names, pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant holds registered trademark rights for IQOS since 2014.

The disputed domain names were created in 2019 and incorporate the Complainant’s mark with additional non-distinctive characters – the numbers “212” and “34”.

For the above, the Panel finds that the disputed domain names were both registered in bad faith, knowing the Complainant and targeting its trademark.

The Respondent is using without permission the Complainant’s distinctive trademark in order to get traffic on its web portal and to obtain commercial gain from the false impression created for the Internet users with regard to a potential connection with the Complainant. This impression is created particularly by the incorporation of the Complainant’s distinctive trademark in the disputed domain names, the content on the websites provided thereunder which include the Complainant’s trademarks, official product images and the notice claiming copyright protection for the material presented on such website.

Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.

Given that the disputed domain names incorporate the Complainant’s trademark and the websites operated under the disputed domain names display the Complainant’s trademarks, official product images indeed in this Panel’s view, the Respondent intended to attract Internet users accessing the websites corresponding to the disputed domain names who may be confused and believe that there are websites held, controlled by, or somehow affiliated or related to the Complainant, for its commercial gain.

Also, as mentioned above under paragraph 4, the Respondent has already been the subject of adverse decisions in five previous proceedings involving the Complainant’s trademarks and this falls within the circumstances listed by paragraph 4(b)(ii) of the Policy and demonstrates that the Respondent has engaged in a pattern of bad faith behaviour.

Furthermore, the Respondent provided innacurate contact details in the WhoIs and refused to participate in the present proceedings in order to provide arguments in its favor. Having in view the other circumstances of this case, such facts constitute further evidence of bad faith behavior.

For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

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 names <iqos212.com> and <iqos34.site> be transferred to the Complainant.

Marilena Comanescu
Sole Panelist
Date: January 23, 2020

¹ See section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) regarding Panel’s powers to conduct limited searches.