WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Kerem Elkoca

Case No. D2021-2717

1. The Parties

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

The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America / Kerem Elkoca, Turkey.

2. The Domain Names and Registrar

The disputed domain names, <avmheets.xyz>, <avmiqos.xyz>, <heetsavm.xyz>, <heetsiqoss.xyz>, <heetsistanbul.xyz>, <heetssepeti.xyz>, <iqosavm.xyz>, <iqossepeti.xyz>, and <istanbuliqos.xyz> (together the “Domain Names”), are 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 19, 2021. On August 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On August 20, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 25, 2021 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 August 26, 2021.

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 August 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 23, 2021.
The Center appointed Tony Willoughby as the sole panelist in this matter on September 30, 2021. 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 Respondent used a privacy service when registering the Domain Names. The Complaint named the privacy service as the Respondent. The underlying registrant’s identity was disclosed by the Registrar in response to the Center’s registrar verification request. The Center’s invitation to the Complainant to amend the Complaint followed on from that disclosure. In response to that invitation the Complainant added the underlying registrant as an additional respondent to the Complaint. For the purposes of this decision the Panel treats the underlying registrant as the Respondent and all references herein to the “Respondent” are references to Kerem Elkoca.

The Complainant has requested that the complaints in relation to the Domain Names be consolidated. The request is not necessary. Paragraph 3(c) of the Rules provides “The Complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” Here, all the Domain Names are registered in the name of the Respondent.

4. Factual Background

The Complainant is a member of the group of companies headed by Philip Morris International Inc., a leading international tobacco company. In addition to its core business of production and sale of combustible cigarettes, the group of companies of which the Complainant forms part has since 2014 included the production and sale of non-combustible alternatives, which it markets under inter alia the trade marks IQOS and HEETS.

The Complainant is the registered proprietor of numerous trade mark registrations covering these trade marks. For present purposes it is only necessary to detail four of those registrations, all four of which are for tobacco-related goods or services in one or more of classes 9, 11, 34 and 35 and in all of which Turkey, the Respondent’s home jurisdiction, is designated as one of the countries covered, namely:

- International Registration No. 1218246 IQOS (word) registered on July 10, 2014.

- International Registration No. 1338099 IQOS (figurative) registered on November 22, 2016.

- International Registration No. 1326410 HEETS (word) registered on July 19, 2016.

- International Registration No. 1328679 HEETS (figurative) registered on July 20, 2016.

The Domain Names were registered on October 31, 2020. All bar <iqossepeti.xyz> link to a “Testing 123..” webpage. The webpage includes a message reading “Just visiting? The website you just visited is either experiencing problems or is undergoing routine maintenance.” The Domain Name <iqossepeti.xyz> links to a webpage stating: “This Connection is Not Private. This website may be impersonating ‘iqossepeti.xyz’ to steal your personal or financial information. You should go back to the previous page.”

Prior to the filing of the Complaint the Domain Names were connected to Turkish language websites featuring links to what appears to the Panel to have been the same online shop at (or linked to) one or more of websites at “www.sigaramiz.com”, “www.sigaramiz1.com” and “www.sigaramiz4.com” (the “Sigaramiz websites”). The Sigaramiz websites were devoted primarily to the Complainant’s IQOS HEETS products and featuring numerous images of those products. They also included links to sites selling the smoking products of other manufacturers.

The domain name <sigaramiz.com> now redirects to a webpage at “www.sigaramiz3.com” featuring the same message quoted above in relation to <iqossepeti.xyz>, namely: “This Connection is Not Private. This website may be impersonating ‘sigaramiz3.com’ to steal your personal or financial information. You should go back to the previous page.”

The websites to which the Domain Names originally connected (as opposed to the Sigaramiz websites to which they were linked) featured nothing to indicate that the websites were not websites of or authorized by the Complainant. They made liberal use of the Complainant’s IQOS logo as covered by International Registration No. 1338099 detailed above and in the case of the website connected to the Domain Name, <iqosavm.xyz>, featured a copyright notice reading “Copyright © 2021 Philip Morris Elektronik Sigara”. The only other copyright notice that the Panel was able to find in the screenshots directly connected to the Domain Names was one relating to the Domain Name, <iqossepeti.xyz>, which featured a copyright notice reading “Telif hakkı © 2021”. Using Google Translate the Panel understands that “Telif hakki” is the Turkish for “Copyright”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are confusingly similar to its IQOS and/or HEETS registered trade marks, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names have been registered and are being used in bad faith.

B. Respondent

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

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:

(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) the Domain Names have been registered and are being used in bad faith.

B. Identical or Confusingly Similar

There are nine Domain Names comprised as follows: <avmheets.xyz> featuring the prefix “avm” followed by the Complainant’s HEETS trade mark and the “.xyz” generic Top-Level Domain (“gTLD”) identifier; <avmiqos.xyz> featuring the prefix “avm” followed by the Complainant’s IQOS trade mark and the “.xyz” gTLD identifier; <heetsavm.xyz> featuring the Complainant’s HEETS trade mark followed by “avm” and the “.xyz” gTLD identifier; <heetsiqoss.xyz> featuring the Complainant’s HEETS and IQOS trade marks with an additional “s” and the “.xyz” gTLD identifier; <heetsistanbul.xyz>, featuring the Complainant’s HEETS trade mark followed by the geographical term “Istanbul” and the “.xyz” gTLD identifier; <heetssepeti.xyz> featuring the Complainant’s HEETS trade mark followed by the Turkish word “sepeti” (meaning “cart” or “basket” in English) and the “.xyz” gTLD identifier; <iqosavm.xyz> featuring the Complainant’s IQOS trade mark followed by “avm” and the “.xyz” gTLD identifier; <iqossepeti.xyz> featuring the Complainant’s IQOS trade mark followed by the Turkish word “sepeti” and the “.xyz” gTLD identifier; and finally <istanbuliqos.xyz> featuring the geographical term “Istanbul”, the Complainant’s IQOS trade mark and the “.xyz” gTLD identifier.

Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage:

“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”

One or other of the Complainant’s IQOS and HEETS trade marks is readily recognizable in its entirety in each of the Domain Names. In one of the Domain Names both those trade marks are readily recognizable in their entirety. The Panel finds that all the Domain Names are confusingly similar to a trade mark in which the Complainant has rights.

C. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. In support of that contention the Complainant asserts that it has no connection with the Respondent and has granted the Respondent no permission to use its IQOS and HEETS trade marks. Furthermore, the Domain Names do not have any association with the name of the Respondent.

The Turkish language websites to which the Domain Names originally redirected posted information related to the IQOS and HEETS products of the Complainant and featured links to the Sigaramiz websites (see section 4 above).

The Complainant correctly points out that, on their face, the Respondent’s websites at the time of the Complaint featured nothing to indicate that they were not websites of or authorized by the Complainant. They featured prominently the Complainant’s IQOS logo device, but with one exception contained nothing to indicate the true owner of the site. The exception was the website connected to the Domain Name, <iqosavm.xyz>, bearing a copyright notice reading “Copyright © 2021 Philip Morris Elektronik Sigara”.

The Panel accepts the Complainant’s assertion that it has not authorized the Respondent’s use of the IQOS and HEETS trade marks in this or any other way. However, there are circumstances under which the unauthorized use of a third party’s trade mark in a domain name may give rise to the acquisition by a respondent of rights or legitimate interests in respect of that domain name. The issue frequently falls to be considered where, as here, the respondent is using the domain name to connect to a website selling the goods of the complainant.

The issue is addressed in Section 2.8.1 of 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’ [a test derived from the decision in Oki Data Americas, Inc. v. Asdinc.com, WIPO Case No. D2001-0903], 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.”

While it is arguable, as the Complainant contends, that the links on the Sigaramiz websites (see section 4 above) leading to pages offering other goods, not being goods of the Complainant, render the Domain Names objectionable under (ii) above, the Domain Names clearly fail the Oki Data test under (iii) above. The websites directly connected to the Domain Names did not “accurately and prominently disclose the registrant’s relationship with the trademark holder.” Indeed the copyright notice on the website connected to the Domain Name, <iqosavm.xyz>, reading “Copyright © 2021 Philip Morris Elektronik Sigara” was plainly false.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.

D. Registered and Used in Bad Faith

The Domain Names are likely to be seen by many Internet users as domain names of or authorized by the Complainant and on entering those websites when they were active would have found nothing there to disabuse them. They will have been purchasing through those websites, confident that they were dealing with the Complainant or at least an entity authorized by the Complainant.

Paragraph 4(b)(iv) of the Policy provides that a circumstance leading to a finding of bad faith registration and use under the Policy is where the respondent has used the Domain Name intentionally to attract Internet users to the respondent’s website for commercial gain “by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of [the] website […]”.

Here, it is clear that the Respondent (a) registered the Domain Names for the purpose for which he has been using them and (b) has been using them in a manner calculated to induce visitors to those websites to believe that they were trading with the Complainant or an entity authorized by the Complainant.

If there were any doubt as to the Respondent’s motives, the false copyright notice on the website connected to the <iqosavm.xyz> Domain Name, “Copyright © 2021 Philip Morris Elektronik Sigara”, makes clear that the Respondent’s intention was to impersonate the Complainant.

Paragraph 4(a)(iii) of the Policy is phrased, as to use, in the present tense (“is using”). While the Respondent’s use of the Domain Names seems to have ceased, in the view of the Panel, while the Domain Names remain in the hands of the Respondent, they represent a malicious threat hanging over the head of the Complainant and, as such, constitute a continuing bad faith use of the Domain Names.

The Panel finds that the Domain Names have been registered and are being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.

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 Domain Names, <avmheets.xyz>, <avmiqos.xyz>, <heetsavm.xyz>, <heetsiqoss.xyz>, <heetsistanbul.xyz>, <heetssepeti.xyz>, <iqosavm.xyz>, <iqossepeti.xyz>, and <istanbuliqos.xyz>, be transferred to the Complainant.

Tony Willoughby
Sole Panelist
Date: October 12, 2021