WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Registration Private, Domains By Proxy, LLC / Msutafa Yol, filozofer/ Registration Private, Domains By Proxy, LLC
Case No. D2021-2779
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 / Msutafa Yol, filozofer, Turkey/ Registration Private, Domains By Proxy, LLC, United States of America. While there are three named respondents, for reasons explained in sections 3 and 6A below, the Panel is satisfied that the disputed domain names and the websites to which they are or have been connected are under common control. All references herein to the “Respondent” are references to the entity or entities having control of the disputed domain names and to those websites.
2. The Domain Names and Registrar
The disputed domain names, <iqosheetsmerkezi.com> (the “First Domain Name”) and <iqoskits.com> (the “Additional Domain Name”), (together the “Domain Names”), are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2021. On August 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the First Domain Name. On August 25, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the First Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 29, 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 (the “first amended Complaint”) on August 30, 2021.
The Respondent Msutafa Yol used a privacy service when registering the First Domain Name. The original 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.
The Center verified that the Complaint together with the first 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 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2021.
On September 21, 2021, the Complainant requested the Panel in its discretion to accept the addition of the Additional Domain Name to the Complaint and filed a further amended Complaint (the “second amended Complaint”) in support of its request, contending that the Domain Names are under common control. The second amended Complaint named as another Respondent the same privacy service used by the Respondent Msutafa Yol when registering the First Domain Name.
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.
On October 1, 2021 the Panel informed the Center that it was ready in principle to permit the addition of the Additional Domain Name to this administrative proceeding subject to satisfactory completion of certain procedural formalities such as Registrar verification in respect of the Additional Domain Name and re-notification of the proceedings to the parties.
The Center duly contacted the Registrar for verification of the registration details in respect of the Additional Domain Name and on October 29, 2021 the Center notified the Panel of the Registrar’s response, disclosing registrant and contact information for the Additional Domain Name, which differed from the named Respondent Msutafa Yol, and contact information in respect of the Additional Domain Name in the second amended Complaint.
On October 29, 2021 and November 16, 2021, the Panel issued Procedural Orders Nos. 1 and 2 respectively, details of which are to be found in section 6A below, along with details of the parties’ responses to those Procedural Orders1 .
Suffice it to say here that the Panel accedes to the Complainant’s request that the Additional Domain Name be dealt with in this decision. For the reasons set out in section 6A below the Panel is satisfied that the Domain Names and the websites to which they have been connected are under common control.
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 First Domain Name was registered on September 30, 2020 and until at least October 19, 2021 was connected to an online shop selling products appearing to be IQOS and HEETS products of the Complainant. By September 22, 2021 that ‘connection’ was by way of a redirection to the Additional Domain Name. The Complainant’s IQOS trade mark featured prominently at top left on the home page of the website in the stylized form covered by the Complainant’s International Registration No. 1338099 detailed above. The prices on the website were quoted in Turkish lire. A copyright notice at the bottom of the home page read “© Copyright 2021 iqosheetsmerkezi.com”.
The Additional Domain Name was registered on September 15, 2021, three weeks after the filing of the original Complaint. At the date of the second amended Complaint it was connected to what appears to the Panel to be the same online shop to which the First Domain Name was connected and which featured the copyright notice “© Copyright 2021 iqosheetsmerkezi.com”.
The Domain Names are not now connected to active websites. They both redirect to <uygunsigara.com> and a notice at the top of the page reading “Access denied I www.uygunsigara.com used Cloudflare to restrict access”. A further notice in the body of the page reads “Error 1020 … Access denied … What happened? This website is using a security service to protect itself from online attacks.”
5. Parties’ Contentions
The Complainant contends that the First Domain Name is confusingly similar to each of its IQOS and HEETS trade marks and that the Additional Domain Name is confusingly similar to its IQOS registered trade mark; 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.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Preliminary Issues
The Procedural Orders
As mentioned in section 3 above, following the Complainant’s request that its complaint in respect of the Additional Domain Name be consolidated with its complaint in respect of the First Domain Name, the Panel indicated to the Center that in principle it was prepared to permit the addition of the Additional Domain Name to this administrative proceeding subject to satisfactory completion of certain procedural formalities such as Registrar verification in respect of the Additional Domain Name and re-notification of the proceedings to the parties.
The second amended Complaint accompanying the Complainant’s request for consolidation named the registrant of the Additional Domain Name as the privacy service used by the underlying registrant of that Domain Name. The Registrar’s response to the Center’s registrar verification request disclosed registrant and contact information for the Additional Domain Name, which differed from the named Respondent Msutafa Yol, and contact information for the Additional Domain Name in the second amended Complaint. Normally, in such cases (and as happened in this case in relation to the First Domain Name) the Center notifies a complainant of the new registrant information and the complainant amends the complaint to include the underlying registrant as an additional respondent.
Procedural Order No. 1 notified the parties of the Registrar’s response to the Center’s registrar verification request in respect of the Additional Domain Name and, inter alia, invited the Complainant to amend its latest version of the Complaint to include the name and contact details of the underlying registrant disclosed by the Registrar. The Complainant did not respond to that request. Given the Complainant’s amendment of the original Complaint to include the name of the underlying registrant of the First Domain Name, the Panel assumed that the Complainant’s failure to adopt a similar approach in relation to the Additional Domain Name was through an oversight and issued Procedural Order No. 2 to give the Complainant a further opportunity to accede to the Panel’s request.
The Complainant responded to Procedural Order No. 2 on November 17, 2021 requesting that the Panel proceed to a decision based on the Complainant’s second amended Complaint filed on September 22, 2021 and elected not to include the name of the underlying registrant of the Additional Domain Name as a respondent. The second amended Complaint was perfectly valid given that the privacy service named as the registrant of the Additional Domain Name was the appropriate respondent at the time of filing of that amended Complaint, being the entity appearing on the publicly available WhoIs record as the domain-holder of the Additional Domain Name at the time that that version of the Complaint was filed [see the definition of “Respondent” in paragraph 1 of the Rules2 ]. There was no obligation upon the Complainant to add the name of the underlying registrant.
In the case of both those Procedural Orders the Respondent was given an opportunity to comment on any further filing by the Complainant, but elected not to do so.
In the absence of any objection from the Respondent and at the request of the Complainant, the Panel proceeds to a decision on the basis of the Complainant’s second amended Complaint filed on September 22, 2021.
Paragraph 10(e) of the Rules gives to the Panel the power to decide requests to consolidate multiple domain name disputes.
As indicated in section 3 above, the Panel has acceded to the Complainant’s request for consolidation of the complaints in respect of the Domain Names on the basis that the Domain Names are under common control.
Paragraph 3(c) of the Rules provides that “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”. Here at the date of the amended Complaint of September 22, 2021 the Domain Names were held in different names, but section 4.11.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), dealing with panels’ approaches to consolidation scenarios, allows of the possibility of consolidation where, although the disputed domain names are held in different names, (i) they or their corresponding websites are subject to common control; and (ii) consolidation would be fair and equitable to all parties.
The Panel is satisfied on the balance of probabilities and in the absence of any challenge from the Respondent that the Domain Names and their corresponding website(s) are indeed under common control.
The evidence supports the Complainant’s contention as follows:
- The Domain Names were registered with the same Registrar.
- The registrant(s) of the Domain Names used the same privacy service.
- The Additional Domain Name was registered less than a month after the filing of the Complaint in respect of the First Domain Name.
- Both Domain Names make prominent use of the Complainant’s IQOS trade mark.
- The Domain Names have/had the same DNS home servers and direct (or used to direct) to the same Turkish language website connected to the Additional Domain Name.
- The admin telephone number for both Domain Names is the same.
The Respondent was given an opportunity by way of both Procedural Order No. 1 and Procedural Order No. 2 to argue against consolidation and elected not to do so. Moreover, the Panel cannot conceive of any basis upon which it could be said that consolidation would unfairly disadvantage the Respondent in any way. The Panel is satisfied that consolidation would be fair and equitable to all parties and accedes to the Complainant’s request.
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.
C. Identical or Confusingly Similar
The First Domain Name comprises the Complainant’s registered trade mark IQOS followed by the Complainant’s registered trade mark HEETS, the Turkish word “merkezi” (meaning “central” in English) and the “.com” generic Top Level Domain (“gTLD”) identifier.
The Additional Domain Name comprises the Complainant’s registered trade mark IQOS followed by the word “kits” and the “.com” gTLD identifier.
Section 1.7 of 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.”
The Complainant’s IQOS trade mark is readily recognizable in both Domain Names. Additionally, the Complainant’s HEETS trade mark is readily recognizable in the First Domain Name. The Panel finds that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights.
D. 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 trade mark or its HEETS trade mark. Furthermore, the Domain Names are not the name of the Respondent.
The Turkish language website to which the Domain Names are connected offers for sale products appearing to be the IQOS products of the Complainant and quoting prices in Turkish lire, even though, according to the Complainant, it does not supply its IQOS products to Turkey.
The screenshots of the Respondent’s website produced in evidence by the Complainant feature images of the Complainant’s products accompanied by a copyright notice crediting the Respondent. The Complainant asserts that the images are copyright images created by the Complainant. That may very well be the case. The images appear identical to some of those featured on the Complainant’s website.
The Complainant correctly points out that, on its face, the Respondent’s online shop appears to be an official website of the Complainant. It features prominently the Complainant’s IQOS logo device and images of and text relating to the Complainant’s products, but contains nothing to indicate the true owner of the site.
The Panel accepts the Complainant’s assertion that it has not authorized the Respondent’s use of the IQOS trade mark 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, a respondent is (or has been) using the disputed 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.”
The Domain Names fail the Oki Data test in at least one important respect. While it appears possible to the Panel that the website to which they were connected may have been devoted exclusively to IQOS products, it also appears to be an official website of the Complainant. At any rate, there is nothing on the website to indicate that it is not such a website and the copyright notice, featuring as it does the primary trade marks of the Complainant in this area, is calculated to indicate a formal connection with the Complainant. The website does not “accurately and prominently disclose the registrant’s relationship with the trademark holder.”
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
For completeness, the Panel notes the Complainant’s contention that the Domain Names also fail the Oki Data test on the basis that the website to which they were connected offers for sale goods having no connection with the Complainant. The Panel accepts that this is likely to be a well-founded contention in that the Respondent’s website appears to be offering products bearing other brand names, which may have no connection with the Complainant. However, the evidence does not indicate to the Panel the names of the owners of those brands. Moreover, the evidence in support is all from untranslated screenshots of the Respondent’s Turkish language website, a language with which the Panel is not familiar. The fact that the Domain Names fail the Oki Data test under (iii) above renders further exploration of this aspect unnecessary.
E. Registered and Used in Bad Faith
In this case, the Domain Names are likely to be seen by many Internet users as domain names of the Complainant and on entering the website to which the Domain Names were connected they will find nothing there to disabuse them. They will be purchasing through that website, confident that they are 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 Names 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 it has been using them and (b) has been using them in a manner calculated to induce visitors to its website to believe that they are trading with the Complainant or an entity authorized by the Complainant.
The fact that the objectionable use now appears to have ceased is of no moment. 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, 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 paragraph 4(b)(iv) of the Policy.
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, <iqosheetsmerkezi.com> and <iqoskits.com>, be transferred to the Complainant.
Date: November 22, 2021
1 The Complainant filed a third amended Complaint including the Registrant name and contact information revealed by the Registrar concerning the Additional Domain Name. Nevertheless, the Panel in exercise of its general powers under paragraphs 10 and 12 of the Rules, decided to reject this further filing submitted out of time.
2 “Respondent means the holder of a domain-name registration against which a complaint is initiated.” See https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en