WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. dsfdsfdf dsfadsfdsf, dfsdsfd

Case No. D2021-3930

1. The Parties

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

The Respondent is dsfdsfdf dsfadsfdsf, dfsdsfd, Turkey.

2. The Domain Name and Registrar

The disputed domain name <pmiqos.com> is registered with Wix.com Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2021. On November 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 2021, 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 November 30, 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 December 1, 2021.

The Center sent an email communication in English and Turkish to the parties on November 30, 2021, regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Turkish. The Complainant sent an email to the Center requesting English to be the language of the proceeding on December 1, 2021. The Respondent did not comment on the language of the proceeding.

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 December 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2021.

The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on January 7, 2022. 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 a company which is part of the group of companies affiliated to Philip Morris International Inc. Philip Morris International Inc. is one of the leading international tobacco companies, with products sold in approximately 180 countries.

The Complainant is selling smoke-free cigarettes under its IQOS brand and owns several international trademark registrations for IQOS including the followings:

- International Registration No. 1218246 for the trademark IQOS extended to Turkey, registered July 10, 2014 covering tobacco products and electronic cigarettes, in classes 9, 11 and 34;

- International Registration No. 1329691 for the trademark IQOS logo extended to Turkey, registered August 10, 2016, covering tobacco products and electronic cigarettes, in classes 9, 11 and 34;

- International Registration No. 956639 for the trademark PMI (word) extended to Turkey, registered February 7, 2008, covering tobacco products in class 34.

The disputed domain name was registered on September 30, 2021, with unspecified and fictive name and address in Turkey. The disputed domain name currently resolves to an active website in Turkish offering the Complainant’s products for sale.

5. Parties’ Contentions

A. Complainant

The Complainant is of the opinion that the disputed domain name is confusingly similar to its PMI and IQOS trademarks since it reproduces Complainant’s trademarks in their entirety.

The Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, mainly because the Complainant has neither licensed nor otherwise authorized the Respondent to use its marks or to apply for or use any domain name incorporating the trademark IQOS and/or PMI. The Complainant further asserts that the conditions of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 for a bona fide offering of goods and services by an authorized or non-authorized third party are not satisfied.

In addressing the question of registration and use of the disputed domain name in bad faith, the Complainant contends that the Respondent has previously registered the domain name <pmiheets.com> against which a complaint has been filed and the UDRP panel transferred the subject domain name to the Complainant (Philip Morris Products S.A. v. dsfdsfdf dsfadsfdsf, dfsdsfd, WIPO Case No. D2021-1853)

The Complainant further observes that the Respondent is well aware of the Complainant’s trademarks when registering the disputed domain name, considering that the Respondent is using the Complainant’s trademarks in the disputed domain name and IQOS logo and the respective product images at the website and that the Respondent’s website clearly suggests that the website belongs to the Complainant or that it is maintained by an official affiliated dealer endorsed by the Complainant.

The fact that the website does not provide any information on the true identity of the website provider further serves to perpetuate the false impression that the products offered on the Respondent’s website are provided by the Complainant, or at least an official dealer, by misleading users on the source of the website and thereby attracting, for commercial gain, Internet users to the website.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. The Registration Agreement for the disputed domain name has been confirmed by the Registrar as Turkish. The Complaint was filed in English.

On December 1, 2021, the Complainant submitted a reply to the Center requesting the language of the proceedings being English noting a) the disputed domain name uses Latin characters; b) the website at the disputed domain name is directed to, at very least, an English-speaking public and c) the registration agreement appears to be in English.

The Complainant has invoked numerous UDRP panel decisions where the UDRP panels have accepted English as the language of the proceedings despite the registration agreement having a differing language where it could be presumed from the circumstances of the case that the respondent has knowledge of the English language, while the complainant is not capable of providing the complaint in the language of the registration agreement (e.g. Turkish) without unreasonable effort and costs.

In addition to the Complainant’s submission regarding the language of the proceedings, it appears that the Respondent did not submit a Response nor did it formally object to English as the language of the proceedings.

The Center has throughout the proceedings issued its case-related communications, including the Center’s Complaint notification documents, in both Turkish and English. The Respondent has chosen not to participate in the proceedings and has been notified of its default.

The Panel notes the following from the Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004 “The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.”

Although the Panel would have welcomed more elaborated arguments regarding the language of the proceedings, the Panel takes the following into consideration:

a) The Respondent did not object to the Complainant’s request that English be the language of the proceedings.
b) The Respondent has been given a fair chance to object to the Complainant’s choice of English as the language of the proceedings, but has not done so, nor has it participated in the proceedings generally.
c) The Respondent has been given a possibility to submit a Response in Turkish.

Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determined that the language of the administrative proceeding be English.

6.2. Substantive Issues

Paragraph 4(a) of the Policy sets forth the following three elements, which the Complainant must prove, during the administrative proceedings, to merit a finding that the disputed domain name be transferred to the Complainant:

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

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

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

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.

As indicated above, the Complainant holds several trademark registrations for PMI and IQOS trademarks.

The disputed domain name <pmiqos.com> integrates the Complainant’s PMI and IQOS trademark in its entirety. It is the Panel’s view that both trademarks are recognizable in the disputed domain name.

As regards the generic Top-Level Domain (“gTLD”) “.com”, it is typically disregarded under the confusing similarity test under the Policy.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The onus is on the Complainant to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and it is then for the Respondent to rebut this case.

Although the Respondent did not file a Response, a respondent’s default does not automatically result in a decision in favor of the complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 and the cases cited therein.

However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

As there are no exceptional circumstances for the failure of the Respondent to submit a Response, the Panel infers that the Respondent does not deny the facts asserted and contentions made by the Complainant. Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.

A number of UDRP decisions have addressed the question of when a reseller’s use of a mark constitutes a bona fide offering of goods or services. The general view on this was articulated in Oki Data Americas, Inc. v. ASD, Inc., supra. See WIPO Overview 3.0 at section 2.8. In that case, the authorized reseller’s domain name <okidataparts.com> incorporated the complainant’s OKIDATA trademark in full. The panel in Oki Data Americas, Inc. v. ASD, Inc., supra, concluded that for a respondent to demonstrate that a resale offering was bona fide, the following conditions must be met:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the corresponding website to sell only the trademarked goods, otherwise there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods;

- the site itself must accurately disclose the respondent’s relationship with the trademark owner, i.e., the respondent may not falsely suggest that it is the trademark owner, or that the website is the official site, if that is not the case; and

- the respondent must not try to “corner the market” in all relevant domain names, or deprive the trademark owner of reflecting its own mark in a domain name.

In this case, it appears from the website that the Respondent has been operating its business of selling electronic cigarettes under the disputed domain name. The Respondent does appear to exclusively sell the Complainant’s products.

However, the Respondent is using the trademark IQOS simply amazing Logo and the official product image of the Complainant giving the impression that the Respondent is affiliated with the Complainant, or it is an authorized dealer of the Complainant in Turkey.

On the other side, not only the website of the Respondent does not provide any information regarding its ownership, but also the website does not have any indication regarding the relationship or lack thereof with the Complainant.

It is true that, as claimed by the Complainant, the lack of legitimacy 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.

Lastly, the Panel notes that the composition (combination of two trademarks owned by the Complainant) of the disputed domain name carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.

For these reasons, the Panel concludes that the Respondent is not making use of the disputed domain name in connection with a bona fide offering of goods or services.

In the Panel’s view the Complainant has made out its prima facie case under this element of the Policy and the Respondent has failed to rebut it. Accordingly, the Complaint succeeds in relation to the second element of the Policy.

C. Registered and Used in Bad Faith

Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

Considering the Panel’s finding under the second element, the Panel finds that the registration and use of the disputed domain name falls under the circumstances described under paragraph 4(b)(iv) of the Policy, namely, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by seeking to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

The Panel observed that the Respondent used a privacy shield. While the Respondent’s use of a privacy service will not in itself constitute bad faith under the Policy, the fact that the Respondent concealed its real identity clearly reinforced the element of bad faith. In this respect, the Panel is convinced (based on the pattern used for the name of the registrant as well as the analogy in conceptualizing the disputed domain name “pmiheets” and “pmiqos”) that the Respondent may have also previously registered <pmiheets.com> against which a complaint has been filed and the UDRP panel transferred the subject domain name to the Complainant (Philip Morris Products S.A. v. dsfdsfdf dsfadsfdsf, dfsdsfd, WIPO Case No. D2021-1853).

Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by the Complainant.

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, <pmiqos.com> be transferred to the Complainant.

Emre Kerim Yardimci
Sole Panelist
Date: January 21, 2021