WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Kadir Set
Case No. D2019-0663
1. The Parties
The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama City, Panama / Kadir Set of Ankara, Turkey.
2. The Domain Name and Registrar
The disputed domain name <iqosheets.net> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2019. On March 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 April 2, 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 April 4, 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 April 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 29, 2019.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on May 8, 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 factual findings pertinent to the decision in this case are that:
(1) the Complainant sells electronic vaporizing devices for tobacco by reference to the trade mark IQOS (the “Trade Mark”);
(2) the disputed domain name was registered on February 7, 2019, and resolves to a Turkish language website prominently showing the Trade Mark and images of devices bearing the Trade Mark;
(3) there is no commercial or other relationship between the Parties and the Complainant has not authorized the Respondent to use the Trade Mark or to register any domain name incorporating the Trade Mark;
(4) the Trade Mark is the subject, inter alia, of International (Madrid Agreement) Registration No. 1218246 registered on July 10, 2014, designating Turkey and other countries; and
(5) for the purposes of the paragraph 4(a)(i) analysis which follows, the Panel accepts the Complainant’s uncontested statement that:
IQOS is a precisely controlled heating device into which specially designed tobacco products under the brand names “HEETS” and “HeatSticks” are inserted and heated to generate a flavorful nicotine-containing aerosol.
(6) the Panel notes that “HEETS” and “HeatSticks” are also registered trade marks owned by the Complainant.
5. Parties’ Contentions
The Complainant asserts trade mark rights in the Trade Mark. It holds national and international registrations for the Trade Mark and submits that the disputed domain name is confusingly similar to the Trade Mark.1
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name because it has no trade mark rights; is not known by the disputed domain name; and the use of the disputed domain name involves an unauthorized use of the Trade Mark.
The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith having targeted the Complainant’s business and products.
The Complainant accordingly requests the Panel to order transfer of the disputed domain name.
The Respondent did not submit a Response.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a response. Having considered the Complaint and the available evidence, the Panel finds the following:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy.2 The Complainant provides evidence of its International registration of the Trade Mark and so the Panel finds that the Complainant has trade mark rights.
For the purposes of comparing the disputed domain name with the Trade Mark, the generic Top-Level Domain (“gTLD”) “.net” can be disregarded.3 The Complainant’s submission is that “[A] domain name is confusingly similar to a trademark, when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name.” The Complainant further submits that “it cannot be questioned that the Disputed Domain Name …is confusingly similar to the IQOS and HEETS trademark registrations of the Complainant”.
The comparison involves a term which is essentially a portmanteau of both of Complainant’s registered trade marks. There is a long history of UDRP decisions concerned with domain names of that kind and the consensus has been to find confusingly similarity with the relevant trademark(s) when such is recognizable in the domain name.
Here, the Panel can approach the comparison from first principles. In particular the Trade Mark appears to be an invented word with no dictionary meaning. Instead, it is an acronym coined by the Complainant to replace the phrase, “I Quit Ordinary Smoking”4 . Regardless of reputation, it is a highly distinctive term. By contrast, the Complainant’s trade mark HEETS is an apparent misspelling of the word “heats”, itself of much lower distinctive value when used in relation to the relevant goods. It follows that the Panel need not look at the way domain names composed of a portmanteau of trade marks should be treated since the disputed domain name can more readily be treated as the Trade Mark in combination with a term (albeit registered) of significantly lower distinctive value.
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark and accordingly, finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by providing evidence demonstrating rights or legitimate interests in the disputed domain name.5
Notwithstanding the lack of a response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
As confirmed with the Registrar Verification information received from the concerned Registrar, the disputed domain name registrant is “Kadir Set”, which does not suggest that the Respondent might be commonly known by the disputed domain name. The Panel finds no other evidence that the Respondent might be commonly known by the disputed domain name.
Further, the Complainant states that there is no association between the Parties and there is nothing to contradict that claim. There is no evidence that the Respondent has any trade mark rights.
The disputed domain name resolves to a website as previously described. The Complainant states that its products bearing the Trade Mark are not put on the market with its approval in Turkey. The Complainant’s submission is that the Respondent uses the Trade Mark without authority as part of the disputed domain name and again on the resolving website, along with other indicia all of which are intended to create the false impression that the disputed domain name leads to the website of an official online retailer of the Complainant’s goods in Turkey.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply to the Complainant’s contentions has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances, which shall be evidence of the registration and use of a domain name in bad faith. They are:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
The Panel finds that the Respondent’s conduct falls squarely within paragraph 4(b)(iv) above. The Panel has already found the disputed domain name to be confusingly similar to the Trade Mark. The Respondent clearly targeted the Complainant when registering the disputed domain name and the use of the disputed domain name is for commercial gain. In terms of the Policy the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, an Internet user to an online location by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of that location.
The Panel finds that the Complainant has satisfied the third and final element 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 disputed domain name <iqosheets.net> be transferred to the Complainant.
Debrett G. Lyons
Date: May 9, 2019
1 The Panel notes here for the sake of completeness that the Complainant also asserts trade mark rights in HEET and makes an assertion that the disputed domain name is also confusingly similar to that trade mark.
2 See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
4 According to the Panel’s enquiry.