The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Mehmet Cam, Turkey.
The disputed domain names <avantajiqosular.com>, <avantajlariqosda.com>, and <avantajlariqosum.com> are registered with Atak Domain Hosting Internet ve Bilgi Teknolojileri Limited Sirketi d/b/a Atak Teknoloji (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2020. On March 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 31, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 2, 2020, 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 3, 2020.
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 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 27, 2020.
The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on May 5, 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 Complainant is a company which is part of the group of companies affiliated to Philip Morris International Inc. Philip Morris International Inc. is an international tobacco company, with products sold in 180 countries.
The Complainant is selling smoke-free cigarettes under its IQOS brand and owns several international trademark registrations for IQOS including the following:
- 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;
The disputed domain names <avantajiqosular.com>, <avantajlariqosum.com> and <avantajlariqosda.com> were registered on February 8, 4, 2020 and January 13, 2020, respectively. The disputed domain names resolved to the same active website in Turkish offering the Complainant’s products for sale – before the commencement of the proceedings. At the time of the Decision, disputed domain names do not resolve to any active websites.
The Complainant asserts that the disputed domain names are confusingly similar to the Complainant’s trademark IQOS and that the addition of the non-distinctive terms “avantaj” or “avantajlar” (which mean “advantages”), “da” (which means “also”), and “um” (which is an unknown addition), respectively, do not prevent the association between the disputed domain names and the Complainant’s trademark as Internet users will likely assume that the disputed domain names are used for an official IQOS online shop.
The Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain names, 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. 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 names in bad faith, the Complainant contends that the Respondent has previously registered <iqosplatformu.com> against which a complaint has been filed and the UDRP panel transferred the subject domain name to Complainant (Philip Morris Products S.A. v. Mehmet Can, Sirket, WIPO Case No. D2019-1001).
The Complainant, further, observes that the Respondent is well aware of the Complainant’s trademark considering that the Respondent is using the Complainant’s IQOS logo and the respective product images and that the Respondent’s website clearly suggests that the website belongs to the Complainant or is 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 clearly shows that the Respondent intentionally creates the 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.
The Respondent did not reply to the Complainant’s contentions.
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 names be transferred to the Complainant:
(a) the disputed domain names are 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 names; and
(c) the disputed domain names have been registered and are 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.
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are 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 the IQOS trademark. The disputed domain names integrate the Complainant’s IQOS trademark in its entirety. The disputed domain names differ from the registered IQOS trademark by the additional descriptive terms in Turkish “avantaj” or “avantajlari” (“advantages”), “da” (“at”), and “um” (“my”).
Several UDRP panels have ruled that the mere addition of a term does not prevent a finding of confusing similarity between a disputed domain name and a complainant’s registered trademark. Therefore, it is the Panel’s view that the use of such words together with the registered trademark does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s trademark (see, e.g., Société des Produits Nestlé S.A. v. MrToys.com LLC, WIPO Case No. D2012-1356; Allianz SE v. Roy Lee / Traffic-Domain.com, WIPO Case No. D2012-1459; Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150; and Swarovski Aktiengesellschaft v. www.swarovski-outlet.org, WIPO Case No. D2013-0335).
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 names are confusingly similar to a trademark in which the Complainant has rights.
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 names, 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 and services. The consensus view 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., 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, the Respondent has been operating its business of selling electronic cigarettes exclusively for the Complainant’s products under the disputed domain names.
That being said, the Respondent is using the stylized version or the logo of the IQOS trademark on the website as well as the registered hummingbird trademark. Moreover, the website includes the photos of the Complainant’s IQOS branded products and uses the marketing material of the Complainant with an indication of a copyright notice giving the impression that the Respondent is affiliated with the Complainant or it is an authorized dealer of the Complainant in Turkey.
Another point that is very relevant in this case is that the Complainant does not currently offer for sale its IQOS branded products in the territory of Turkey. Lastly, there is no disclaimer on the webpage connected to the disputed domain names regarding the relationship between the Complainant and the Respondent. As a last point, by registering three domain names around the same time, the Respondent is trying to “corner the market”.
For all these reasons, the Panel concludes that the Respondent is not making use of the disputed domain names 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.
Finally, the Complainant must show that the disputed domain names have been registered and are being used in bad faith under paragraph 4(a)(iii) of the Policy.
Considering the Panel’s finding under the second element, the Panel finds that the registration and use of the disputed domain names fall 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.
Furthermore, taking into account the Complainant’s unrebutted claims and notwithstanding a slight variation in the name of the respondent in Philip Morris Products S.A. v. Mehmet Can, Sirket, supra, the Respondent appears to have previously registered at least one domain name incorporating the Complainant’s IQOS trademark in bad faith. Here, the Respondent’s registration of three similar disputed domain names resolving to a website impersonating the Complainant clearly constitutes bad faith.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by the Complainant.
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 <avantajiqosular.com>, <avantajlariqosda.com>, and <avantajlariqosum.com> be transferred to the Complainant.
Emre Kerim Yardimci
Sole Panelist
Date: May 27, 2020