WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Domain Admin ContactID 5801095, FBS INC, Whoisprotection biz / Bahadır Veziroğlu

Case No. D2018-2596

1. The Parties

Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.

The Respondent is Domain Admin ContactID 5801095, FBS INC, Whoisprotection biz / Bahadır Veziroğlu of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <iqos-tr.com> is registered with FBS Inc. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2018. On November 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 2018, 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 Complainant on November 14, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 14, 2018.

Pursuant to the Complaint submitted in English and the registrar verification dated November 14, 2018 stating that Turkish is the language of the registration agreement of the disputed domain name, on November 14, 2018, the Center sent a request in English and Turkish that the Parties submit their comments on the language of the proceeding. On November 14, 2018, Complainant submitted its request for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.

The Center verified that the Complaint together with the amendment to the 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 in English and Turkish of the Complaint, and the proceedings commenced on November 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2018.

The Center appointed Marina Perraki as the sole panelist in this matter on January 2, 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

According to the Complaint, Complainant is part of the Philip Morris International Inc. group of companies (“PMI group”), active in the tobacco industry, with products sold in approximately 180 countries. PMI group operates 46 production facilities in 32 countries. PMI group has been transforming its business from combustible cigarettes to other smoking products, one of which, developed and sold by PMI group, is a tobacco heating system branded as IQOS. The IQOS system consists of three components, the IQOS holder, the heated tobacco units sold under the names “HEETS” and “HeatSticks”, which are inserted into the IQOS holder, and an IQOS Pocket Charger, used to charge the IQOS Holder (together “the IQOS Products”). The IQOS Products were first launched by PMI group in 2014. Today the IQOS Products are available in approximately 43 markets across the world. Per Complainant, PMI group has invested USD 4.5 billion to market the IQOS Products and as a result the IQOS brand has gained considerable international reputation, with almost 6 million users. Per Complaint, the IQOS products have been almost exclusively distributed through PMI group’s official IQOS stores and websites and selected authorized distributors and retailers, while they are not sold in Turkey.

Complainant is the owner of numerous IQOS trademark registrations. These include:

- International registration no. 1218246 (word mark), registered on July 10, 2014 designating, inter alia, European Union and Turkey, for goods in international classes 9, 11, and 34; and

- International registration no. 1329691 (word and device mark), registered on August 10, 2016, designating, inter alia, European Union and Turkey, for goods in international classes 9, 11, and 34.

The Domain Name was registered on March 21, 2018 and resolves to a website at “www.iqos-tr.com” (the “Website”), which is an online shop, allegedly offering for sale products bearing Complainant’s trademarks, such as IQOS and HEETS. The Website prominently displays Complainant’s trademarks, which are also protected in Turkey, and a number of Complainant’s official product images and marketing material, including material showing Complainant’s trademarked hummingbird design, without any authorization from Complainant. The Website includes a copyright notice claiming copyright in the Website content. Respondent is unknown to Complainant and is not an authorized distributor or reseller of the IQOS Products.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.

B. Respondent

The Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(iii) the Domain Name has been registered and is being used in bad faith.

6.1. Language of the Proceeding

The language of the Registration Agreements is Turkish. The Complaint was filed in English.

Paragraph 11(a) of the Rules stipulates that: “[u]nless 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, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.

Paragraphs 10(b) and (c) of the Rules stipulate, respectively, that:

“(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.

(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel”.

From the above it follows that the language requirement provided for in paragraph 11(a) of the Rules is to be balanced against ensuring that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their case (General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334, Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593, Volkswagen AG v. Nowack Auto und Sport – Oliver Nowack, WIPO Case No. D2015-0070; Groupe Auchan v. Yang Yi – auchan.xyz, WIPO Case No. D2014-2094; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, the Panel must have regard to all “the relevant circumstances”. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the parties (SWX Swiss Exchange v. SWX Financial LTD, WIPO Case No. D2008-0400; Volkswagen AG v. Nowack Auto und Sport – Oliver Nowack, supra; Groupe Auchan v. Yang Yi – auchan.xyz, supra; WIPO Overview 3.0, section 4.5.1).

In the case at issue, the Panel considers that conducting the proceedings in English would not be disadvantageous to the Respondent, since it results from Complainant’s undisputed allegations that the Respondent has demonstrated an ability to understand and communicate with its potential international customers through its online shop at “www.iqos-tr.com”. As per Complainant, the Website is clearly addressing an international public. The Respondent included a function in the website allowing to switch the currency to EUR or USD. Furthermore, as per Complainant, substantial time and effort would be incurred if the Complaint and annexes thereto had to be translated into Turkish (Orlane S.A. v. Yu Zhou He / He Yu Zhou, WIPO Case No. D2016-1763). The Panel is of the view that the language requirement should not cause any undue burden on the parties or undue delay. Finally, the Panel notes that the Respondent did neither object to the Complaint being in English nor to the request made that the proceedings be conducted in English (Volkswagen AG v. Song Hai Tao, WIPO Case No. D2015-0006).

Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion, according to paragraph 11(a) of the Rules, and allow the proceedings to be conducted in English, as requested by Complainant.

6.2. Substantive Issues

A. Identical or Confusingly Similar

Complainant has demonstrated rights through registration and use on the IQOS mark.

The Panel finds that the Domain Name <iqos-tr.com> is confusingly similar with the IQOS trademark of Complainant.

The Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The hyphen “-” and the letters “tr”, which are the country code name for Turkey, added in the Domain Name, do not avoid a finding of confusing similarity as they are non-distinctive (Philip Morris Products S.A. v. Yang Jiang Nan, WIPO Case No. D2018-1869; Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin1 , WIPO Case No. D2015-0135; WIPO Overview 3.0 , section 1.8 ).

The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson InternationalLicensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

The Panel finds that the Domain Name <iqos-tr.com> is confusingly similar to the IQOS trademark of Complainant.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complaint, Respondent was not authorized to register the Domain Name.

Respondent did not demonstrate prior to the notice of the dispute any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.

On the contrary, as Complainant demonstrates, the Domain Name resolves to a website containing text and content that suggests falsely that the Website is that of Complainant or of an affiliated entity or of an official dealer of Complainant.

Per Complaint, Respondent is not an affiliated entity or an authorised distributor or reseller of Complainant and no agreement, express or otherwise, exists allowing the use of Complainant’s trademarks on the Website and the use of the Domain Name by Respondent.

Further, per Complaint, Complainant’s IQOS and HEETS branded products are not sold in Turkey.

A distributor or reseller can be making a bona fide offering of goods or services and thus have a legitimate interest in a domain name only if the following cumulative requirements are met (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; WIPO Overview 3.0, section 2.8.1: (i) respondent must actually be offering the goods or services at issue; (ii) 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) respondent must not try to “corner the market” in domain names that reflect the trademark.

These requirements are not cumulatively fulfilled in the present case. The Domain Name falsely suggests that it is an official site of Complainant or of an entity affiliated to or endorsed by Complainant. The Website extensively reproduces, without authorization by Complainant, Complainant’s trademarks, official Complainant’s product images and marketing material, while it includes a copyright notice, claiming ownership of the Website content, without any statement as to the true ownership of the Website or any disclaimer of association with Complainant.

Furthermore, the use of a domain name which intentionally trades on the fame of another and suggests affiliation with the trademark owner cannot constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847; Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946, AB Electrolux v. Handi Sofian, Service Electrolux Lampung, WIPO Case No. D2016-2416; WIPO Overview 3.0, section 2.8).

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As per Complaint, Complainant’s IQOS trademark is well known for smoking devices. Furthermore, “iqos” is a fictitious word. Because the IQOS mark had been widely used and registered at the time of the Domain Name registration by Complainant, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

As regards bad faith use of the Domain Name, Complainant has demonstrated that the Domain Name was used to create a website, which prominently displays the Complainant’s registered logos and official product images thereby giving the false impression that it is operated by Complainant or a company affiliated to Complainant or an authorised dealer of Complainant. The Domain Name operates by intentionally creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the website it resolves to. This can be used in support of bad faith registration and use (Booking.com BV v. Chen Guo Long, WIPO Case No. D2017-0311; Ebel International Limited v. Alan Brashear, WIPO Case No. D2017-0001; Walgreen Co. v. Muhammad Azeem / Wang Zheng, Nicenic International Group Co., Limited, WIPO Case No. D2016-1607; Oculus VR, LLC v. Sean Lin, WIPO Case No. DCO2016-0034; and WIPO Overview 3.0 , section 3.3 and 3.4 ).

The bad faith use of Respondent is further indicated by the fact that the Website creates the false impression that Complainant offers for sale its IQOS and HEETS products in Turkey, while it is not.

The Panel considers the following factors: (i) the reputation of Complainant’s mark, (ii) the failure of Respondent to submit a response, (iii) the concealment of Respondent’s identity through use of a privacy shield (BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364; Fédération Internationale de Football Association (“FIFA”) v. Whois Privacy Shield Services / Winsum Wong, WIPO Case No. D2016-2310; The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) v. PrivacyProtect.org, Domain Admin, ID # 10760, WIPO Case No. D2012-0924) and (iv) the implausibility of any good faith use to which the Domain Name may conceivably be put, given that, as Complainant has demonstrated, the Domain Name resolves to a website which gives the false impression that it is operated by Complainant or an official retailer of Complainant and that the IQOS Products are offered for sale in Turkey.

Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.

Complainant has established Policy paragraph 4(a)(iii).

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 <iqos-tr.com> be transferred to the Complainant.

Marina Perraki
Sole Panelist
Date: January 16, 2019