Philip Morris Products S.A. v Mehmet Balcı

WIPO Case No. D2022-2232

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Mehmet Balcı

Case No. D2022-2232

1. The Parties

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

The Respondent is Mehmet Balcı, Türkiye.

2. The Domain Name and Registrar

The disputed domain name <iostamiri.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2022. On June 20, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 20, 2022, 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 June 21, 2022, 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 June 22, 2022.

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 June 23, 2022. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2022. The Respondent sent several informal communication emails on June 24, July 6, and July 21, 2022, however did not submit any formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on July 18, 2022.

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The Center appointed Kaya Köklü as the sole panelist in this matter on July 21, 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 is part of the Philip Morris International Inc. group, which is a group of companies active in

the field of tobacco and smoke-free products.

The Complainant owns various word and figurative IQOS trademark registrations around the world, including

in Türkiye, where the Respondent appears to be located (Annex 7 to the Complaint). According to the

Complaint, the Complainant is, among others, the registered owner of the International Trademark

Registration No. 1218246 (registered on July 10, 2014) and No. 1329691 (registered on August 10, 2016) for

IQOS, covering trademark protection, inter alia, for electronic cigarettes as covered in classes 9 and 11

(Annex 6 to the Complaint).

The Respondent is reportedly an individual from Türkiye.

The disputed domain name was registered on August 6, 2021.

The screenshots, as provided by the Complainant (Annex 8 to the Complaint), show that the disputed

domain name resolves to a website in the Turkish language, which is used for offering repair and

maintenance services for IQOS smoke-free heaters. On the website, the IQOS word mark, the

Complainant’s official logo and a number of its official product images are prominently used without any

visible disclaimer describing the (lack of) relationship between the Parties.

5. Parties’ Contentions

A. Complainant

The Complainant is of the opinion that the disputed domain name is confusingly similar to its IQOS
trademark.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is rather argued that the disputed domain name falsely suggests that there is

some official or authorized link between the Complainant and the Respondent.

Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith.

The Complainant argues that the Respondent must have been well aware of the Complainant’s IQOS

trademark when registering the disputed domain name, particularly as the Respondent prominently uses the

Complainant’s IQOS trademark and logo as well as a number of official product images on the website

associated to the disputed domain name, without authorization and any disclosure of the lack of relationship

between the Complainant and the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. In his informal communications to the Center, the Respondent stated, inter alia, “I do not accept this case. […] There is a product that I sell and there is no product in my domain name.” and “I am an electronics repairman and I repair all electronic devices.” Further, the Respondent stated that the disputed domain name does not comprise the

Complainant’s trademark.

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6. Discussion and Findings

According to paragraphs 14 and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with
the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the
Complaint where no formal response has been submitted.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark 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.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where
relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the

WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will

decide consistent with the consensus views captured therein.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has registered trademark rights in the IQOS mark by virtue of various

trademark registrations, including trademark registrations covering protection in Türkiye, where the

Respondent is reportedly located.

The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered

IQOS trademark. In the Panel’s view, the disputed domain name contains a phonetically and visually similar

misspelling of the Complainant’s IQOS trademark. A domain name which consists of an intentional

misspelling of a trademark is considered to be confusingly similar to the relevant mark. The assessment of a

confusing similarity is further supported by the content of the website associated to the disputed domain
name.

As stated at section 1.15 of the WIPO Overview 3.0, the content of a website associated to a disputed domain name is usually disregarded for the assessment of confusing similarity under the first element, but may in exceptional circumstances be considered by a panel, if it appears prima facie that the Respondent

seeks to target a trademark through the disputed domain name.

In the present case, the content of the website associated to the disputed domain name is clearly showing the Complainant’s IQOS trademark and products and, hence, prima facie justifies the Panel’s conclusion for

the purpose of the first element that the Respondent is targeting the IQOS trademark, having registered the

disputed domain name due to its confusing similarity.

As further stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms does generally not prevent a finding of confusing similarity. In the present case, the mere addition of the Turkish term “tamiri” (which means “repair” in the English language) does not, in view of the Panel, serve to prevent a finding of confusing similarity between the disputed domain name and the Complainant’s IQOS trademark.

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Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.

While the burden of proof on this element remains with the complainant, previous UDRP panels have

recognized that this would result in the often impossible task of proving a negative, in particular as the

evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel
agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the

burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file

any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed

domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).

In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s IQOS trademark in a confusingly similar way within the disputed domain name.

There is also no indication in the current record that the Respondent is commonly known by the disputed

domain name. In the absence of a formal response, the Respondent has particularly failed to demonstrate
any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy,
paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name.

In this regard, the Panel is convinced that the Respondent cannot be assessed as a legitimate repair service for the Complainant’s products in light of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”) and thus is not entitled to use the disputed domain name accordingly. The criteria as set forth in

Oki Data are apparently not fulfilled in the present case. The Panel particularly notes that the website which is associated to the disputed domain name does not adequately disclose the relationship, or rather the lack thereof, between the Respondent and the Complainant. Quite the opposite, the prominent use of the
Complainant’s IQOS trademark and logo, as well as official product images, is in view of the Panel, sufficient

evidence that the Respondent intentionally tries to create the false impression that the Respondent might be an official and authorized repair service for the Complainant’s products in Türkiye. This is supported by the fact that the Respondent does not disclose any company name or other sufficiently clear indication as to the

provider of its alleged repair services. In the Panel’s view, this takes the Respondent out of the Oki Data

safe harbour for purposes of the second element.

Bearing all this in mind, the Panel finds that the Respondent is not making a bona fide offering of services

under the disputed domain name nor a legitimate noncommercial or fair use.

Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In the Panel’s view, the Respondent has registered and is using the disputed domain name in bad faith.

The Panel is convinced that the Respondent must have had the Complainant’s IQOS trademark in mind when registering the disputed domain name.

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It appears that the Respondent has registered the disputed domain name solely for the purpose of creating an association with the Complainant and its smoke-free products. After having reviewed the Complainant’s screenshots of the associated website (Annex 8 to the Complaint), the Panel is convinced that the

Respondent has intentionally registered the disputed domain name in order to generate traffic to his own

website, by deliberately creating a likelihood of confusion with the Complainant as to the source,

sponsorship, affiliation or endorsement of his website.

The Panel additionally notes that the Respondent used a privacy service when creating the disputed domain name. Although privacy services are legitimate in many cases, it is for the Panel difficult to see in the

present case why the Respondent should need to protect its identity except to make it difficult for the

Complainant to protect its trademark rights. The Panel rather believes that the Respondent deliberately

opted for a privacy shield in order to prevent an efficient enforcement of legitimate trademark rights by the

Complainant.

The Panel concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.

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 <iostamiri.com> be transferred to the Complainant.

/Kaya Köklü/ Kaya Köklü Sole Panelist Date: August 2, 2022