Philip Morris Products S.A. v. WhoisGuard, Inc.
Claim Number: FA1811001815604
Complainant: Philip Morris Products S.A. of Neuchâtel, Switzerland.
Complainant Representative:
Complainant Representative: Boehmert & Boehmert Anwaltspartnerschaft mbB of BERLIN, Germany.
Respondent: WhoisGuard, Inc. / WhoisGuard Protected of Panama, Panama, International, PA.
Respondent Representative: «cFirstName» «cMiddle» «cLastName»
REGISTRIES and REGISTRARS
Registries: dot Bid Limited
Registrars: NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
Petter Rindforth, as Examiner.
Complainant submitted: November 9, 2018
Commencement: November 9, 2018
Default Date: November 27, 2018
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Findings of Fact:
The Complainant is the owner of the Swiss national trademark IQOS, registered with the Swiss Federal Institute of Intellectual Property (“IGE”) as Reg. No. 660918 IQOS, registered July 7, 2014, covering goods in Intl Classes 9, 11 and 34.
The Complainant has provided evidence of use of the trademark, as registered by the Trademark Clearinghouse.
The disputed domain name was registered on June 27, 2018.
There is no information on the Respondent, other than provided by the Complainant.
Legal Findings and Conclusion:
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
IDENTICAL OR CONFUSINGLY SIMILAR
The Complainant met the standard sets out in 1.2.6.1. of the URS Procedure since the Complainant has proved its right to the valid Swiss national Trademark registration No. 660918 IQOS (word). Further, the Complainant has proved that the said trademark is in current use by presenting confirmation from the Trademark Clearinghouse.
The relevant part of the disputed domain name is <iqosatismagazasi> as the added top-level domain – being a required element of every domain name – is generally irrelevant when assessing whether or not a mark is identical or confusingly similar and in this case does nothing to distinguish the disputed domain name from the Complainant’s trademark.
The disputed domain name thereby consists of a) the complainant’s trademark, b) the word “atis”, and c) the word “magazasi”. The Examiner finds that the part of the domain name to the right of the initial part “iqos” only relates to “shot” and “shop” in the Turkish language. None of the part of the disputed domain name to the right of “iqos” is distinctive or in any other way reduces the similarity of the domain name compared to the Complainant’s trademark IQOS, especially with reference to the fact that at least the word “magazasi” indicarted in a descriptive way that it is place where the public can buy the Complainant’s goods market IQOS.
The Examiner concludes that the disputed domain name is confusingly similar to the Complainant's trademark IQOS.
NO RIGHTS OR LEGITIMATE INTERESTS
The Respondent does not have any rights in <iqosatismagazasi.bid>, as the Complainant has not authorized the Respondent to register a domain name containing its registered and used trademark IQOS, nor is the Respondent commonly known by the disputed domain name.
As IQOS is a distinctive and well known trademark, the Examiner also draw the conclusion that the Complainant has shown that the Respondent cannot have any legitimate interests in registering and using <iqosatismagazasi.bid>.
To summarize, the Examiner find that the Complainant has established that the Respondent has no rights or legitimate interests in <iqosatismagazasi.bid>.
BAD FAITH REGISTRATION AND USE
The According to the URS Procedure 1.2.6.3, examples of circumstances that demonstrate bad faith registration and use by the Registrant include:
a. Registrant has registered or 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 documented out-of pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
In this case, the Complainant has shown that the Respondent has linked the disputed domain name to a web site, showing the Complainant’s trademark, referring to Complainant’s trademark rights and history and marketing itself as a safe seller of electronic cigarettes, thereby creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site an/or of a product (electronic cigarettes with the trademark IQOS) on that web site.
Thus, the Examiner concludes that the Complainant has established that the Respondent has registered and used <iqosatismagazasi.bid> in bad faith.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
Petter Rindforth, Examiner
Dated: November 27, 2018
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