WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter-IKEA Systems B.V. v. Hoon Huh
Case No. D2000-0438
1. The Parties
1.1 The Complainant is Inter-IKEA Systems B.V., of Delft, The Netherlands. The Respondent is Hoon Huh, of Koyang, Kyunggi Do, Korea.
2. The Domain Names and Registrar
2.1 The domain name the subject of this Complaint is "ikeakorea.com".
2.2 The Registrar of this domain name is Network Solutions, Inc. of Herndon, Virginia, USA ("Registrar").
3. Procedural History
Issuance of Complaint
3.1 The Complainant by email and by courier submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") a Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999 ("Uniform Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("Uniform Rules"). The email copy of the Complaint was received by the WIPO Center on May 16, 2000, and the hard copy of the Complaint was received by the WIPO Center on May 17, 2000.
Confirmation of Registration Details
3.2 A Request for Registrar Verification was dispatched by the WIPO Center to the Registrar by email. By email to the WIPO Center on May 31, 2000, the Registrar confirmed that it had received a copy of the Complaint from the Complainant; confirmed that it was the Registrar of the domain name the subject of the Complaint; confirmed that the current registrant of the domain name is the Respondent; informed that the administrative, technical, zone and billing Contact for the domain name is the Respondent, and provided postal, telephone/facsimile and email contact details for the Contact; and informed that the status of the domain name in issue is "active". The Registrar also confirmed that its 5.0 Service Agreement is in effect. Amongst other things, that agreement provides that the Respondent as registrant of the domain name agrees to be bound by the domain name dispute policy incorporated therein. The policy incorporated into the agreement is the Uniform Policy.
Notification to Respondent
3.3 Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, and that payment of the filing fee had been properly made, the WIPO Center issued to the Respondent a Notification of Complaint and Commencement of Administrative Proceeding, by email and by courier on June 13, 2000, to the addresses provided by the Registrar. Copies of this Notification of Complaint were sent to the Complainant, the Registrar and ICANN by email on June 13, 2000.
3.4 This Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent".
Filing of Response
3.5 No Response was filed by the Respondent within the time specified in the Notification of Complaint. A Notification of Respondent Default was sent by the WIPO Center to the Respondent, and copied to the Complainant, by email on July 4, 2000. As of the date of this decision, no response had been filed by the Respondent.
Constitution of Administrative Panel
3.6 Having received no Response from the Respondent within the specified time in the Notification of Complaint, the WIPO Center proceeded to appoint a single Panelist, and invited Dr. Andrew F. Christie to so act. On July 18, 2000, Dr. Christie indicated his ability to act as the sole Panelist in this case, and submitted to the WIPO Center a Statement of Acceptance and Declaration of Impartiality and Independence. On July 18, 2000, the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date, informing of Dr. Christieís appointment. The case before this Administrative Panel was conducted in the English language.
Compliance with the formalities of the Uniform Policy and the Uniform Rules
3.7 Having reviewed the Case File in this matter, this Administrative Panel concurs with the assessment by the WIPO Center that the Complaint complies with the formal requirements of the Uniform Policy and Uniform Rules.
4. Factual Background
4.1 The Complaint asserted, and generally provided evidence in support of, the following facts. Unless otherwise specified, this Administrative Panel finds these facts established.
Complainantís Activities and Trademarks
4.2 The term IKEA has no meaning in any language other than as a trademark identifying the Complainant as a source of origin. It is an acronym that is comprised of the initials of Ingvar Kamprad, the Complainantís founder, and the initials of the name of the farm Elmtaryd, and parish Agunnaryd, where Mr. Kamprad grew up. Mr. Kamprad started using the trademark IKEA on furniture in 1950 and published the first IKEA catalogue in 1951. He opened the first IKEA store in Sweden in 1958. Since then, his business has grown to the extent that the Complainant today has 155 IKEA furnishing stores in 29 countries around the world. In 1999, the Complainantís sales of IKEA furnishings and accessories totalled over US$8 billion.
4.3 The Complainant first registered the mark IKEA as a trademark in Sweden in 1943. Today the Complainant owns more than 1200 registrations for IKEA and IKEA variants in more than 70 countries around the world, including in South Korea. A partial listing of the Complainantís trademark registrations worldwide was provided in Exhibit B to the Complaint. The Complainant owns six trademark registrations in South Korea comprised of IKEA, the IKEA logo, or IKEA in Korean characters, all of which were filed prior to Respondentís domain name registration. The Complainant is not aware of any third party that owns trademark registrations in South Korea consisting of or incorporating the IKEA mark.
4.4 There has been significant third party recognition of the IKEA mark. Exhibit D to the Complaint is an excerpt from the report of a recent study conducted by InterBrand, one of the worldís largest branding companies. InterBrand rated the IKEA brand as the 43rd most valuable in the world.
4.5 The domain name was registered by the Respondent on February 8, 2000. According to a search conducted of the Registrarís WHOIS database as of May 12, 2000, the results of which are contained in Exhibit I to the Complaint, Hoon Huh is the owner of more than 50 domain names, many of which are recognizable as domain names consisting of third party trademarks, including "petcojapan.com", "kmartjapan.com", "petcokorea.com" and "targetkorea.com". In the absence of any submission by the Respondent to the contrary, this Administrative Panel finds that the Hoon Huh who is the registrant of each of these domain names is the same person as the Respondent.
5. Partiesí Contentions
5.1 The Complainant contends that each of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to the domain name the subject of this dispute.
5.2 In relation to element (i) of paragraph 4(a) of the Uniform Policy, the Complainant contends that the domain name is confusingly similar to the Complainantís registered trademark IKEA. The dominant feature of the domain name is the mark IKEA, and so consumers on seeing the domain name will believe it is related to the Complainant.
5.3 In relation to element (ii) of paragraph 4(a) of the Uniform Policy, the Complaint contends that the Respondent has no rights or legitimate interests in respect of the domain name in issue. There exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or other right by which the Respondent could own any domain name incorporating the Complainantís mark IKEA. When the Complainant put the Respondent on notice of its rights, the Respondent did not acknowledge the notice and has not put forward any legitimate claim to the domain name.
5.4 In relation to element (iii) of paragraph 4(a) of the Uniform Policy, the Complainant contends that the Respondent has either registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name, or has done so in order to prevent the Complainant from reflecting its IKEA mark in a corresponding domain name. The Complainant asserts that the Respondent is in the business of selling domain names, a fact which can be inferred from the number and type of domain names registered by Hoon Huh, as described in paragraph 4.5 above. The Complainantís mark is a famous and unique trademark, and is not one that third parties would legitimately choose unless seeking to create an impression of an association with the Complainant. Given the Complainantís rights in its IKEA mark, there are no circumstances wherein the Respondent could make legitimate commercial use of the domain name. In light of Complainantís reputation, the Respondent surely was aware of this fact at the time it registered the name.
5.5 The Respondent did not file a Response to the Complaint.
6. Discussion and Findings
Domain Name Identical or Confusingly Similar to Complainantís Mark
6.1 The relevant part of the domain name "ikeakorea.com" is "ikeakorea". That part of the domain name which is "ikea" is identical to the Complainantís trademark IKEA. The addition of the word "korea" does not prevent the domain name from being confusingly similar to the Complainantís trademark. Internet users would be confused into thinking that the domain name was associated with the Respondent, and in particular with the business of the Respondent in Korea. Accordingly, this Administrative Panel finds that the domain name "ikeakorea.com" is confusingly similar to the Complainantís trademark IKEA.
Respondentís Rights or Legitimate Interests in the Domain Name
6.2 The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Uniform Policy, or of any other circumstances, giving rise to a right to or legitimate interest in the domain name. In light of this fact and the facts that (i) the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating its trademark, and (ii) the mark IKEA is not one that the Respondent would legitimately choose in the context of provision of goods or services via a website unless seeking to create an impression of an association with the Complainant, this Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name.
Domain Name Registered and Used in Bad Faith
6.3 The fact that the Respondent has chosen not to submit a Response is particularly relevant to the issue of whether the Respondent has registered and is using the domain name in bad faith. Rule 14(b) of the Uniform Rules provides that, in the absence of exceptional circumstances, a Panel shall draw such inferences as it considers appropriate from the failure of a party to comply with a provision or requirement of the Uniform Rules. This Administrative Panel finds there is no exceptional circumstances for the failure of the Respondent to submit a Response. This Administrative Panel draws from this failure the following two inferences: (i) the Respondent does not deny the facts which the Complainant asserts, and (ii) the Respondent does not deny the conclusions which the Complainant asserts can be drawn from these facts. Nevertheless, this Administrative Panel still has the responsibility of determining which of the Complainantís assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts.
6.4 The Complainant provided evidence of facts, as detailed in paragraph 4.5 above, which are clearly relevant to the issue of whether the Respondent registered and is using the domain name in bad faith. In particular, these facts establish that the Respondent has engaged in a pattern of conduct that has the effect of preventing trademark owners from reflecting their trademark in a corresponding domain name. The registration of the domain name the subject of this Complaint has the effect of preventing the Complainant from reflecting its trademark IKEA in a domain name corresponding to its activities in Korea, namely "ikeakorea.com". This is use of the domain name of the type contemplated by paragraph 4(b)(ii) of the Uniform Policy, and accordingly is evidence of the registration and use of the domain name in bad faith. Further, the facts detailed in paragraph 4.5 are strongly suggestive of the Respondent registering those domain names, and the domain name the subject of this Complaint, primarily for the purposes of selling those domain names to the owner of the respective trademarks for a sum greater than out-of-pocket expenses. Such use of the domain name is use of the type contemplated by paragraph 4(b)(i) of the Uniform Policy, and accordingly is further evidence of the registration and use of the domain name in bad faith.
6.5 In addition, it is relevant that the Complainantís registered trademark IKEA is long established and widely known. In the absence of evidence or even an assertion by the Respondent to the contrary, knowledge of the Complainantís rights in the trademark can be imputed to the Respondent at the time of its registration of the domain name. When this imputed knowledge is combined with the fact that the Respondent has no right or legitimate interest in the domain name, the fact that the Respondent has engaged in conduct of the type described in paragraph 4(b)(ii) of the Uniform Policy, the fact that the Respondent has engaged in conduct strongly suggestive of the circumstances described in paragraph 4(b)(i) of the Uniform Policy, and the fact that the Respondent provided no evidence or even an assertion of a good faith use which it could make of the domain name, there are sufficient grounds to persuade this Administrative Panel that domain name "ikeakorea.com" was registered and is being used by the Respondent in bad faith.
7.1 This Administrative Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the Uniform Policy in relation to the domain name the subject of the Complaint.
7.2 Pursuant to paragraph 4(i) of the Uniform Policy and paragraph 15 of the Uniform Rules, this Administrative Panel requires that the Registrar, Network Solutions, Inc., transfer to the Complainant, Inter-IKEA Systems B.V., the domain name "ikeakorea.com".
Andrew F. Christie
Dated: August 11, 2000