WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Inter-IKEA Systems B.V v. Technology Education Center

Case No D2000-0522

 

1. The Parties

The Complainant is Inter-IKEA Systems B.V. whose address is Olof Palmestraat 1, NL-2616 LN Delft, The Netherlands. The Complainant is represented by Fross Zelnick Lehrman & Zissu P.C. of 866 United Nations Plaza, New York, New York 10017, USA.

The Respondent is Technology Education Center which according to InterNicís WHOIS directory has an address at #402 5125 Riverbend Road, Edmonton, AB T6H 5K5, Canada. The search also gives an administrative contact Irfan Qureshi of the same address.

 

2. The Domain Name and Registrar

The domain name the subject of the dispute is "e-ikea.com" which was registered with Network Solutions Inc on 28 July 1999. Network Solutions, Inc. have confirmed that they are in receipt of the complaint and that they are the registrar of the domain name registration and that the respondent Technology Education Center is the current registrant of the domain name in dispute.

 

3. Procedural History

The complaint was received on 29 May 2000 in hard copy and the appropriate fee of US$1,000 paid. The panel agrees with the WIPO Centerís assessment that the complaint complies with the formal requirement under the WIPO Rules.

Notification of the complaint was given to the respondent on 13 June 2000 by way of email and subsequently by hard copy. The Panel has seen a copy of the postal certificate dated 13 June addressed to the Respondent at the above address. A copy was also sent to Irfan Qureshi at the same address.

No response was received within the time permitted by the Rules. Accordingly on 4 July notice of the Respondentís default was given by email and hard copy. Despite this no response was forthcoming and on 25 July Mr Clive Duncan Thorne was appointed as a singe panel.

 

4. Factual Background

The Complainant has adduced evidence that the trade mark IKEA was first used in relation to furniture in 1950 after which the first IKEA catalogue was published in 1951. The first IKEA store in Sweden was opened in 1958. Since then the business has grown to the extent that the Complainant has 155 IKEA furnishing stores in 29 countries around the world. The Complainant states that its sales of IKEA furnishings and accessories totalled over US$8 billion in 1999.

The Complainantís first registration of IKEA as a trade mark was in 1943 in Sweden. Today IKEA is the registered owner of 1,200 registrations for IKEA and variants of IKEA in more than 70 countries around the world. At Exhibit B to the complaint is a database setting out a partial listing of the Complainantís IKEA trade marks world wide.

The Respondent appears to reside in Canada. In Canada the Complainant owns four registrations and has two pending applications for the mark IKEA all of which were filed prior to the Respondentís domain name registration (28 July 1999). In particular the Complainantís earliest Canadian registration for IKEA is dated 21 October 1977.

The Complainant has also adduced evidence of the history of IKEAís trading together with (Exhibit H) a number of print outs setting out a sample of articles about the Complainantís IKEA stores.

 

5. Parties Contentions

The Complainant contends

(i) The domain name is identical or confusingly similar to the Complainantís IKEA trade mark in which the Complainant has prior and exclusive rights.

(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and

(iii) The domain name was registered and is being used in bad faith.

Under the provisions of paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy the burden of proof is upon the Complainant to show:-

(i) The Respondentís domain name is identical or confusingly similar to a trade mark of service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and

(iii) The Respondentís domain name has been registered and is being used in bad faith.

The Complainant must prove that each of these three elements are present. In the absence of a response from the Respondent the Panel expects the Complainant to be in a position to prove each of those three elements.

(i) The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

In the light of the evidence of the Complainants trade mark rights in IKEA and long trading history using the name IKEA the Panel is prepared to accept that the Complainant has rights in the trade mark IKEA and a world wide trading reputation and good will for IKEA. In particular the Panel notes that the Norwegian courts have apparently held the IKEA mark to be "famous".

The difference between the trade mark IKEA and the Respondentís domain name is the addition of the prefix "e-" to the domain name. This prefix has become a generic or common descriptive term used to identify electronic commerce activity. The Panel does not consider that the addition of the prefix "e" to a service mark would be sufficient to distinguish new internet service sources from existing service sources. It is prepared to accept the submission of the Complainant that the addition of the prefix "e-" to the Complainantís IKEA registered mark and trade mark to form the domain name "e.ikea" is insignificant and that therefore the domain name is confusingly similar to the Complainantís trade mark IKEA.

The Complainant therefore succeeds in proving the first of the elements within paragraph 4(a) of the Policy.

(ii) The Respondent has no rights or legitimate interest in respect of the domain name

The Complainant has confirmed that there is no licence, consent or other right by which the Respondent would be entitled to register or use the domain name incorporating the Complainantís trade mark IKEA. There is of course no evidence to the contrary from the Respondent. Equally there is no evidence that the Respondent is trading using the domain name so as to demonstrate acquired rights of its own. The Panel is therefore prepared to accept the Complainantís submissions that the Respondent has no rights or legitimate interest in respect of the domain name.

The Complainant therefore succeeds in respect of the second element of paragraph 4(a).

(iii) The Respondentís domain name has been registered and is being used in bad faith.

The Complainant asserts 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. Paragraph 4(b) of the Policy sets out certain circumstances which without limitation if found by the Panel to be present shall be evidence of the registration and use of the domain name in bad faith.

Sub-paragraph 4(b)(i) refers to circumstances "indicating that the Respondent has registered or has 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 trade mark for valuable consideration in excess of the Respondentís documented out of pocket costs directly related to the domain name."

The Complainant has adduced evidence that following the Complainantís advisers sending a notice putting the Respondent on notice of the Complainantís rights by letter dated 5 April the Respondentís advisers Messrs Fraser Milner responded to Fross Zelnick Lehrman & Sissu on 3 May making an offer of US$5,000 for the transfer of the domain name. The Panel takes the view that the figure of US$5,000 exceeds what would be incurred by way of documented out of pocket costs and that accordingly paragraph 4(b)(i) is satisfied.

Even if the Panel is wrong on this point the Complainant has adduced evidence indicating the Respondent owns numerous domain names which correspond with well known third party trade marks including E-XEROX.COM, E-JCREW.COM, E-TOSHIBA.COM, E-NORTEL.COM, LUSHCOSMETICS.COM, E-TITLEIST, E-NOVELL.COM and E-STARBUCKS.COM. The Complainant has exhibited printouts from the Canadian Intellectual Property Offices Trade Mark base showing registration of corresponding trade marks owned by third parties. The Panel regards this as prima facie evidence so as to satisfy sub paragraph 4(b)(ii) of the Policy that the Respondent "has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct."

It follows that the Complainant has successfully proved the third element within paragraph 4(a) of the Policy.

 

6. Decision and Findings

In accordance with paragraph 4(i) of the Policy the Panel requires the domain name "e-ikea.com" to be transferred to the Complainant.

 


 

Clive Duncan Thorne
Presiding Panelist

Dated: 7 August, 2000