WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter Ikea Systems B.V. v. Ikea International Co. Ltd.
Case No. D2003-0965
1. The Parties
The Complainant is Inter Ikea Systems B.V., Netherlands, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Ikea International Co. Ltd.,Taiwan, Province of China, represented by its administrative contact.
2. The Domain Name and Registrar
The disputed domain name <ikea-int.com> is registered with Melbourne IT trading as Internet Name Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 6, 2003. On December 8, 2003, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain name at issue. On December 9, 2003, Melbourne IT trading as Internet Name Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 10, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2003. The Response was filed with the Center on December 26, 2003.
The Center appointed Gerd F. Kunze as the sole panelist in this matter on January 14, 2003. 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
A. The Complainant
The Complainant is an internationally active company in the field of home furnishing and household wares. The founder of the company started to use the trademark IKEA in 1950 and published the first IKEA catalogue in 1951. Since then the business has substantially grown and today the Complainant has 190 furnishing stores in 31 countries on four continents. In Taiwan the Complainant opened its first IKEA store in 1994 and in 1998 a mega store in downtown Taipei. Another IKEA warehouse is situated in Tao-Yuan County.
The Complainant is the owner of over 1200 trademark registrations for the wordmark IKEA and a design mark combining the word IKEA with graphical elements, in more than 70 countries, and covering a wide range of products and services. Exhibit F to the complaint contains a data bank printout providing a partial listing of Complainant's IKEA trademarks worldwide and Exhibit G provides for a list of over 60 trademark registrations and 6 pending applications of the Complainant in Taiwan for the word IKEA in Latin characters and in Chinese characters and its IKEA device mark. Many of them date back to 1987 and all were applied for registration and (apart from the 6 pending applications) registered before 1997, long before the Respondent registered the domain name <ikea-int.com>. The trademarks are principally, but not exclusively being used for furnishing and accessories and related services.
These facts are evidenced by the attachments to the Complaint and not contested by the Respondent. The Panelist is satisfied that the documents submitted by the Complainant truthfully reflect the factual circumstances of the case.
The Complainant administers, amongst others, a sophisticated and informative website under the domain name <ikea.com> (providing links to the countries where the Complainant operates) and a website, specifically directed to Taiwanese customers under the domain name <ikea.com.tw>. On the Complainant's websites the trademark "IKEA" is shown prominently.
B. The Respondent
The Respondent registered on August 28, 2002, the domain name <ikea-int.com>. This domain name leads to a website of the Respondent where several skin care products are advertised and a several links to the website "anynw.com" are provided. The latter leads to a package website of Yahoo Taiwan, where products may be ordered online.
5. Parties’ Contentions
The Complainant submits that the trademark IKEA is an acronym that is comprised of the initials of its founder, Ingvar Kamprad, and the initials of the farm where he grew up. Consequently it considers that the term IKEA has no meaning in any language. The Complainant furthermore submits that the trademark IKEA is internationally well-known, and that the Beijing No. 2 Intermediate People’s court of China in June 2000, considered the mark IKE A to be well-known in China. The Complainant considers the trademark IKEA to be well-known in Taiwan as well. It not only refers to the IKEA outlets in the country, but also to press articles, submitted in annexes to the Complaint. For example, in the Taiwan Headlines dated December 28, 1999, it is mentioned that among international furniture and hardware chains that are entering Taiwan, "Ikea and B&Q stand out as the most recognized names among Taiwan consumers" and that stores like Ikea are "revolutionizing Taiwan’s furniture business".
The Respondent does not contest the Complainant’s submission that its mark IKEA is well-known internationally and in Taiwan. It believes that IKEA and its company have different target consumers, since its business is to import lanolin skin care products from Australia and New Zealand.
The Respondent submits that the company has been established on August 8, 2002, under a Chinese name, composed of the name of its owner and manager and the Chinese word for "international". As proof for this submission the Respondent has added a document written entirely in Chinese and without any translation into Latin script. Since the language of the proceedings is English, and the Panelist cannot read Chinese characters, the document is of little value, but the Panelist accepts that the Respondent is an established company, operating under its name written in Chinese characters, as indicated in the Response. The Respondent furthermore submits that the transliteration of the name of its owner is "Ikea" and that the domain name, registered on August 28, 2002, has been chosen by using the transliteration of the Chinese company name. According to the Respondent, the domain name has been used to provide information about the company and the products that were imported since 2002.
The Respondent furthermore, submits that it signed a one-year contract with Yahoo Taiwan in order to set up a shopping website and in May 2003 the company started to sell, at the Yahoo Taiwan shopping site, skin care products, imported from New Zealand and Australia, which it considers to be totally different from the IKEA furnishing and household goods. It furthermore submits that it plans to run its shopping website by itself from May 2004 and that therefore it registered the domain name <anynw.com> on November 3, 2003.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant or cancelled:
1) The domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
As the Complainant has convincingly put forward, its trademark IKEA is, at least in many commercial languages, an invented word with no meaning and therefore inherently distinctive. Complainant's trademark registrations of the word IKEA in Taiwan evidence that it has exclusive rights in that word in Taiwan, as in many other countries. To the knowledge of the Complainant no other person has registered trademark rights in the word IKEA for whatever goods or services and the Respondent has not contested this submission.
Furthermore, IKEA is an internationally well-known trademark. Not only is the Panel personally convinced that IKEA is a well-known trademark, the Complainant has also submitted extensive evidence to prove the wide reputation of the mark. The Respondent has not contested this evidence. It has also been recognized in many earlier panel decisions that the trademark IKEA is well-known. As examples Inter IKEA Systems B.V. v. Technology Education Center, WIPO Case No D2000-0522 and Inter IKEA Systems B.V. v. Polanski, WIPO Case No. D2000-1614, are referred to. Based on the facts and evidence submitted by the Complainant the Panel is satisfied that also in Taiwan the trademark IKEA is well-known. Furthermore, the Respondent has chosen to register its domain name in the ".com" domain and not in the <.tw> country code domain. Therefore, both the international fame and the high degree of knowledge of consumers in Taiwan must be taken into consideration when considering confusing similarity. Consequently, the trademark IKEA clearly enjoys a broad scope of protection beyond the goods and services offered at the Complainant’s outlets (also Art. 23(12) of the Taiwanese Trademark Law grants well-known marks protection beyond similar goods and services).
The domain name <ikea-int.com> is not identical to the mark IKEA of the Complainant, however there can be no doubt that it is confusingly similar. It incorporates in its entirety the mark IKEA, followed by "-int", a common abbreviation of the non-distinctive word "international". This is the more true as the Complainant operates on an international basis. In a similar case, the Panel has considered the domain name <ikeaworld.com> to be confusingly similar to the mark IKEA (Inter IKEA Systems B.V. v. Chekroun, WIPO Case No. D2000-0478). Given the fact that IKEA is internationally well-known, consumers, becoming aware of the domain name <ikea-int.com> will reasonably believe that it is for or related to the global website of the Complainant. The Respondent argues that, when searching in the Internet by typing IKEA in one of the major search engines, the result would never be "www.ikea-int.com". This submission can for all practical purposes not be verified since, when searching for IKEA for example at Google, the engine starts listing main references to the Complainant as being the first results from about 459 000 references to IKEA. The sheer number of references to the Complainant’s mark is another sign for the fame of this mark. At the same time it is obvious that combinations of IKEA with other terms, such as "ikea-int", will show up much later than references to the mark IKEA as such. It may therefore be true, that the visitor of the search engine will discontinue searching, before arriving at a reference to the Respondent’s domain name. However, if the Respondent expects users of the Internet to visit its site by using the domain name <ikea-int.com>, it must try to promote in one or the other way this domain name. Otherwise, its website would rarely be visited and the purpose of registering the domain name would have failed. When using, in whatever manner, the domain name <ikea-int.com>, the Respondent will automatically create confusion with the well-known trademark IKEA. The same is true for such Internet users who intentionally type "ikea-int", thus trying to arrive at an international website of the Complainant. In that context it does not matter that the products of the Respondent are different from those of the Complainant. Because the Complainant’s mark IKEA is so well-known, persons being confronted with the use of the domain name of the Respondent for skin care products will either believe that the Complainant now also has included such products in its range of products (even if the main products of the Complainant are in the furnishing and household goods field, the Complainant, at least in a number of its mega stores, also offers some totally different products such as food products; visitors of these stores are therefore already accustomed to find other than furnishing goods in these stores) or assume that there exists some relationship between the Complainant and the business operating under <ikea-int.com> or at least that this business is sponsored by the Complainant.
B. Rights or legitimate interests
There cannot be any doubt that the Respondent has no right to use the mark IKEA of the Complainant as its domain name. The Complainant has not consented to the Respondent's use of the domain name.
The Panel accepts that the Respondent may operate a business under the name (or a part of that name) of its owner, combined with the term "international" (in Chinese). In its Response, the Respondent expressly states that its name is as indicated in the Response in Chinese characters (which the Panel of course cannot read and is not supposed to be able to read, since the language of the proceedings is English). However, the Respondent has not explained to the satisfaction of the Panel why it uses the domain name <ikea-int.com> and uses as (transliterated, respectively as concerns the term "international", translated) name of the registrant of this domain name the company name "Ikea International Co, Ltd". The Complainant has submitted, and the Respondent has not contested, that there exists no company registration for that name under the address given by the Respondent as Registrant. The Respondent submits that "Ikea" is the transliteration of the Chinese name of its owner. Its owner is apparently the person who is indicated as administrative and technical contact, who submitted the Response and whose name is indicated as "Ikea Chou". However, the facts and evidence submitted by the Respondent for the correctness of its own transliteration are not convincing. First, the name of the owner of the Respondent consists (at least) of two parts, the part Chou not being used in the domain name, nor in the company name. Second, even the Panelist can see that the Chinese sign, used by the Complainant for its trademark IKEA in Chinese, is not identical to the Chinese sign used by the Respondent for one part of its name, and transliterated by itself as "Ikea". Why should therefore the pronunciation (and the transliteration) be exactly the same, as the Respondent submits, without offering any proof? Finally it is most surprising to note that, as evidenced by the Complainant, according to WHOIS the administrative contact for the domain name <anynw.com>, which the Respondent expressly submits to have registered in its name (with this submission the Panelist will deal below C), is a Mr. Yi Chia Chou and that the company name of the registrant of that company is indicated as Yichia International (Yichia being quite apparently a combination of "Yi" and "Chia"), with the same address as the address of the Respondent. Why should the Respondent use such different names in English for its Chinese Company name? For the Panelist there is only one explanation: The Respondent intended to use the word "ikea" that – contrary to "Yi Chia" – does not at all sound like a Chinese name, for its domain name <ikea-int.com>. The Respondent cannot, therefore, deduct from its arbitrary transliteration of its owner’s Chinese name into "Ikea" a right of its own at this name. On the contrary, the Panel is satisfied that the correct transliteration of the name of the owner of the Respondent and of the Respondent’s company name is the one used more recently by the Complainant, when registering the domain name <anynw.com>, i.e. "Yi Chia" respectively "Yichia".
None of the circumstances listed under 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are therefore given. The Respondent has submitted that its online shopping center is set under the package website that it bought from Yahoo Taiwan and that the name of its online shop is "Any" combined with Chinese characters having the meaning of "(Any) brave New World". The Respondent registered on November 7, 2003, the domain name <anynw.com>, being an abbreviation of the before mentioned name of its online shop. It explains that it intends to run its own shopping website under that name from May 2004, and that this was the reason that it has registered that domain name. The Respondent furthermore submits that, when promoting its brand, the company uses always the name of the online shopping center of which the hyperlink is "http://sh1.yahoo.edyna.com/ikea-int/index.asp". Contrary to its submission that it registered the domain name <anynw.com> for its future own business, it uses already now this domain name as principal name for the shopping site "www.anyw.com".
From these submissions, and failing any submissions and evidence of the Respondent (in English) about its use of the domain name <ikea-int.com>, the Panel deducts that the sole use made by the Respondent of the domain name <ikea-int.com> is to provide a link to an advertising site of the Respondent, where references to the name of its online shopping center (which at the Internet is presented at "Yahoo shopping") and references to its further domain name <anynw.com> are made. Using one of these links, an Internet user will arrive at the same before mentioned shopping website ("www.anynw.com") where it will arrive when directly using the domain name <anynw.com>. Such use of the domain name <ikea-int.com> cannot be considered to be a bona fide offering of goods or services. No doubt, the Respondent is not known at all under the name <ikea-int.com>, since it apparently never became active under that name. On the contrary, it uses already now the domain name <anynw.com> as principal name for the shopping site "www.anyw.com" and may be known under its original name in Chinese characters.
The Panel concludes that the Respondent has no rights or legitimate interests in the domain name <ikea-int.com>.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent knew the mark IKEA of the Complainant when it registered the domain name <ikea-int.com>. The Respondent does not object to this submission of the Complainant; it is of the opinion that it could chose that name in view of the difference of the goods and services offered. As already said before, the Respondent overlooks in that context that IKEA is an internationally well-known mark and therefore enjoys a very broad scope of protection far beyond the household goods and related services offered by the Complainant. The Panel is satisfied that skin care products are not so totally different from household goods that any danger of confusion of consumers would be excluded.
As already explained above B, the Respondent failed to explain why, when it registered the domain name <anynw.com>, which is the abbreviation of the name of its online shopping site, it used a different company name Yichia International Co Ltd and why the name of the administrative contact (who apparently is the owner of the company) in that case is transliterated into "Yi Chia Chou" and not into "Ikea Chou".
Failing any submission of the Respondent to this fact the Panelist is satisfied that both domain names have been registered by the same company (as admitted) and the same person as its administrative contact, simply using different transliterations of its Chinese name, which is the real name of the company and of its owner (as admitted by the Respondent). The Panel concludes that the only reason for the Respondent to have transliterated a part of its owner’s name and its company name into "Ikea" has been to be able to make use of the well-known name IKEA of the Complainant. If this was the intention of the Respondent the Panel is satisfied that it adopted the domain name <ikea-int.com> for the purpose of attracting and diverting web traffic to its website for commercial gain. Although the Respondent’s trading activities do not extend to the goods traded in by the Complainant, likelihood of confusion by Internet users as to the relationship of the business of the Respondent with the Complainant cannot be excluded (see above 6A). The Respondent denies any promotion of its business through the domain name <ikea-int.com>. However, what should have been the reason to register that domain name and what should have been the reason for establishing a website "www.ikea-int.com" and for providing on that website links to its shopping website, if not to promote its business? The Respondent furthermore contradicts itself by stating that "www.ikea-int.com" is the company’s main website, and that "anynw.com" "will be" its online shopping website.
In conclusion, the Panel is satisfied that, by using the domain name <ikea-int.com>, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 its website or location.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ikea-int.com> be transferred to the Complainant.
Gerd F. Kunze
Date: January 27, 2004