The Complainant is Inter-IKEA Systems B.V. of Netherlands, represented by Advokatbyrån Gulliksson AB, Sweden.
The Respondent is Henric Lagerquist/Loopia Webbhotel AB of Sweden.
The disputed domain name <iloveikea.nu> is registered with Active 24 ASA.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2009. On June 25, 2009, the Center transmitted by email to Active 24 ASA a request for registrar verification in connection with the disputed domain name. On June 26, 2009, Active 24 ASA 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 July 13, 2009 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 amendment to the Complaint on July 17, 2009. The Center verified that the Complaint together with the amendment to the 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”), which applies as is to disputes concerning .nu registrations.
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 July 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 13, 2009.
The Center appointed Knud Wallberg as the sole panelist in this matter on August 25, 2009. 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.
Despite the fact that the language of the applicable Registration Agreement is Swedish and the fact that all parties are located in Sweden, the Complaint was filed in English and the parties have agreed that the language of the proceeding be English. The Panel will conduct the proceeding accordingly.
The Complainant is the owner of a unique concept for the sale of furniture and other home styling products, all marketed under the trade mark IKEA. The business model is based on franchise and only approved and retailers who have entered into an agreement with the Complainant may use this concept, with the trade mark IKEA included. The trade mark is notoriously famous both in Sweden and globally within the furniture and home styling market. The founder, Ingvar Kamprad, began using it in Sweden for the first time in 1943. Today there are 285 IKEA stores in 36 countries all over the world and the sales amount to 22,4 billion euros, in the financial year of 2008 alone. The IKEA Catalogue is printed in almost 200 million copies and 52 different editions are distributed.
Although IKEA is an acronym, formed by the fast business address of Ingvar
Kamprad - Ingvar Kamprad Elmtaryd Agunnaryd — the trademark has a very high level of original distinctiveness which through a global use has led to the trademark. The disputed domain name appears to have been registered on January 14, 2009.
IKEA being one of the world's most well-known and reputed trademarks. Furthermore, the Complainant is the holder of 1. 400 trademark registrations worldwide and the trademark IKEA is one of the most famous, well reputed and well known in Sweden and in the European Union.
The Complainant asserts that the domain name <iloveikea.nu> is confusingly similar to the registered and well-known trademark IKEA of the Complainant. The trademark of the Complainant is in its entirety contained in the disputed domain name <iloveikea.nu>. The words “i” and “love” are only generally descriptive and praising expressions and do not contribute to the distinctiveness of the disputed domain name. It remains confusingly similar to the main trademark and company name of IKEA.
IKEA is a fanciful acronym and has an extraordinary high degree of distinctiveness. It is obvious that visitors to a website named “www.iloveikea.nu” will get the impression that there is a commercial connection to the Complainant, not diminished by the fact that the disputed domain name <iloveikea.nu> is intended for commercial trade with second-hand furniture, made for and sold by the Complainant. This Complaint is not directed against the trade with second-hand IKEA furniture per se. Such trade is permissible according to most trademark laws. However, the use of the IKEA house mark as a designation of the commercial origin of the used goods in such a way that may give the impression that IKEA has granted its consent or licence or may have approved of the quality of the used goods is not permissible, and takes undue advantage of the good-will of the trademark IKEA.
The Respondent or the company he represents has no right or legitimate interest in the disputed domain name <iloveikea.nu>. The Complainant has not given any permission to the Respondent to use the Complainant's trademark or to register a domain name that contains the trademark IKEA.
The Respondent has, after registering the disputed domain name, provided an active website where ads for second-hand IKEA-furniture can be posted. The disputed domain name is thus used for commercial activities which cannot be regarded as fair and legitimate or non-commercial. Further, the Respondent cannot be said to be commonly known by the disputed domain name. After registering the disputed domain name, the Respondent has aggressively started to market its business and website and has appeared in several newspaper and web based articles in Sweden. In these articles, the Respondent does not deny that one uses the IKEA trademark to push for his business. This constitutes an unauthorized use of the good reputation of the Complainant.
Further, the Respondent issued a press release on April 20, 2009, where the Respondent, unauthorized again, used the trademark of the Complainant both in text and logo. Although the press release concerns the start of the website under the domain name <iloveikea.se>, the Respondent's intentions for the here disputed domain name are demonstrated by the above-mentioned articles and the mail conversation between the parties in that connection. It is thus clear that the same commercial purpose applies for the domain <iloveikea.nu>. This disputed domain name is linked to an identical website as the website linked to the domain name <iloveikea.se>. When the Respondent refers to the disputed domain name the Respondent chose to emphasize the Complainant's trademark in upper case letters. It is clear form the press release that the website has a commercial, illegitimate purpose.
The use of <iloveikea.nu> can be seen as the use of the distinguishing mark of IKEA as a distinguishing element of the origin of the goods. The use of the designation as the commercial origin of the goods creates an impression that it is in fact the Complainant who provides a market-place for second-hand IKEA products. This is the impression the visitor to the website will get. Such visitors will certainly get the impression that the market-place has been made by the consent of IKEA or by its contribution in some respect. The registering of the disputed domain name constitutes an infringement of the Complainant's rights.
Furthermore, the Complainant has no possibility of controlling the state or quality of the second-hand goods. These goods may have been repaired or changed by the previous users and therefore the quality may be inferior to what can be reasonably expected without any possibility for IKEA to check or control it. Therefore, the Complainant has a legitimate interest of its trademark IKEA not suffering loss of its good-will and reputation through dilution.
The Respondent on the other hand has no such legitimate interest in using a domain name comprising of IKEA as a business denominator. The only legitimate interest would be to fairly use the trademark when informing the customers that the Respondent's business concerns the trade in second hand IKEA furniture and not as a name for the enterprise itself.
The Complainant has, after the Complainant was alerted of the marketing of the website, had certain contacts with the Respondent to investigate the possibility to obtain a voluntary transfer of the domain name to the Complainant. The Respondent has been evasive in his correspondence. At the end of May 2009 the Respondent was however quite explicit as to what purpose the disputed domain name was registered for and the use (intended and current) of it as put forward in the Annexes to the Complaint, which clearly provides evidence of his bad faith registration and use of the disputed domain name.
Furthermore, at the website the Respondent uses the trademark of the Complainant.
It is from the view of the Complainant apparent that the Respondent has registered and is using the disputed domain name in bad faith and in an attempt to trade of the well known and well-reputed trademark of the Complainant. At present, the services on the website are provided for free in an attempt to attract customers. However, it is evident form the website that as of August 1, 2009, the advertisements on the website will no longer be provided for free. This is further evidence of the trade of the good reputation of the Complainant, to the benefit of the Respondent and to the detriment of the trademark of the Complainant.
Thus, all the elements for the transfer of the domain name in dispute are at hand, which is supported by earlier decisions under the UDRP in the category of “ilove-domains”.
Despite the indications to the contrary in his correspondence with the Center the Respondent did not reply to the Complainant's contentions.
According to paragraph 15(a) of the Rules the panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) that the respondent has no legitimate interests in respects of the domain name; and
(3) that the domain name has been registered and used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.
In this case the disputed domain name consists of the widely known trademark IKEA and the addition of the generic words “I love” and the “.nu” top level designation. The incorporation of a well-known trademark in its entirety as a dominant part of a domain name has been found in previous panel decisions to be confusingly similar to this trademark regardless of whether the additional elements express endorsement as in this case, are pejorative (“sucks”) or of a more neutral kind such as “customer”. In this context the Panel explicitly wants to stress that the standard for finding confusingly similarity under the first element of the Policy, which is a rule specifically designed to address UDRP cases, is not the same standard as for finding trademark infringement.
This Panel finds that the <iloveikea.nu> domain name is confusingly similar to the established and internationally widely known trademark IKEA. Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been satisfied.
According to the Complaint, the Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark. Under the circumstances present in this case, the burden of proof of rights or legitimate interests must lie with the Respondent.
The Panel recognises that there may be situations where the registration and use of a domain name that specifically refers to and incorporates the trademark of another entity may serve legitimate purposes. The fact that the Respondent offers third parties to sell and buy used products originating from the Complainant on the website makes it relevant to consider whether this can be legitimate or fair use of the Complainant's mark. In the view of this Panel, it is a recognized principle of European trademark law that an agent or reseller that is engaged in the legitimate sale and distribution of trademarked goods does not per se have any rights to register the said trademark as its trademark, business name or domain name without explicit consent of the trademark owner, cf. the principles of Article 6 septies of the Paris Convention. (The Panel further notes that both parties to the present dispute are locating in Sweden.) This principle also applies for the Respondent's commercial activities in the present case. Even if the Respondent was engaged in legitimate although not specifically authorized sales of the Complainant's products, and thus might, under certain circumstances, have a legitimate interest in and rights to use the trademark for promoting these goods, this does not, in this Panel's view, establish such rights or legitimate interests for the purpose of these proceedings and present circumstances that may legitimize registration of the disputed domain name.
The Panel has reviewed quite a number of UDRP decisions on this issue, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 2.3, such as Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095, Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079, DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160, Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946, and Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481. The Panel would like to note that even if it was to endorse the view expressed in, e.g., the Oki Data decision, the Oki Data test would in this Panel's view not be applicable in the present matter since the Respondent, among other things, is not an authorized dealer or reseller of Complainant's (used) products. The Panel further notes in this respect that the observations of the panel in General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645 on the latter issue.
Respondent's registration and use of the disputed domain names indicates its lack of rights or legitimate interests therein, and consequently the prerequisites in the Policy, paragraph 4(a)(ii) is also considered fulfilled.
Paragraph 4(a)(iii) of the Policy further provides the requirement to prove registration and use in bad faith. Paragraph 4(b) regulates, by way of example, the kind of evidence that may satisfy same.
The Complainant's trademark IKEA must be considered to be a well-known trademark in Sweden, a fact that is not disputed by the Respondent. It is also clear from the communication between the parties prior to the filing of this Complaint that Respondent was fully aware of the Complainant and of the Complainant's mark when he registered the contested domain name and that the domain name is actively used.
The disputed domain name's corresponding website has a rather professional appearance, which is capable of giving the visitor the impression that it is an official website or at least a website that is somehow endorsed by the Complainant. It is also evident that the use of the name IKEA refers to the specific products originally manufactured and sold by the Complainant. At the bottom of the front page the Respondent has put in a text stating that there are no links between the Respondent´s online trading place and entities within the IKEA organization. Given that the domain name is confusingly similar to the Complainant's trademark and given the above mentioned content of the website the Panel does however find that this “disclaimer” does not serve the purpose of removing the impression that the Respondent is somehow affiliated to or that Respondent's activities are somehow endorsed or permitted by the Complainant.
Bearing these facts and the facts mentioned above under paragraphs 6 A and 6 B in mind, the Panel finds that the disputed domain name has been registered and is being used in bad faith, cf. paragraph 4(a)iii and 4(b) of the Policy.
Consequently, all the prerequisites for cancellation or transfer of the disputed domain name according to paragraph 4(a) of the Policy are fulfilled.
The Complainant has requested transfer of the disputed domain name.
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 <iloveikea.nu> be transferred to the Complainant.
Dated: September 3, 2009