WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. WhoisGuard Protected / NA, Jerry Wray
Case No. D2010-1919
1. The Parties
The Complainant is Inter IKEA Systems B.V. of Delft, Netherlands, represented by Kilpatrick Stockton LLP, United States of America.
The Respondents are WhoisGuard Protected of Westchester, California, United States of America and NA, Jerry Wray of Bangor, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <ikeacatalogue.org> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2010. On November 10, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On November 11, 2010, eNom 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 November 11, 2010, providing the registrant and contact information disclosed by eNom and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 12, 2010.
The Center verified that the Complaint together with the amended 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on November 24, 2010. On November 25, 2010, the Center received the Complainant request for a suspension of the proceedings and the Center issued a Notification of Suspension, which suspended the proceedings until December 3, 2010. Having failed to settle the case, the Complainant requested a re-institution of the proceedings on December 7, 2010, and the proceedings were re-instituted on the same day. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2010. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 28, 2010.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on January 11, 2011. 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
The Complainant has manufactured, marketed and sold furniture and home furnishing products under IKEA trademark since early 1940s. Presently, there are 316 IKEA stores in 38 countries with an annual turnover in 2010 of EUR 23.8 billion.
The first IKEA catalogue was distributed to consumers in 1951. Today, nearly 200 million copies of the IKEA catalogue are printed every year. In 2010, the catalogue was printed in 61 editions and 29 languages.
The Complainant and its related companies own numerous trademark registrations incorporating the word “Ikea” worldwide.
The Complainant has also a strong presence on the Internet, operating web sites at “www.ikea.com” and “www.ikea-usa.com” and owning several other domain names incorporating the trademark IKEA.
The disputed domain name <ikeacatalogue.org> was created on December 19, 2009.
When the Panel tried to access the disputed domain name there was no active web site.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) The disputed domain name is confusingly similar to the Complainant’s trademark. It is undisputed that IKEA is a well-known trademark in which the Complainant has substantial rights. The disputed domain name directly incorporates the trademark IKEA together with a generic term related to its business practices (“catalogue”). Given the widespread renown of the IKEA mark, relevant consumers could reasonably conclude that the disputed domain name is endorsed by or affiliated with the Complainant.
(ii) The Respondents have no rights or legitimate interests in the disputed domain name. The Respondents registered the disputed domain name long after the Complainant had established rights in its IKEA mark through extensive use. There exists no relationship between the Complainant and the Respondents that gives rise to any license or permission to register a domain name incorporating the IKEA trademark. The Respondents are not using the disputed domain name in connection with a bonna fide offering of goods or services nor making a legitimate noncommercial or fair use of the domain name without intent for commercial gain.
(iii) The disputed domain name has been registered and is being used in bad faith. The bad faith is established by the fact that the disputed domain name incorporates in its entirety the Complainant’s IKEA trademark, and was acquired by the Respondents long after the mark became famous. The Respondents have intentionally attempted to attract Internet users to its web site, for commercial gain, creating a likelihood of confusion with the Complainant’s IKEA mark as to the source, affiliation or endorsement of the web site. The Respondents have sought to profit from the disputed domain name by using it to harvest sensitive information from Internet users and to deliver them “Sponsor Offers”.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel has no doubt that IKEA is a trademark directly connected with the Complainant’s activities in the furniture business.
Exhibits K and L to the Complaint provide certificates of registrations of the IKEA trademark in the United States of America and in several countries since at least 1974.
The trademark IKEA is wholly encompassed within the disputed domain name, which also includes the generic term “catalogue”. The Complainant has a long tradition of printing catalogues of products, which are also available from its official web site at “www.ikea.com”.
Therefore, the Panel concludes that the addition of the term “catalogue” is not sufficient to refute the confusing similarity between the disputed domain name and the Complainant’s trademark, required under paragraph 4(a)(i) of the Policy.
In a previous UDRP decision, concerning the domain names <buy-xenical-000.biz> and <order-xenical-a.biz>, the panel stressed that “it is now well-established that the adoption of a trademark in its entirety as a domain name together with other descriptive material does not generally suffice to enable a respondent to overcome an allegation that the domain name is distinguishable from the Trademark in question”
(F. Hoffmann-La Roche AG v. sysadmin admin, balata.com ltd., WIPO Case No. D2008-0954).
As a result, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondents’ default and on the prima facie evidence provided in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondents have no rights or legitimate interests in the disputed domain name.
The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the Complainant filed screenshots of the web pages that were published at the disputed domain name, including reproductions of the Complainant’s trademark IKEA, requests of user’s personal information and commercial offers.
The Complainant has not licensed or authorized the usage of its trademarks to the Respondents, and it does not appear from the present record that the Respondents are commonly known by the disputed domain name.
Consequently, the Panel is satisfied that the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent 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 its documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
When the disputed domain name was registered the Complainant’s trademark IKEA was already well-known and highly recognized worldwide in the field of furnishing products. Therefore, it is unlikely that the Respondents could have been unaware of the Complainant’s reputation and business.
Furthermore, the Complainant has shown previous uses of the disputed domain name to host web pages with reproductions of the IKEA trademark, offering to download the Complainant’s catalogue in exchange of personal data and in connection with other commercial advertises.
Therefore, in doing so, the Respondents:
(i) created a likelihood of confusion with the Complainant’s trademark;
(ii) potentially obtained commercial revenue from this practice; and
(iii) deprived the Complainant from offering its products and catalogues to prospective clients who are clearly looking for the Complainant.
The present lack of any operation on the disputed domain name does not help the Respondents. Previous UDRP decisions have shown that the mere passive holding of a domain name may characterize bad faith in some cases. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Polaroid Corporation v. Jay Strommen, WIPO Case No. D2005-1005.
Finally, given the circumstances of this case, the use of privacy services also amplifies the characterization of bad faith registration and use.
Accordingly, the Panel finds that the Complainant has proved that the disputed domain name was registered and is being used in bad faith, satisfying the third element of the Policy.
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 <ikeacatalogue.org> be transferred to the Complainant.
Dated: January 25, 2011