WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IKEA Systems B.V. v. PrivacyProtect.org
Case No. D2011-0451
1. The Parties
The Complainant is IKEA Systems B.V. of LN Delft, Netherlands, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondent is PrivacyProtect.org of Munsbach, Luxembourg.
2. The Domain Names and Registrar
The disputed domain names <ikeamarket.com> and <ikeamarkets.com> are registered with IHS Telekom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2011. On March 9, 2011, the Center transmitted by email to IHS Telekom, Inc. a request for registrar verification in connection with the disputed domain names. On March 10, 2011, IHS Telekom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Registrar also stated that the specific language of the registration agreement is Turkish.
As the Complaint had been submitted in English, the Center sent an email communication to the Complainant on March 16, 2011 related with the language of proceeding requesting from the Complainant to (a) provide evidence of an agreement between the parties that proceedings be English; (b) translate the Complaint into Turkish; or (c) submit a request that English be the language of the proceedings.
The Complainant filed a communication on March 19, 2011 and submitted a request that English be the language of the proceedings and stated that the Respondent is able to communicate in English as (a) the Respondent has used U.S. based services for its web sites, (b) the Respondent has used PayPal to facilitate transactions made through the web site (c) the Respondent has used OpenCart to facilitate e-commerce (d) the domain names include English words “market” and “markets” (e) requiring the Complainant under these circumstances to proceed in the Turkish language would be burdensome and cause delay in the proceeding (f) it is not possible to determine the Respondent’s real identity since it has concealed its identity, address and other contact details by an identity protection service.
The Center verified that the Complaint together with the Complainant’s communication 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 Respondent of the Complaint, and the proceedings commenced on March 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2011.
The Center appointed Selma Ünlü as the sole panelist in this matter on May 2, 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.
The Registrar of the disputed domain name has informed the Center that the language of the relevant registration agreement is Turkish. Taken into consideration the request of the Complainant on the language of the proceeding and considering that the Respondant has not filed any response or request petition, the Panel finds the arguments of the Complainant reasonable and considers in the circumstances of this case that the language of the present proceeding should be English.
4. Factual Background
The facts stated in the Complaint are as follows:
(1) The Complainant Inter IKEA Systems B.V. (“IKEA”) is one of the leading furniture and home furnishing products companies in the world.
(2) The Complainant is the owner of a unique concept for the sale of furniture and home furnishing products marketed under the trademark IKEA. The Complainant’s business model is based on a franchise system, and only approved retailers who have entered into an agreement with the Complainant may use this concept, including IKEA mark.
(3) The IKEA concept originated in the 1940’s, when the Swedish entrepreneur Ingvar Kamprad founded the IKEA furniture company.
(4) The first IKEA advertisement appeared in newspapers in Sweden in 1945, and the first IKEA catalog was distributed to consumers as early as 1951.
(5) The first IKEA store was opened in 1958 and currently there are 316 IKEA stores in 38 countries.
(6) Annual turnover in 2010 for all IKEA stores reached 23.8 billion euros.
(7) With its core concept defining the brand over the course of more than 60 years, the IKEA mark has become one of the most recognized brands in the world. IKEA has been chosen as one of the “most valuable brands”, “most stable brands”, “best global brands”, “best retail brands” in the world by the respected organizations.
(8) Numerous books and articles have been written about IKEA and its founder.
(9) The Complainant owns more than 1400 trademark registrations for IKEA and IKEA variants in more than 70 countries including Turkey and European Union.
(10) The Complainant has also registered and uses the domain name <ikea.com> and several country specific web sites such as “www.ikea.com.tr”.
(11) IKEA mark has acquired a high degree of public recognition and distinctiveness as a symbol of the source of high quality goods and services offered by the Complainant.
The Panel’s observation of the case file reveals the following:
(1) The disputed domain name <ikeamarket.com> was created on April 26, 2010, it will expire on April 26, 2012 and the disputed domain name <ikeamarkets.com> was created on February 20, 2011, and it will expire on February 20, 2012.
(2) The domain name <ikeamarket.com> directs users to the website at the domain name <ikeamarkets.com>.
(3) The domain name holder has concealed its identity, address and other contact details by an identity protection service. The Registrant of record, PrivacyProtect.org, is located in Luxembourg.
(4) The Respondent uses the web sites to sell products branded IKEA. There is no certain information whether these products are genuine or not.
5. Parties’ Contentions
The Complainant requests the Panel to issue a decision transferring the disputed domain names to the Complainant on the following grounds:
(i) The disputed domain names are identical or confusingly similar to the trademarks/service marks in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names were registered and are being used in bad faith.
(i). Confusingly Similar
The Complainant alleges that the disputed domain names are identical / confusingly similar with its registered trademarks, namely IKEA trademarks since they incorporate exactly and entirely IKEA phrase as distinctive and main element.
The Complainant mentioning the Inter IKEA Systems B.V. v. InterikEA.com, Inc., WIPO Case No. D2006-1379, further states that there is confusing similarity where the entire mark in question is incorporated into the disputed domain name and where only a generic word has been added. The Complainant mentioned that mere addition of the generic words “market” and “markets” fails to alleviate confusion, particularly in view of the fame of the IKEA mark, the worldwide presence of IKEA and Complainant’s use of multiple domain names that include the IKEA mark.
The Complainant also states that addition of the generic terms “market” or “markets” does not sufficiently distinguish the disputed domain names from the mark, on the contrary it increases the confusing similarity since they clearly relate to the sale of goods and IKEA’s business does in fact center on the sale of goods.
(ii). Rights or Legitimate Interests
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain names since the Respondent does not have earlier rights for the IKEA phrase. Further, the Respondent is not a licensee of the Complainant and does not have the Complainant’s permission or authorization to use the IKEA trademark of the Complainant.
The Complainant, referring to the Dr. Ing. v. c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312 and General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645, states that even if Respondent is offering actual IKEA products for sale on the web sites, Respondent has no right or legitimate interest in the domain names and cannot be said to be using the domain names in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the domain names.
The Complainant submits that since the Respondent is neither an authorized dealer of Complainant’s IKEA products, nor a licensee of the IKEA mark, the Respondent has no right to exploit the Complainant’s marks in the course of selling or advertising any products; the Respondent’s use of the domain names to promote sales constitutes trademark infringement and unfair competition, and is not a legitimate interest or use.
(iii) Registered and Used in Bad Faith
To prove that the Respondent acts in bad faith, the Complainant
(1) alleges that Respondent’s bad faith registration of the domain names is established by the fact that the domain names incorporate completely and in its entirety the Complainant’s IKEA mark and the domain names were acquired by the Respondent long after the Complainant’s mark became famous. The Complainant refers to PepsiCo, Inc. v. Zhavoronkov, WIPO Case No. D2002-0562 stating that “blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”.
(2) alleges that Respondent’s bad faith registration and use of the domain names is further evidenced by the fact that, Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web sites by creating a likelihood of confusion with the Complainant’s IKEA mark as to the source, affiliation or endorsement of the web site.
(3) alleges that the Respondent’s prominent and repeated display of the IKEA name, mark and color scheme on the web sites serves only to strengthen the appearance of an association, affiliation, endorsement, or other connection with the famous IKEA brand. The Respondent has sought to profit from the domain names by using them to create an aura of affiliate with the Complainant, for the purpose of selling purported IKEA products.
(4) refers to National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment, WIPO Case No. D2000-0700 stating “Even if the Respondent’s offerings are limited to genuine goods of Complainant, the domain names are not “billboards” and they imply an authorized relationship with Complainant; thus the registration and use of the marks in the domain names has been in bad faith.”
(5) alleges that the Respondent prominently displayed at the top left corner of each page of the website a yellow and blue IKEA logo which may easily be associated with Complainant.
(6) alleges that the Respondent provides a link to the Complainant’s legitimate 2011 IKEA catalog.
(7) alleges that the disclaimer on the web site proves that the Respondent knows that the Internet users will assume the domain names and web site are associated with the Complainant. The Complainant refers to the Toyota Motor Sales U.S.A., Inc. b. Tony Mwangi, WIPO Case No. D2003-0623 which mentions that “such a disclaimer is an admission that consumers will be confused and supports finding that the respondent adopted the domain names in order to intentionally attract, for commercial gain, Internet users … by creating a likelihood of confusion”. The Complainant further mentions that the disclaimer fails to lessen the initial confusion that is likely experienced by Internet users seeking a web site operated by the Complainant or an authorized re-seller of Complainant’s products.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) The disputed domain name are identical or confusingly similar to the trademark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant has the burden of proving that all of these elements are fulfilled.
A. Identical or Confusingly Similar
The test for identity or confusing similarity under the Policy, paragraph 4(a)(i) is typically limited in scope to a direct comparison between a complainant’s trademark and the textual string which comprises the disputed domain name.
The Complainant has demonstrated its registered trademark rights in the mark IKEA. The disputed domain names contain the IKEA trademark in its entirety with the descriptive words “market” and “markets”. There is no doubt that the distinctive part of the disputed domain names is the mark IKEA and the terms “market” and “markets” do not remove the likelihood of confusion within Internet users, on the contrary this Panel finds it strengthens this possibility by creating an association with the company structure.
In similar cases, panels have found that adding descriptive words does not remove the likelihood of confusion between a trademark and a domain name incorporating said trademark.
Sanofi-Aventis v. Gideon Kimbrell , WIPO Case No. D2010-1559: “In relation to the incorporation in the disputed domain name of a generic word “buy”, the Panel finds that the inclusion of a generic element together with a trademark cannot contribute to distinguishing the disputed domain name from a registered trademark where such domain name incorporates a distinctive trademark. The Panel finds that the addition of the merely generic and descriptive element “buy” in the disputed domain name does not avoid a finding of confusing similarity in this case. Indeed, the inclusion of such terms in the disputed domain name may increase the risk of confusion for the Internet users taking into account that the Respondent is using the disputed domain name to link to websites that are offering medicines, including generic ones and those of the Complainant’s competitors.”;
Hoffmann-La Roche Inc. v. Oleksandr Mandryk, Alex /Protected Domain Services - Customer ID: NCR-934539, WIPO Case No. D2010-1060: “The domain names <buyaccutane.biz> and <buytamiflu.biz> contain the ACCUTANE and TAMIFLU trademarks, thereby creating a similarity to these trademarks. The domain names of the Respondent consists of the trademarks of the Complainant ACCUTANE and TAMIFLU with the addition of the word “buy”. The word “buy” is a generic word merely describing the act of purchasing the goods sold by the Complainant under the trademark ACCUTANE and TAMIFLU. The mere addition of common terms such as “buy”, to a mark, does not change the overall impression of the designations as being domain names connected to the mark.”;
Turkcell Iletisim Hizmetleri A.S. v. Vural Kavak, WIPO Case No. D2010-0010: “The Panel finds that the addition of the generic word “mobile” does not distinguish the Respondent’s domain name from Complainant’s trademark (...). Furthermore the generic term, “mobile” is directly related to Complainant’s business and the addition of generic word is especially confusing where the generic words bear an obvious relationship to Complainant’s business.”
Doğan Gazetecilik Anonim Şirketi v. Jason Statham, WIPO Case No. D2010-0164: “The disputed domain name comprises the word “posta” which is identical to the distinctive part of the Complainant’s trademarks. The additional word “gazetesi” used in the disputed domain name is, in the Turkish language, only a generic term and means “newspaper”. The Panel finds that simply adding a generic term like “gazetesi” does not ameliorate the likelihood of confusion and does not make the disputed domain name distinctive as compared to the Complainant’s trademarks. The Panel is even of the opinion that by using the additional word “gazetesi” in the disputed domain name, the likelihood of confusion with the Complainant’s trademarks is increased as the word “gazetesi” clearly refers to the goods and services protected by the Complainant’s trademarks.”
In light of the above mentioned decisions the Panel concludes that although the domain names include additional words to the Complainant’s mark, the additional words are not sufficient to distinguish the domain names from the Complainant’s mark. On the contrary, this Panel finds that the additional words enhance the likelihood of confusion since the terms might be understood by some to describe the service provided by the Complainant.
The Panel therefore finds that the Complainant has fulfilled the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy rules that, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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 or service mark at issue.”
The burden of proof rests with the Complainant who must demonstrate a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. Once the Complainant has made out a prima facie case, then the Respondent may, by, inter alia, showing one of the above elements, prove rights or legitimate interests in the disputed domain names.
The Panel finds on the current record that the Complainant has proved rights in the IKEA mark and also prima facie established that the Respondent does not have rights or legitimate interests in the disputed domain names for the purposes of the Policy. The Complainant has not granted the Respondent any right or license to use the IKEA marks.
The Respondent has not rebutted the Complainant’s supported assertions and has not provided evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain names.
The Panel notes that the goods sold via the web site may be genuine products, and considers it relevant to consider whether the use of the disputed domain names amounts to a bona fide offering of goods under paragraph 4(c)(i) of the Policy.
As it is mentioned in the General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645, “The question that therefore arises is whether Respondent has a legitimate interest in using a domain name that is identical to Complainant’s trade marks in circumstances that are very likely to give rise to initial interest confusion, even though it may be selling Complainant’s legitimately trade marked goods at the site and any such confusion is likely to be dispelled once internet users arrive at the site because of its disclaimers? ”Further to asking this question, the panel concluded that “While a person may very well be perfectly entitled (for reasons of fair competition or otherwise) to offer for sale (or re-sale) a trademark owner’s genuine branded goods, that does not necessarily extend to a right to do so through a domain name that is virtually identical to that trademark owner’s mark or marks.”.
While the Panel notes that the disputed domain names are not “virtually identical” to the Complainant’s trademark the Panel finds the above mentioned precedent convincing and the Panel also is of the view that offering genuine branded goods does not allow registering a domain name identical or almost identical to a trademark owner’s mark, especially in circumstances as the ones present in this case, where the websites are not accurately and prominently disclosing the registrants relationship with the Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), section 2.3).
Hence, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed 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 the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.
By consideration of the foregoing, and in view of the content of the case file, the Panel finds that it is obvious that the Respondent was aware of the IKEA trademarks and it intentionally attempted to attract Internet users to its websites for commercial gain by benefiting from the Complainant’s reputation. The use of the Complainant’s IKEA marks at the web site with the disputed domain names in yellow blue format also supports this finding. Furthermore the link given on the Respondent’s website to the 2011 IKEA catalog, suggests that the Respondent tries to present a relation with the Complainant that does not exist, thus confusing Internet users. Considering that there is no established relationship between the parties this behavior also suggests the Respondent’s bad faith.
The Panel finds that the disclaimer at the web sites is not sufficient to remove the initial confusion of Internet users. The disclaimer at the web site does not in the Panel’s view dispel initial confusion. The disclaimer’s location at the websites is not chosen to duly inform Internet users of the situation and notably the (lacking) relationship between the Complainant and the Respondent. The Panel is of the view that, by adding this disclaimer to the web site, the Respondent only aims to escape the results of registering domain names which are confusingly similar to a widely known trademark.
The Panel finds, taking all of the facts and circumstances of the case into account, that the Respondent registered the disputed domain names in bad faith with the intent to target the Complainant’s marks (see e.g., Eveready Battery Company Inc. v. Oscar Haynes, WIPO Case No. D2003-1005, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and Intel Corporation v. the Pentium Group, WIPO Case No. D2009-0273).
In light of the evidence submitted, the Panel is of the opinion that the Respondent intentionally attempted to attract Internet users to its websites for commercial gain by benefiting from the Complainant’s reputation.
The Panel is therefore convinced that the disputed domain names have been registered and are being used in bad faith and that the Complainant has fulfilled the third element under paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <ikeamarket.com> and <ikeamarkets.com> be transferred to the Complainant.
Dated: May 16, 2011