WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. VDC Online
Case No. D2011-1180
1. The Parties
The Complainant is Inter IKEA Systems B.V., of Delft, Netherlands, represented by Baker & McKenzie (Vietnam) Ltd., Viet Nam.
The Respondent is VDC Online, of Hanoi, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <ikeavn.com> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2011. On July 12, 2011, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On July 14, 2011, Wild West Domains, 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 Center verified that 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”).
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 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2011.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on August 10, 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
As the Respondent has not submitted a Response, the Panel has decided this dispute based upon the Complaint, in accordance with paragraph 5(e) of the Rules.
The Complainant is the owner of the trademark IKEA, which is registered in a wide range of jurisdictions and has been used extensively since the Complainant’s founder established the business more than 50 years ago. The Complainant has over 280 stores in several countries around the world. The Complainant operates a website at “www.ikea.com”, which provides consumers with a catalogue for online shopping and also provides links to local Ikea websites around the world.
The disputed domain name was registered on December 1, 2009. It appears that at some point, the disputed domain name displayed a web store imitating the color and branding of the Complainant, including the trademark IKEA. It also appears that, at the time that the Respondent was contacted by the Complainant’s lawyer, the content of the website at the disputed domain name was removed.
5. Parties’ Contentions
The Complainant submits that there can be no dispute that it has strong rights in the trademark IKEA. It points to its extensive registrations and also its rights arising from its extensive use of the trademark IKEA. It says that the disputed domain name incorporates without alteration the Complainant’s trademark IKEA, which makes the disputed domain name confusingly similar to that trademark. It states that the addition of the term “VN” at the end of the disputed domain name and before the “.com” extension to the disputed domain name does not avoid confusion: according to the Complainant, ordinary consumers would most likely interpret the term “VN” as the geographical abbreviation of Viet Nam.
The Complainant asserts that there are numerous facts that demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name. Ikea is not a descriptive or generic term. The Respondent registered the disputed domain name after the Complainant had acquired the trademark rights over IKEA in Viet Nam. There exists no relationship, the Complainant says, between the Respondent and the Complainant which might constitute a license. The Complainant adds that the Respondent is not known by the disputed domain name.
With regards to bad faith, the Complainant states that the Respondent was using the disputed domain name with content similar to the Ikea web stores. Thus, the Complainant points out that the Respondent must have been aware of the IKEA trademark name prior to registering the disputed domain name. In view of the Respondent’s initial website, the Complainant submits that the Respondent, at the time of the registration of the disputed domain name, intended to profit from consumer confusion as to Respondent’s association or affiliation with the Complainant by attracting Internet users to the Respondent’s initial website for commercial purposes. In particular, consumers were likely to be misled by believing that the Respondent's initial website was operated by a franchisee or affiliated company of the Complainant. Such confusion brings “commercial gain” to the Respondent, as it likely attracted a substantial number of Internet users to the
Respondent's initial website, who may have placed orders with the Respondent in the mistaken belief that it was part of the Complainant’s retailing network.
The Complainant finally requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Rules, paragraph 15(a), state that the Panel should decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules or principles of law that it deems applicable.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(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 was registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is clear from the submission of the Complainant that it has rights in the trademark IKEA. It has extensive registration of this trademark around the world.
The disputed domain name is confusingly similar to the Complainant's mark IKEA. The addition of the geographical designation “VN” and the generic top-level domain suffix “.com” does not change this finding. These elements are insufficient to distinguish the disputed domain name as referring to an entity other than the Complainant. On the contrary, many Internet users would suppose that the disputed domain name was registered by the Complainant or an affiliate of the Complainant to promote its business in Viet Nam.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances whereby any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you 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 (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 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.
There is no evidence of the existence of any of those rights or legitimate interests in the present record. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use its trademarks. The Complainant has prior rights in the trademark which precede the Respondent's registration of the disputed domain name by several years. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name and thereby shifted to the Respondent the burden of production of evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name or that it is used in connection with a bona fide offering of goods or services.
Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
The Complainant's allegations with regards to the Respondent's registration and use of the disputed domain name in bad faith have been considered by the Panel. These allegations have not been contested by the Respondent because of its default.
The Complainant's trademark is famous, and has likely been known to the Respondent when registering the disputed domain name. Therefore, it is unlikely that the disputed domain name has been registered for purposes other that those of the Complainant trademark.
In addition, the circumstances in the case before the Panel indicate that the Respondent was likely aware of the Complainant's IKEA trademark when registering the disputed domain name <www.ikeavn.com> and that it appears to be use intentionally in an attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainants' trademarks as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on a website.
In view of the content of the case file, the Panel finds that it is much likely that the Respondent was aware of the IKEA trademark and it appears to intentionally attempt to attract Internet users to its website for commercial gain by benefiting from the Complainant’s reputation. The use of the Complainant’s IKEA trademark in the disputed domain name, in yellow and blue colours, clearly supports this finding. Respondent initial website, as portrayed in Annex 6 of the Complaint, displayed the trademark and also the look of the IKEA websites. Respondent has not denied these allegations. Considering that there is no established relationship between the parties, this behavior suggests the Respondent’s bad faith (see also in this respect IKEA Systems B.V. v. PrivacyProtect.org, WIPO Case No. D2011-0451).
The Complainant relies on paragraph 4(b)(iv) of the Policy, whereby the Respondent has likely intentionally attempted to attract for commercial gain users to its website by creating a likelihood of confusion with the Complainant’s trademark. The Panel finds that the requirements of paragraph 4(b)(iv) have been met.
The failure of the Respondent to answer the Complainant's Complaint and take any part in these proceedings also suggests, in combination with other factors, bad faith on the part of the Respondent (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <ikeavn.com> be transferred to the Complainant.
Pablo A. Palazzi
Dated: August 23, 2011