WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter Ikea Systems B.V. v. Daniel Woodson
Case No. D2011-1933
1. The Parties
The Complainant is Inter Ikea Systems B.V. of Delft, Netherlands, represented by Crowell & Moring, LLP, Belgium.
The Respondent is Daniel Woodson of Millerton, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ikeacoupon.net> is registered with Melbourne IT Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2011. On November 8, 2011, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On November 11, 2011, Melbourne IT Ltd. 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 November 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2011.
The Center appointed Jane Lambert as the sole panelist in this matter on January 3, 2012. 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 grants franchises for the distribution of furniture and furnishings under the Ikea sign. Over 316 stores in 38 countries supplied furniture and furnishings under that sign in 2010. Between them those stores generated sales of EUR 23.8 billion. The stores attracted over 699 million visitors that year and distributed 200 million Ikea catalogues.
The Complainant has registered IKEA as a trade mark in a number of countries including the United States of America. Copies of some of those registrations are annexed to the Complaint including United States trade mark registration number 1,118,706 by which a device framing the word “ikea” within an oval inside a rectangle was registered for lighting, furniture, furnishings, fabrics and other goods in classes 11, 20, 21, 24 and 27 on May 22, 1979.
The Complainant and its franchisees market their goods through a number of websites including those at “www.ikea.com” and “www.ikea-usa.com”.
Very little is known of the Respondent other than his name, registration and use of the disputed domain name. The postal address in the WhoIs record appears to be false.
The only post in the blog appears to be an article apparently placed by one Watson entitled “Want to buy Ikea Stuff? Get Ikea coupons!” That entry is filed under “Promotion”. The first few lines of an article discussing Ikea coupons as a way of saving money or being able to afford Ikea products are on the landing page. These are followed by the words “Read the end of this entry …..”
Also attached to the Complaint is a screen dump of the whole article together with a number of sponsored links followed by the words “Ads by Google”. The Panel assumes that this page was reached by clicking the words “Read the end of this entry ….”
The Panel visited the website “www.ikeacoupon.net” on January 17, 2012 but found only a blank screen and the text “Abj3ctz was here” moving from right to left.
The Complainant’s lawyers tried to write to the Respondent on April 13, 2011 but their letter was returned unopened with the post office stamp:
“RETURN TO SENDER
NO SUCH STREET
UNABLE TO FORWARD”.
5. Parties’ Contentions
The Complainant claims the transfer of the disputed domain name on the grounds that:
- the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in the disputed domain name; and
- the disputed domain name was registered and is being used in bad faith.
As to confusing similarity, the Complainant relies on a long line of cases to the effect that there is confusing similarity where the entire mark in question is incorporated into the disputed domain name and only a generic word has been added.
On the absence of rights or legitimate interests in the disputed domain name, the Complainant claims there is no evidence that the Respondent is commonly known by a name that is similar to the disputed domain name. The Respondent has no trade mark or service mark resembling the disputed domain name and the Complainant has never licensed him to use its marks.
With regard to registration and use of the disputed domain name in bad faith, the Complainant refers to paragraph 4(b) of the Policy which lists circumstances evidencing registration and use of a domain name in bad faith. The Complainant relies primarily on sub-paragraph (iv) of paragraph 4(b) of the Policy arguing that the use of sponsored links falls within the ambit of that paragraph. Alternatively, it relies on sub-paragraph (ii) contending that the registration of the disputed domain name prevents it from reflecting the mark in a corresponding domain name. It has also produced evidence that the Respondent has registered <papajohnscoupon.org> which he uses for a blog containing only one post about pizza and several sponsored links and that Papa Johns is the name of a pizzeria.
By way of further evidence of bad faith, the Complainant points to an acknowledgement in an article in the Respondent’s blog of the Complainant’s reputation. The Complainant argues that shows that the Respondent must have been aware of the Complainant’s rights but chose to disregard them.
Also, it argues that bad faith is manifest from the false postal address that the Respondent has given.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove that each of these three elements is present.
A. Identical or Confusingly Similar
The Complainant has produced evidence that it has registered a large number of trade marks that include or consist of the word “ikea” in the United States and elsewhere. There is also abundant evidence that it has goodwill or reputation in the mark IKEA in relation to the supply of furniture and furnishings by virtue of its sales and advertising in many countries.
However, just one trade mark or service mark in which the Complainant has rights is enough for these proceedings. The Panel relies on United States trade mark registration number 1,118,706 mentioned in section 4 above.
The dominant part of the disputed domain name “ikeacoupon” is composed of the words “ikea” and “coupon”. As IKEA is the dominant element of both the registered trade mark and the disputed domain name, there is similarity between the disputed domain name and the registered mark. The incorporation of the word “coupon” adds confusion. That is because Internet users are likely to surmise that the disputed domain name indicates a site belonging to, or authorized by, the Complainant where the Complainant’s coupons can be obtained or exchanged.
The Panel therefore finds the disputed domain name to be confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, any of the following circumstances can demonstrate that the Respondent has rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to the Respondent of the dispute, its 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; 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 trade mark or service mark at issue.
There is no evidence that any of the above circumstances applies in this case. The Respondent has used the disputed domain name only for what seems to be a blog containing sponsored links. Neither his surname nor his first name bears any resemblance to the disputed domain name. There is no evidence that he is known by any other name. The Panel finds that Respondent’s use of the domain name is for the click through revenue from the sponsored links.
The Complainant has made clear that it has not licensed or authorized the Respondent to use its marks.
The Panel therefore concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, 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 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 trade mark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) the Respondent 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 on-line 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.
The Panel agrees with the Complainant that paragraph 4(b)(iv) of the Policy applies in this case.
The Panel has already found that Internet users are likely to be misled by the confusing similarity between the disputed domain name and the Complainant’s trade mark into supposing that the disputed domain name indicates a site belonging to, or authorized by, the Complainant where the Complainant’s coupons can be obtained or exchanged. The only rational reason for using such a domain name would be to attract some of the Complainant’s customers to the Respondent’s site. Once there, at least some of them will click the sponsored links for which the Respondent will be paid. This falls full square within the ambit of paragraph 4(b)(iv) of the Policy. Accordingly the Panel finds that the disputed domain name was registered and is being used in bad faith.
As to the Complainant’s alternative ground under paragraph 4(b)(ii) of the Policy, the Panel sees two difficulties. First, the Complainant has pleaded at paragraph  of the Complaint that it has a strong presence on the Internet, on websites such as “www.ikea.com” and “www.ikea-usa.com” and that it owns several other domain names incorporating the IKEA trade mark. In view of that pleading, it can hardly complain that it is prevented from reflecting its mark in a corresponding domain name. The second difficulty is that the evidence that the Respondent has engaged in a pattern of preventing trade mark proprietors from registering corresponding domain names is decidedly thin. The Panel accepts for the purpose of the argument that the Respondent has done to the Papa John pizzeria company what it tried to do to the Complainant but one instance does not constitute a pattern even when combined with the other alleged instances.
The Panel is satisfied that paragraph 4(b)(iv) of the Policy is fulfilled in this case, and the disputed domain name was registered and is being used 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 domain name <ikeacoupon.net> be transferred to the Complainant.
Dated: January 18, 2012