WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter Ikea Systems B.V. v. Colours Ltd
Case No. D2011-1939
1. The Parties
Complainant is Inter Ikea Systems B.V. of Delft, Netherlands, represented by Crowell & Moring, LLP, Belgium.
Respondent is Colours Ltd of Charlestown, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <ikea-direct.com> is registered with Key-Systems GmbH dba domaindiscount24.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2011. On November 8, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 9, 2011, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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 Respondent of the Complaint, and the proceedings commenced on November 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 2, 2011. On December 9, 2011, Complainant requested to suspend the proceedings to explore a possible settlement between the Parties. The proceedings were suspended by the Center on December 12, 2011. Having failed to reach a final settlement, on January 10, 2011, Complainant requested to reinstitute the proceedings, which was done on the same day.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on January 11, 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
Complainant is a major international provider of furniture and home furnishings. Complainant’s concept is based on “marketing and selling the IKEA product range to many people.” Accordingly, Complainant’s sales and revenues have continued to rise around the world, and as of 2010 it operated 316 stores in 38 countries, generating sales of EUR 23.8 billion that year. Complainant’s website in 2010 received 737 million visits. Previous panels have found Complainant to be well-known. Inter Ikea Systems B.V. v. Ikea International Co. Ltd., WIPO Case No. D2003-0965; Inter Ikea Systems B.V. v. Polanski, WIPO Case No. D2000-1614; Inter Ikea Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438; Inter Ikea Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437. Business surveys such as Interbrand Top 100 and Businessweek Best Global Brands Top 100 have also consistently ranked Complainant’s mark IKEA among the top brands in the world. Based on the foregoing, this panel finds Complainant’s IKEA mark to be highly well-known.
Complainant is the owner of several trademarks for IKEA, and design around the world, including International Registration No. 926155 (registered 2007); European Community Registration No. 000705343 (registered 2006); European Community Registration No. 001672997 (registered 2002); United States Registration No. 118706 (registered 1979); and United States Registration No. 1443893 (registered 1987).
Complainant owns the registration for several domain names that include its registered IKEA mark, and Complainant runs a website at the URL associated with <ikea.com> (registered July 29, 1995) and <ikea-usa.com> (registered April 15, 1997). Complainant uses these domain names to connect to websites through which it informs potential customers about its IKEA mark and its furniture and other services and products. These include job opportunities for those seeking them via the web.
The disputed domain name <ikea-direct.com> was originally registered on November 17, 2010. Respondent has no affiliation with Complainant. Respondent has provided sponsored links from the URL associated with the disputed domain name to websites that describe or advertise goods or services that are unaffiliated with Complainant or Complainant’s services. These include links for jobs for companies that may be competitors of Complainant. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.
5. Parties’ Contentions
Complainant contends that: (i) <ikea-direct.com> is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Respondent did not file a reply to Complainant’s contentions in this proceeding by the due date of December 1, 2011, causing the Center to send a notice of default on December 2, 2011. However, on December 6, 2011, the Center received the following email from the email address listed for Respondent as the owner, administrator, technical and billing contact for the domain name:
The complainant was already sent the unlock/transfer code for the domain:
Given the context of the email, and that it was sent to the Center, the Panel takes this email as an acknowledgement that Respondent accedes to a judgment in these proceedings. Nevertheless, for purposes of completion, the Panel proceeds with its analysis.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether <ikea-direct.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s well-known, registered trademark IKEA, and merely adds the descriptive word “direct.”
The Panel finds that the added word would be perceived by Internet users as descriptive of a website where they could find information about products or services “direct” from the source, i.e., IKEA products direct from Complainant. Accordingly, consumers would expect to find information offered by Complainant on such a website.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example: General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>); Inter Ikea Systems B.V. v. Polanski, WIPO Case No. D2000-1614 (transferring <ikeausa.com>); Microsoft Corporation v. Step-Web, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); and CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065 (transferring <cbsone.com>).
This Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.
Respondent did not submit a reply to the Complaint, however, and the December 6, 2011, email certainly did not support a claim of Respondent’s rights or legitimate interests in the disputed domain name. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users via sponsored links, to websites that are unaffiliated with Complainant or Complainant’s services. To the extent that the question may be raised as to whether Respondent may be considered a legitimate reseller of Complainant’s goods for purposes of retaining the mark under the UDRP, there is no evidence to that effect in the record. See Paragraph 2.3 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”) (discussing when an authorized reseller may be considered to have rights or legitimate interest in a mark); See also 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; BlackRock Institutional Trust Co., N.A. v. Investors FastTrack, WIPO Case No. D2010-1038; cf. Beyonce Knowles v. Sonny Ahuja, WIPO Case No. D2010-1431.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] 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 [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has a parked webpage at the URL associated with the disputed domain name, with sponsored links to other websites. Hence, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.
Furthermore, considering the high degree of renown of Complainant’s IKEA marks around the world, this Panel would be hard-pressed to find a possibility that Respondent was unaware of Complainant’s rights in Complainant’s marks when registering it. Accordingly, this too, evidences bad faith by Respondent.
Therefore, this Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) 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 disputed domain name <ikea-direct.com> be transferred to Complainant.
Dated: January 17, 2012