WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter Ikea Systems B.V. v. Ebills Online Services
Case No. D2011-1948
1. The Parties
Complainant is Inter Ikea Systems B.V. of Delft, Netherlands, represented by Crowell & Moring, LLP, Belgium.
Respondent is Ebills Online Services of Rio Lerma, Mexico.
2. The Domain Name and Registrar
The disputed domain name <ikea-j.com> is registered with Abdomainations.ca Inc.
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 Abdomainations.ca Inc. a request for registrar verification in connection with the disputed domain name. On November 9, 2011, Abdomainations.ca Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 1, 2011.
The Center appointed Mark Partridge as the sole panelist in this matter on December 7, 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
Inter Ikea Systems B.V. of the Netherlands (“IKEA” or “Complainant”) is engaged in the sale of furniture and home furnishing products marketed under the trademark IKEA. Complainant’s business model is based on a franchise system, and only approved retailers who have entered into an agreement with Complainant may use this concept, including the IKEA trademark.
Complainant has manufactured, marketed and sold furniture and home furnishing products under IKEA trademark since early 1940s. Since then, Complainant’s business has grown into a global retail brand with 316 Ikea stores in 38 countries generating annual sales of more than EUR 23.8 billion in 2010. With over 699 million store visits in 2010 and nearly 200 million copies of the Ikea catalogue distributed every year.
Complainant and its related companies own numerous trademark registrations incorporating the word “Ikea” worldwide (the “IKEA Marks). In addition, Complainant also has a strong presence on the Internet, operating websites at <ikea.com>, <ikea-usa.com>, <ikea.mx>, and several other domain names incorporating the IKEA Marks.
The disputed domain name <ikea-j.com> in this proceeding was registered on August 19, 2005.
5. Parties’ Contentions
Complainant contends that the disputed domain name is confusingly similar to the IKEA Marks, that Respondent does not have any rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith by Respondent.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules states that the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.
Paragraph 4(a) of the Policy requires Complainant to prove all three of the following elements in order to be entitled to the relief sought:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that Respondent has rights and legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive.
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith.
A. Effect of the Default
The consensus view is that a respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the Policy (WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), paragraph 4.6). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., supra; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.
B. Identical or Confusingly Similar
The disputed domain name incorporates Complainant's IKEA mark entirely. Numerous UDRP panels have found that a domain name that wholly incorporates a complainant's registered mark may be sufficient to establish confusing similarity for the purposes of the Policy. See, e.g. The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137. Moreover, several UDRP panels have previously held that Complainant’s IKEA trademark is well-known and highly recognized worldwide in the field of furnishing products. See, e.g. Inter IKEA Systems B.V. v. WhoiseGuard Protected/ NA, Jerry Way, WIPO Case No. D2010-1919; 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. Technology Education Center, WIPO Case No. D2000-0522; Inter IKEA Systems B.V. v. Avi Checkroun, WIPO Case No. D2000-0478; 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. D2000-0427. Therefore, in this type of combination, it is clear that the IKEA trademark stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark.
Furthermore, Complainant argues that the addition of the generic descriptor “-j” to the IKEA mark does not change the overall impression. For example, in Inter IKEA Systems B.V. v.Technology Education Center, supra; the panel held that the addition of a single letter and a dash "e-" to the Complainant’s IKEA registered mark and trade mark to form the domain name <e-ikea.com> is insignificant and “therefore the domain name is confusingly similar to the Complainant’s trade mark IKEA.” The addition of generic terms to Complainant’s trademarks has often been held confusingly similar. In this case, Complainant has demonstrated that it owns registered trademark rights in the IKEA Marks and the addition of a single letter and a dash is insufficient to avoid confusion.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights and that Complainant has met the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name including: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
The Panel finds as reasonable Complainant’s contention that Respondent is not licensed or authorized to use the IKEA Marks or to apply for any domain name incorporating its trademark. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“In light of (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks [...] the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name”).
The Panel further finds that Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services, nor is it making a legitimate noncommercial or fair use of the domain name. According to the Complaint and screenshots of the disputed domain name annexed thereto, Respondent's website is used for a parking page, featuring sponsored links and so-called ‘related searches’ including ‘blote vrouwen’ which is Dutch for ‘naked women’ as one of the results. This is done under the disputed domain name that wholly incorporates Complainant's IKEA trademark. To the Panel, this behavior does not constitute a bona fide offering of goods or services.
Moreover, Complainant never received a response to its cease and desist letter that was sent by both email and registered letter. The registered letter was returned indicating Respondent provided a false address in the WhoIs records. The provision of false contact information and the absence of a reply further evidences that Respondent has no rights or legitimate interests in the disputed domain name. See, e.g. Clerical Medical Investment Group Limited v. Clericalmedical.com (Clerical & Medical Services Agency), WIPO Case No. D2000-1228 (holding providing false information to the registrar is a clear indicator of bad faith).
In short, Complainant has satisfied its burden of providing sufficient evidence to show that Respondent lacks rights to or legitimate interests in the disputed domain name, and Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
D. Registered and Used in Bad Faith
For the purposes of the bad faith provisions of paragraph 4(a)(iii) of the Policy, paragraph 4(b) sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith.
As stated earlier, the Panel finds that the IKEA trademark has acquired extensive and worldwide reputation and is regarded as a well-known trademark. “[G]iven the Complainant's worldwide reputation, and presence on the Internet, indicates that Respondent was or should have been aware of the marks prior to registering the disputed Domain Name.” Caesar World, Inc. v. Forum LLC., WIPO Case No. D2005-0517. In light of the reputation of the IKEA trademark, it is clear that Respondent in all likelihood knew of the existence of Complainant's trademark. This is further evidenced by the content provided on the disputed domain name, where related searches inter alia relate to Complainant’s business.
As previously noted, the disputed domain name resolves to a parking page containing sponsored links that refer to competitors of Complainant in the furniture business. The Panel finds this use of the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website was done in bad faith. See LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprises Ltd, Host master, WIPO Case No. D2010-0138 (connecting domain names which are confusingly similar to a trademark to websites containing sponsored links was deemed use in bad faith); EBAY, Inc. v. MEOdesigns and Matt Oettinger, WIPO Case No. D2000-1368 (finding that respondent registered and used the domain name <eebay.com> in bad faith where the respondent used the domain name to promote competing auction sites).
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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-j.com> be transferred to Complainant .
Dated: December 22, 2011