WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter Ikea Systems B.V. v. zhou murong
Case No. D2011-1962
1. The Parties
Complainant is Inter Ikea Systems B.V. of Delft, Netherlands, represented by Crowell & Moring, LLP, Belgium.
Respondent is zhou murong of Shenzhen, Guangdong, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <ikealittle.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2011. On November 9, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 9, 2011, GoDaddy.com, 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”).
The Center contacted the registrar on November 14, 2011 noting that the disputed domain name was scheduled to expire on December 8, 2011 and requesting confirmation that the disputed domain name would remain locked during the proceedings and asking whether any actions would be required by the parties in order to ensure that the domain name would remain locked. On November 14, 2011, the registrar confirmed that the disputed domain name would remain locked during the proceeding and noted that the disputed domain name would expire automatically upon the expiration of the redemption grace and pending delete periods maintained by the registry. This communication also noted that the registrar would take steps to ensure that the disputed domain name would remain registered and locked during the proceeding and stated that it is the registrar’s position that the Complainant should bear the burden of monitoring the disputed domain name in an effort to ensure that it does not expire. On November 15, 2011, the Center communicated the aforementioned correspondence with the registrar to Complainant and Respondent urging the parties to address the issue with the registrar directly. The Panel notes at the time of this decision, the disputed domain name has been renewed, and the current expiry date is December 8, 2012.
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 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2011. On November 30, 2011, the Center received an email communication from the Respondent.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on January 9, 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 Inter Ikea Systems B.V. is a Swedish company which markets furniture and home furnishings under its IKEA trademark. Complainant maintains a franchising system wherein it authorizes independent retailers to use its IKEA trademark and sell products under its IKEA trademark. Complainant has provided evidence of multiple trademark registrations for IKEA which cover furniture and home furnishing products (amongst other goods and services) including registrations granted for protection in the European Community, China, Sweden, and the United States. These registrations were granted on April 3, 2002 (European Community), November 15, 2007 (China), December 1, 1997 (Sweden) and on June 23, 1987 (United States).
Respondent is identified as zhou murong. A communication was sent to the Center from Respondent’s e-mail address on November 30, 2011, wherein he/she was identified by the name of “Tony”.
The disputed domain name was registered on December 8, 2010.
5. Parties’ Contentions
Complainant contends that IKEA is a well-known trademark which is recognized worldwide due to its activities through its retailers in numerous countries and its brand popularity, citing over 699 million store visits to its retailers in 2010 and the distribution of nearly 200 million copies of Ikea branded catalogs to consumers each year. Complainant has cited multiple UDRP decisions which recognize its IKEA trademark as well-known including Inter IKEA systems B.V. v. WhoisGuard Protected/NA, Jerry Wray, WIPO Case No. D2010-1919, Inter IKEA systems B.V. v. Avi Chekroun, WIPO Case No. D2000-0478, and others. Complainant maintains that it attempted to resolve this dispute with Respondent directly before initiating a UDRP proceeding by contacting Respondent via post and that this letter was returned because the address information for Respondent as listed in WhoIs records was not correct.
Complainant maintains that the disputed domain name <ikealittle.com> is confusingly similar to Complainant’s IKEA trademark because it combines Complainant’s trademark with the word “little”, which Complainant argues is a generic term. Complainant maintains that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name and has not been authorized by Complainant to use Complainant’s IKEA trademark. Regarding the content of the disputed domain name, Complainant has provided screenshots of the webpages featured at <ikealittle.com> which feature links to third party websites. Complainant alleges that these links are monetized and indicative of illegitimate commercial use of the disputed domain name. Specifically, Complainant claims that Respondent is receiving revenue through its use of the IKEA trademark in the disputed domain name <ikealittle.com>. Finally, regarding bad faith, Complainant maintains that the disputed domain name was registered in bad faith because it incorporates Complainant’s distinctive IKEA trademark, a trademark which has been recognized in prior UDRP decisions as notorious. Complainant also maintains that the disputed domain name is being used in bad faith because it features sponsored links to websites maintained by competitors of Complainant.
Complainant has requested that the disputed domain name <ikealittle.com> be transferred from Respondent to Complainant.
In the communication sent to the Center on November 30, 2011, Respondent states that the disputed domain name was registered to protect a misspelling of “likealittle”. Respondent also maintains that he/she has nothing to do with the content on the website at the disputed domain name, and that the advertisements and links appearing on the disputed domain name are placed by the domain name registrar. Respondent further states that he/she is not related to the third parties featured on the websites connected to the links featured on the disputed domain name and requests dismissal of the Complaint.
Apart from the communication on November 30, 2011 referenced above, Respondent did not submit any further observations or arguments.
6. Discussion and Findings
A. Identical or Confusingly Similar
It has been held that in certain circumstances the incorporation of a trademark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to the trademark at issue. Advanced Micro Devices, Inc. v. Piere Macena, WIPO Case No. D2005-0652 (observing that “a domain name is ‘identical or confusingly similar’ to a trademark for purposes of the Policy when the domain name includes the trademark, or confusingly similar approximation, regardless of the other terms in the domain name”). The disputed domain name in the present case combines Complainant’s IKEA trademark in its entirety with the term “little”, and the Panel observes that a prior UDRP decision held that the term “little” is not an element of distinction which avoids a finding of confusing similarity when paired with a trademark (see Sharman License Holdings, Limited v. Web Domain Names, WIPO Case No. D2004-0821 which finds the domain names <kazaa-little.com> and <kazaalittle.com> confusingly similar to the KAZAA trademark). This case is relevant to the present proceeding because it involved two domain names which combined a trademark recognized as well-known with the term “little”.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Complainant has established trademark rights in IKEA which precede registration of the disputed domain name. It is also established by the record that Complainant owns trademark rights for IKEA in China, the jurisdiction identified as Respondent’s home country.
There is no evidence in the record indicating that Respondent has ever traded under the term “ikea” or “ikealittle” or that Respondent has trademark rights in either of these terms, or that Respondent has any other rights or legitimate interests in “ikea” or “ikealittle”.
Respondent has stated that he/she registered the disputed domain name because it is a misspelling of the term “likealittle”, however the Panel notes that there are no provisions in the Policy protecting these types of defensive domain name registrations. Moreover, the disputed domain name incorporates a distinctive trademark which is owned by Complainant and no evidence has been provided by Respondent of rights in “likealittle” or legitimate interests in “likealittle or “ikealittle”.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
The record indicates that Complainant has owned and used the IKEA trademark for many years and that use and registration of the IKEA trademark by Complainant precedes the registration of the disputed domain name. The record also illustrates the notoriety of Complainant’s mark. Specifically, the Complaint includes multiple third party publications which cited Complainant’s IKEA trademark as one of the most well-known brands in the world. Moreover, Complainant’s IKEA trademark has been cited as a well-known mark by numerous UDRP panels including Inter Ikea Systems B.V. v. Ebills Online Services, WIPO Case No. D2011-1948 (citing the IKEA trademark as well-known and concluding that the respondent in the case was likely to have known of the mark when registering the disputed domain name due to its reputation), Inter Ikea Systems B.V. v. Ikea International Co. Ltd., WIPO Case No. D2003-0965 (observing that “IKEA is an internationally well-known mark and therefore enjoys a very broad scope of protection”), and Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437 (citing the IKEA trademark as “long-established and widely known”).
It has been established that the registration of a domain name incorporating a well-known trademark may in appropriate circumstances constitute registration in bad faith, since it is unlikely that the registrant was unaware of the established rights in the mark at the time the domain name was registered. See, e.g., Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397 (finding bad faith since it was unlikely that the registrant of <nike-shoes.com> was unaware of Complainant’s well-known NIKE trademark when registering the domain name); and Dr. Ing. H.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488 (finding bad faith, noting that it was implausible that Respondent was unaware of Complainant’s PORSCHE trademark when registering <porsche-me.com>). Given the recognized notoriety IKEA trademark, the Panel finds that it is implausible that Respondent was unaware of Complainant’s trademark rights when registering the disputed domain name <ikealittle.com>.
Respondent’s knowledge of Complainant’s business is clear upon review of the content of the <ikealittle.com> website. Specifically, Respondent’s websites consist primarily of sponsored links, and a majority of these links either include Complainant’s IKEA trademark in their titles or direct Internet users to third party websites furniture. Websites displaying sponsored links have been regarded as illegitimate use of a domain name when there is evidence that the links displayed are efforts to trade off the goodwill of an established trademark. See, e.g., Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006 (Sponsored links displayed on a landing page are not legitimate where advertisements are directly related to the trademark value of the domain name); The Knot, Inc. v. In Knot we Trust LTD, WIPO Case No. D2006-0340 (similar opinion); Brink’s Network, Inc. v. Asproductions, WIPO Case No. D2007-0353 (similar opinion).
Moreover, some of the links featured on Respondent’s websites direct users to third party websites selling furniture products which are directly competitive with those provided by Complainant. The incorporation of third party links regarding goods or services competitive to those provided under another party’s trademark supports a finding of bad faith use and registration. Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited, WIPO Case No. D2009-0728. By registering the disputed domain name <ikealittle.com> and offering links to third party goods directly competitive with those of Complainant, Respondent is diverting traffic from Complainant’s <ikea.com> domain name and other domain names owned by Complainant which incorporate the IKEA trademark.
Finally, the Panel notes that Respondent claims to not be responsible for the links appearing on the website at the disputed domain name and claims that these links have been generated by the domain name registrar. It has been noted by prior UDRP panels that this defense should not avoid a finding of bad faith. See, e.g., Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396 (“Even if the advertising links served up to visitors on the website associated with the Domain Name are automated, the Respondent remains responsible for the uses to which the Domain Name is put.”) and Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315 (noting that links to third party website appearing at a domain name which was held to be confusingly similar to the complainant’s trademark were evidence of bad faith despite the respondent’s lack of knowledge of the content, observing that the respondent was “knowingly complicit, for commercial gain, in the arrangements whereby such diversion took place and did nothing to stop it”). Both of the aforementioned cases involved domain names which were confusingly similar to the complainants’ trademarks and advertising links to third party websites of the trademark owners’ competitors. The Panel sees nothing unique about the present case which supports a finding which is not consistent with these decisions.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ikealittle.com> be transferred to the Complainant.
Kimberley Chen Nobles
Dated: January 24, 2012