WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter Ikea Systems B.V. v. Charles Stapleton
Case No. D2011-1963
1. The Parties
The Complainant is Inter Ikea Systems B.V. of Delft, Netherlands represented by Crowell & Moring, LLP, Belgium.
The Respondent is Charles Stapleton of Atlanta, Thailand.
2. The Domain Name and Registrar
The disputed domain name <ikeaonlinecatalogue.com> is registered with GoDaddy.com, Inc (the “Registrar”).
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 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 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 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2011.
The Center appointed Sir Ian Barker as the sole panelist in this matter on December 8, 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
The Complainant is the owner of a system for manufacturing and selling furniture and home furnishing products under the trademark IKEA through approved franchised retailers. Since the business started in Sweden in 1943, IKEA has become a global brand with stores in 38 countries and an annual turnover in 2010 of EUR 23.8 billion.
The Complainant owns registered trademarks incorporating the word IKEA in numerous countries, including the United States of America and the European Union.
The IKEA brand has a strong presence on the Internet and the Complainant owns appropriate domain name registrations such as <ikea.com>; <ikea-usa.com> and <ikea-asia.com>.
The Complainant’s trademark has been noted by previous UDRP panelists as being well-known worldwide in a series of decisions under the UDRP since 2000. The latest of these was Inter IKEA Systems B.V. v. WhoisGuard Protected / NA, Jerry Wray, WIPO Case No. D2010-1919 relating to the domain name <ideacatalogue.org>.
The disputed domain name was registered on November 28, 2010. The disputed domain name resolves into a blog where visitors receive some general information about IKEA products and are provided with sponsored links to websites offering goods and services from competitors of the Complainant.
The Complainant caused a “cease and desist” letter to be sent to the Respondent on April 13, 2011. The letter was returned by registered mail since it appeared that the WhoIs records contained incorrect contact details for the Respondent.
5. Parties’ Contentions
(i) The disputed domain name is confusingly similar to the Complainant’s trademark. IKEA is a well-known trademark in which the Complainant has substantial rights. The disputed domain name incorporates the trademark IKEA together with generic terms related to its business practices (“catalogue” and “online”). Given the widespread renown of the IKEA mark, relevant consumers could reasonably conclude that the disputed domain name is endorsed by or affiliated with the Complainant. The Complainant’s catalogue is very widely distributed.
(ii) Previous UDRP decisions involving the IKEA mark show that there is confusing similarity where the entire mark is used in the disputed domain name with generic words added.
(ii) The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent registered the disputed domain name long after the Complainant had established rights in its IKEA mark through extensive use. There exists no relationship between the Complainant and the Respondent that gives rise to any license or permission to register a domain name incorporating the IKEA trademark. The Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. The false address in the Respondent’s WhoIs records indicates a lack of rights.
(iii) The disputed domain name has been registered and is being used in bad faith. The bad faith is established by the fact that the disputed domain name incorporates in its entirety the Complainant’s IKEA trademark and was acquired by the Respondent long after the mark became famous. The Respondent has intentionally attempted to attract Internet users to its website, for commercial gain, creating a likelihood of confusion with the Complainant’s IKEA mark as to the source, affiliation or endorsement of the website. The Respondent has sought to profit from the disputed domain name through the sponsored links on its website.
(iv) The statement in the Respondent’s blog refers to IKEA as a “furniture company” which has retail stores and is the most affordable and largest furniture manufacturer.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant’s IKEA trademark is directly connected to the Complainant’s activities in the furniture business and is registered and well-known worldwide.
The trademark IKEA is wholly found within the disputed domain name, which adds the generic words “online” and “catalogue”. The Complainant has a long tradition of printing catalogues of products, which are available from its official website.
The addition of the words “online” and “catalogue” is not sufficient to diminish the confusing similarity between the disputed domain name and the Complainant’s trademark.
Many previous UDRP decisions have stressed that generic terms added to a trademark do not diminish the confusing similarity of the disputed domain name to the trademark. For example, “it is now well-established that the adoption of a trademark in its entirety as a domain name together with other descriptive material does not generally suffice to enable a respondent to overcome an allegation that the domain name is distinguishable from the Trademark in question” (F. Hoffmann-La Roche AG v. sysadmin admin, balata.com ltd, WIPO Case No. D2008-0954). See also the decision in WIPO Case D2010-1919, discussed supra and relating to the domain name <ikeacatalogue.com>.
The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark and therefore paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; 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 trademark at issue.
Based on the Respondent’s default and on the prima facie evidence provided in the Complaint, the Panel finds that none of the above circumstances is present in this case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has neither licensed nor authorized the use of its trademarks by the Respondent, and it does not appear that the Respondent is commonly known by the disputed domain name.
Consequently, the Panel is satisfied that the Complainant has satisfied Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
When the disputed domain name was registered only last year, the Complainant’s trademark IKEA was already well-known and recognized worldwide. The reference to the Complainant on the website makes it clear that the Respondent was well aware of the Complainant and its brand.
Therefore, it is highly unlikely that the Respondent was unaware of the Complainant’s reputation and business. It follows that the disputed domain name was registered in bad faith.
Moreover, the Panel is of the view that Respondent’s blog must necessarily create the likelihood of confusion. Internet users would most likely think there is some connection with the Complainant. The blatant reference to the Complainant in the Respondent’s website and its naked attempt to “cash-in” on the Complainant’s reputation are ample proof, without more, of the Respondent’s bad faith use.
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, <ikeaonlinecatalogue.com> be transferred to the Complainant.
Sir Ian Barker
Date: December 16, 2011