WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter Ikea Systems B.V. v. Yootana Tunmaneekool
Case No. D2011-1964
1. The Parties
The Complainant is Inter Ikea Systems B.V. of Delft, Netherlands, represented by Crowell & Moring, LLP, Belgium.
The Respondent is Yootana Tunmaneekool of Nakornpathem, Thailand.
2. The Domain Name and Registrar
The disputed domain name <ikeasofa.net> is registered with Name.com LLC.
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 Name.com LLC a request for registrar verification in connection with the disputed domain name. On November 9, 2011, Name.com LLC. 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”).
The Complainant requested a Suspension of the Proceedings in order to explore a possible settlement between the Parties on November 10, 2011. These Proceedings were suspended on November 10, 2011, and an Extension to the Suspension was granted on November 28, 2011. Failing to reach a settlement the Complainant requested the proceedings be reinstituted on December 13, 2011.
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 December 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2012.
The Center appointed Jane Lambert as the sole panelist in this matter on January 12, 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. 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 the domain names <www.ikea.com> and <www.ikea-usa.com>.
Very little is known of the Respondent other than its name, registration and use of the disputed domain name. The postal address in the WhoIs record appears to be false.
Attached to the Complaint are screen shots of what appear to be the landing page of a website at “www.ikeasofa.net”.
The date on the first of those pages is September 11, 2011. The words “Ikea Sofa” appear in the title space together with Facebook “Like” , Google + and “tweet” buttons. Below the title bar are photographs of various items of furniture together with descriptions, prices and what appear to be sponsored links.
The date on the second of those pages is March 14, 2011. The word “ikea.net” appears in white against a red background. White space in the center of the page has pictures and a description of a “Bobkona Sofa Set” with a link to an advertisement for what appears to be the same merchandise on the “Amazon.com” website.
Yet another page dated April 11, 2011, shows a “Prince Lionheart Ultimate Wipes Warmer” contains a column of Google sponsored ads.
The Panel tried to visit the website at “www.ikeasofa.net” on January 26, 2012, but was unable to find an active website.
The Complainant’s lawyers tried to write to the Respondent on April 13, 2011, but their letter was returned unopened.
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 the Respondent 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 full square within the ambit of that paragraph.
The Complainant says that the registration of a domain name that corresponds to a famous mark such as IKEA or even a mark that could have come to light upon a simple trade mark search indicates bad faith. It argues that the registration of the domain name must have been intended to disrupt the Complainant’s business. Lastly, it says that giving a false address indicates bad faith.
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.
The Complainant has not produced evidence of a trade mark registration in Thailand but that does not matter because paragraph 14(a)(i) of the Policy does not specify where the mark has to be registered. The Panel finds that the United States Trade Mark Registration Number 1,118,706 mentioned in section 4, above, is a trade mark in which the Complainant has rights.
The dominant part of the disputed domain name is the word “ikea”. 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 Panel finds the incorporation of the word “sofa” 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 its sofas and other items of IKEA furniture can be purchased.
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
The Complainant has made clear that it has not licensed or authorized the Respondent to use its marks.
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 a page containing sponsored links. Neither Respondent’s surname nor 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 sponsored links.
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 finds 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 sofas are on sale or advertised. In the Panel’s view 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 the Complainant has succeeded under paragraph 4(b)(iv) it is unnecessary to consider its alternative grounds.
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,<ikeasofa.net> transferred to the Complainant.
Dated: January 26, 2012