WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IKEA Systems B.V. v. Ali İhsan ADA / PrivacyProtect.org, Domain Admin
Case No. D2012-0167
1. The Parties
The Complainant is IKEA Systems B.V. of Delft, Netherlands, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondent is Ali İhsan ADA of Istanbul, Turkey / Privacyprotect.org, Domain Admin of Australia.
2. The Domain Name and Registrar
The disputed domain name <ikeamarket.net> is registered with IHS Telekom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2012. On February 1, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 2, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 7, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 12, 2012.
On February 7, 2012, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On February 11, 2012, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments.
The Center verified that the Complaint together with the amended 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 February 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2012.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on March 8, 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 is one of the leading furniture and home furnishing products companies in the world. It is the owner of a unique concept which is originated in the 1940’s, when the Swedish entrepreneur Ingvar Kamprad founded the IKEA furniture company for the sale of furniture and home furnishing products marketed under the trademark IKEA. The Complainant’s business model is based on a franchise system, and only approved retailers who have entered into an agreement with the Complainant may use this concept, including the IKEA mark.
With its core concept defining the brand over the course of more than 60 years, the IKEA mark has become one of the most recognized brands in the world. IKEA has been chosen as one of the “most valuable brands”, “most stable brands”, “best global brands”, “best retail brands” in the world by the respected organizations.
The Complainant owns more than 1400 trademark registrations for IKEA and IKEA variants in more than 70 countries including Turkey and the European Union.
The Complainant has also registered and uses the domain name <ikea.com> and several country specific web sites such as “www.ikea.com.tr”.
The disputed domain name <ikeamarket.net> was created on March 30, 2010.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is identical / confusingly similar to its registered trademarks, namely IKEA trademarks since it incorporates exactly and entirely the IKEA trademark as its distinctive and main element.
With reference to the case IKEA Systems B.V. v. PrivacyProtect.org, WIPO Case No. D2011-0451, the Complainant further states that there is confusing similarity where the entire mark in question is incorporated into the disputed domain name and where only a generic word has been added. The Complainant mentioned that mere addition of the generic word “market” fails to alleviate confusion, particularly in view of the fame of the IKEA mark, the worldwide presence of IKEA and the Complainant’s use of multiple domain names that include the IKEA mark.
The Complainant also states that addition of the generic term “market” does not sufficiently distinguish the disputed domain name from the mark, on the contrary it increases the confusing similarity since it clearly relates to the sale of goods and IKEA’s business does in fact center on the sale of goods.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the Respondent does not have earlier rights for the IKEA mark. Further, the Respondent is not a licensee of the Complainant and does not have the Complainant’s permission or authorization to use the IKEA trademark of the Complainant.
The disputed domain name was registered and is being used in bad faith.
The Respondent’s website offers the online sale of purported IKEA products. The Respondent is thus intentionally attempting to attract to Internet users to the Respondent’s websites for commercial gain, by creating a likelihood of confusion with the Complainant’s famous trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of products on the website within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent has sought to profit from the disputed domain name by using it to create an aura of affiliation with the Complainant, for the purpose of selling purported IKEA products.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the 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 by the Respondent in bad faith.
A. Language of the Proceeding
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors.
Although the language of the Registration Agreement is Turkish, the Panel determines in accordance with the Complainant’s request and paragraph 11(a) of the Rules, that the language of these administrative proceedings shall be the English language. The Panel finds that it would be inappropriate to conduct the proceedings in the Turkish language and request a Turkish translation of the Complaint while the Respondent has failed to raise any objection or even to respond to the Complaint or the Center’s communication with regard to the language of the proceedings even though communicated in Turkish and in English.
A. Identical or Confusingly Similar
The Complainant is the owner of the trademark IKEA, which is protected by numerous trademark registrations in many countries including Turkey.
The Panel concurs with the opinion of several prior UDRP panels that when a domain name wholly incorporates a complainant’s registered trademark, that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615.
In this Panel’s view, the addition of the term “market” does not sufficiently distinguish the disputed domain name from the Complainant’s trademark.
Additionally, the Respondent did not reply to the Complainant’s contentions.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to rights or legitimate interests in the disputed domain name.
The Panel concurs with the opinion of the panelist’s view in the case IKEA Systems B.V. v. PrivacyProtect.org, WIPO Case No. D2011-0451:
“As it is mentioned in the General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645, “The question that therefore arises is whether Respondent has a legitimate interest in using a domain name that is identical to Complainant’s trade marks in circumstances that are very likely to give rise to initial interest confusion, even though it may be selling Complainant’s legitimately trade marked goods at the site and any such confusion is likely to be dispelled once internet users arrive at the site because of its disclaimers? ”Further to asking this question, the panel concluded that “While a person may very well be perfectly entitled (for reasons of fair competition or otherwise) to offer for sale (or re-sale) a trademark owner’s genuine branded goods, that does not necessarily extend to a right to do so through a domain name that is virtually identical to that trademark owner’s mark or marks.”.
While the Panel notes that the disputed domain names are not “virtually identical” to the Complainant’s trademark the Panel finds the above mentioned precedent convincing and the Panel also is of the view that offering genuine branded goods does not allow registering a domain name identical or almost identical to a trademark owner’s mark, especially in circumstances as the ones present in this case, where the websites are not accurately and prominently disclosing the registrants relationship with the Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), section 2.3).”
Additionally, the Respondent has not shown that it has been commonly known by the disputed domain name. The Complainant showed, inter alia, that the Respondent has neither a license nor any other permission to use the IKEA trademark in the disputed domain name. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests. The Panel finds that given the use made of the disputed domain name that when the Respondent registered the disputed domain name it must have known that IKEA was the trademark of the Complainant and that it registered the disputed domain name because it would be recognized as such.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and therefore the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
The Panel believes that the Respondent must have been aware of the rights the Complainant has in the trademark IKEA and the value of said trademark at the moment of the registration of the disputed domain name. By using the disputed domain name, the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain, but is misleadingly diverting consumers for what is likely its commercial gain.
The Panel finds that, by using the disputed domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Respondent uses its web site to sell products branded IKEA. There is no certain information whether these products are genuine or not. The Respondent obviously tries to create the impression that the website is owned or endorsed by or affiliated with the Complainant.
In view of the above, after examining all the circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
Accordingly, the Panel finds in favor of the Complainant on the third element 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 <ikeamarket.net> be transferred to the Complainant.
Dilek Ustun Ekdial
Dated: March 22, 2012