WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. PrivacyProtect.org / LAKSH INTERNET SOLUTIONS PRIVATE LIMITED
Case No. D2012-0309
1. The Parties
Complainant is Inter IKEA Systems B.V. of Delft, Netherlands represented by Studio Barbero, Italy.
Respondent is PrivacyProtect.org / LAKSH INTERNET SOLUTIONS PRIVATE LIMITED of Nobby Beach, New South Wales, Australia and Mumbai, India, respectively.
2. The Domain Name and Registrar
The disputed domain name <ikeabedding.com> (the “Domain Name”) is registered with Tirupati Domains and Hosting Pvt Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2012. On February 15, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 16, 2012, Tirupati Domains and Hosting Pvt Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 17, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on February 22, 2012.
The Center verified that the Complaint together with the amendment to 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 February 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 14, 2012.
The Center appointed Reinhard Schanda as the sole panelist in this matter on March 20, 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 has registered numerous national an international trademarks containing the term “IKEA”. Complainant’s trademark rights go back to 1974.
The Domain Name was registered on April 4, 2007.
5. Parties’ Contentions
Complainant contends that it is the owner of over 1,400 international and national trademark registrations worldwide which contain the term “IKEA”. In 1943, almost seventy years ago, Complainant established what is today the extraordinarily successful furniture and home furnishing business recognized by consumers around the world as the trademark IKEA. Complainant’s business model is, in essence, a franchise model in which only approved and licensed retailers are authorized to participate in its exclusive distribution system and – particularly relevant in these proceedings – make use of the IKEA trademark. Complainant and its authorized retailers and affiliated entities are referred to herein collectively as “IKEA Systems”.
Since its inception, IKEA Systems has provided its customers with useful, functional, and well-designed furniture and home furnishings for low prices under the now classic IKEA trademark.
Complainant contends that IKEA Systems originated in the early 1940s when Swedish entrepreneur Ingvar Kamprad founded the now world-famous furniture company. The name Mr. Kamprad selected to represent the company and establish its identity is itself personal and unique: the IKEA name consists of the founder’s initials (I and K), followed by the first initial of Kamprad’s farm, Elmtaryd (E), and then, finally, his village, Agunnaryd (A).
Summarizing briefly Mr. Kamprad’s successful business model, known today as “the IKEA Concept”, the company markets a vast array of furniture and home furnishing products at prices lower than those of its competitors by cutting costs wherever possible without sacrificing the quality of the goods offered to consumers – a principle that has served as the essence of the IKEA brand appreciated by consumers from the very beginning.
Complainant contends that the IKEA brand has a long history and its global fame cannot be understated. The first IKEA Systems advertisement was published in Swedish newspapers in 1945 and the first IKEA Systems catalog was distributed to consumers in 1951. The first IKEA Systems store opened in Sweden in 1958. The IKEA Systems brand has since then exploded globally in popularity, success, and renown – an indisputable fact supported by the following quantifiable metrics: today there are 316 IKEA Systems stores in 38 countries, including 7 in Australia. Over 734 million visitors shopped at IKEA Systems stores in 2011. Annual sales in 2011 for all IKEA Systems stores surpassed EUR 26 billion. Over 208 million copies of the IKEA catalog, published in more than 25 languages, were printed and distributed last year.
According to Complainant, the success of the IKEA brand is widespread today and continually expanding. Despite its explosive growth, Complainant has nevertheless stayed true to the business model originally pioneered by Mr. Kamprad: to offer a broad range of well-designed, functional home furnishing products at prices so low that as many people as possible could afford them. With this core concept defining the brand for almost seventy years, IKEA has become one of the most recognized brands in the world.
Complainant contends that Interbrand, a leading brand-metrics company, has repeatedly recognized
Complainant’s brand as one the top one hundred most valuable brands in the world. Indeed, in 2011, Interbrand estimated the value of the IKEA mark at USD 11.86 billion, ranking it as the 31th most valuable brand. In 2011, Interbrand not only ranked IKEA as the world’s 31st most valuable brand overall, but also the only brand in the top one hundred in 2011 in the “Home Furnishings” sector. According to Interbrand, “[c]lever marketing still represents the [IKEA] brand well, and IKEA was presented with the 2011 Advertiser of the Year award at the 58th Cannes Lions International Festival of Creativity, its 50th since 1991.” Millward Brown Optimor, the brand valuation company, also recognized IKEA in its ranking of 2011’s one hundred most valuable brands in the world, and the 10th most valuable brand in the “Retail” sector. In sum, IKEA is an undisputedly famous trademark well known throughout the world.
In order to increase protection of the trademark “IKEA” on the Internet, Complainant registered the term “IKEA” in over 200 gTLDs and ccTLDs and operates its official website (“www.ikea.com”) as its primary presence on the Internet for global promotion.
The Domain Name, which incorporates the IKEA trademark, was registered without Complainant’s knowledge or authorization on April 4, 2007. Upon learning of the registration of the Domain Name, Complainant further ascertained that Respondent was publishing commercial, or “pay-per-click”, links to competitors and competitor products on the corresponding web site.
After confirming the lack of any authorization granted by Complainant to Respondent to register the Domain Name, Complainant instructed its authorized representative to take the steps necessary to reclaim it. The authorized representative thereafter sent a cease and desist letter on August 11, 2011, to Respondent’s email addresses as indicated in the WhoIs database requesting that Respondent transfer the Domain Name to Complainant and to otherwise comply with Complainant’s intellectual property rights in all respects.
Respondent, however, failed to comply with Complainant’s demands, to agree to resolve the dispute amicably, or even to respond to Complainant’s correspondence in any way. Complainant therefore sent reminders to Respondent reiterating its demands on September 13, 2011 and November 13, 2011, and again simultaneously submitted the letters to Respondent through the online submission forms. To date, Respondent has neither complied with Complainant’s demands nor replied to Complainant’s correspondence.
Complainant contends that the Domain Name registered by Respondent is confusingly similar to trademarks in which Complainant has rights. In light of the distinctiveness of Complainant’s trademarks comprised of or incorporating “IKEA”, it is an ineluctable conclusion that Respondent registered the Domain Name in bad faith to profit from the reputation of Complainant.
Complainant further contends that Respondent is not a licensee or authorized agent of Complainant or in any way legally permitted to use Complainant’s trademark IKEA. Moreover, Respondent failed to respond to the cease and desist letter and two subsequent reminders sent by Complainant’s authorized representative.
Conversely, Complainant is not in possession of, nor aware of the existence of, any evidence tending to demonstrate that either Respondent or the underlying registrant, whose identity is hidden behind a “privacy shield”, is commonly known by the Domain Name as an individual, business, or other organization.
According to Complainant, it is inconceivable that Respondent was unaware of the existence of the registered trademark or the brand it represents when it registered the confusingly similar Domain Name. Indeed, the well-known character of a trademark with which a domain name is confusingly similar is, in itself, evidence of bad faith registration.
With respect to bad faith use, published on the web site corresponding to the Domain Name is a series of commercial “pay-per-click” links to competitors and competitor products from which Respondent earns click-through revenues. According to Complainant this is a clear evidence of bad faith use.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
According to the Panel, it is well established that the addition of generic words to a trademark in domain names is insufficient in itself to negate confusing similarity between a trademark and a domain name. See F. Hoffmann-La Roche AG v. Ric Deleon, WIPO Case No. D2006-0135, concerning <order-xanaxalprazolam-valium-diazepam-online.com>, finding that “the domain name in this case is similar to the Complainant’s trademark because it uses the precise trademark name which has no general meaning and two generic words in common usage. Internet users probably have every right to expect that, when they select the disputed domain name, they will find themselves looking at a site of someone licensed by the Complainant to use its VALIUM trademark. This is not the case. For that reason, and in line with other WIPO UDRP cases, the Panel concludes that the domain name is confusingly similar to the Complainant’s trademark”.
See also Inter Ikea Systems B.V. v. Ikea Property Management, WIPO Case No. D2011-1966, (concerning <ikeapropertymgmt.com>, “[t]he incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark”); Inter Ikea Systems B.V. v. Charles Stapleton, WIPO Case No. D2011-1963; Red Bull GmbH v. PREGIO Co., Ltd., WIPO Case No. D2006-0909 (“the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark”); Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; Caesars Entertainment, Inc. v. Michael Ulrich/HardcoreDVD.com, WIPO Case No. D2004-0463.
Since the Domain Name <ikeabedding.com>, incorporates Complainant’s trademark along with the addition of one generic word only, the Panel concludes, that the Domain Name is confusingly similar to Complainant’s trademark. See, e.g., Inter Ikea Systems B.V. v. Yootana Tunmaneekool, WIPO Case No. D2011-1964, “[t]he 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.”
According to the Panel the “.com” portion of the Domain Name is “non-descriptive” and instrumental to the use of the Internet and therefore “does not impact the value of the mark represented” in domain names. Thus, the fact that “.com” is a part of the Domain Name but not a part of the trademark does not affect the analysis of confusingly similarity herein. See Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015; and Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760.
In light of the foregoing, the Panel therefore concludes that the Domain Name is confusingly similar to the prior registered trademarks in which Complainant has rights in satisfaction of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant contends, that Respondent failed to respond to the cease and desist letter and two subsequent reminders sent by Complainant’s authorized representative. As stated in The Great Eastern Life Assurance Company Limited v. Unasi Inc., WIPO Case No. D2005-1218, “[b]y operation of a common sense evidentiary principle, the Panel finds that the Respondent’s failure to counter the allegations of the cease and desist letter amounts to adoptive admission of the allegations[.]” In Stanworth Development Limited v. Mike Morgan (290436), WIPO Case No. D2006-0230, a case in which two cease and desist letters were sent, the panel held that “since the Respondent was informed of the Complainant’s claims in relation to the trademark and made no attempt to offer any explanation for his adoption of so similar a domain name for use in relation to services of the same description, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name”. Given that Respondent in the present matter failed to respond to any of the correspondence sent by Complainant’s representative setting forth Complainant’s claims in relation to the trademark, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name on this basis as well.
Complainant contends, that it is not in possession of, nor aware of the existence of, any evidence tending to demonstrate that either Respondent or the underlying registrant, whose identity is hidden behind a “privacy shield”, is commonly known by the Domain Name as an individual, business, or other organization. As set forth in Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435, Respondent has the duty to establish this fact and the use of a privacy shield contributes to a failure to do so: “[while] the use of identity protection services does not, as a rule, prevent a respondent from being commonly known by the subject domain name. . . . Policy 4(a)(ii) requires a showing that Respondent is commonly known by the domain name in question. Here, Respondent has failed to come forward with evidence that suggests that it is commonly known by the disputed domain name”. The Panel finds also in this case, that Respondent is not commonly known by the Domain Name.
While the burden of proving the absence of Respondent’s rights or legitimate interests in respect of the Domain Name for purposes of paragraph 4(a) of the Policy lies with Complainant, it is nevertheless a well-settled principle that satisfying this burden is unduly onerous since proving a negative fact is logically less feasible than establishing a positive. Accordingly, it is sufficient for Complainant to produce prima facie evidence in order to shift the burden of production to Respondent. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Sampo plc v. Tom Staver, WIPO Case No. D2006-1135; Audi AG v. Dr. Alireza Fahimipour, WIPO Case No. DIR2006-0003.
In sum, for all of the foregoing reasons, the Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Complainant finally reminds that the registered trademark IKEA has been used extensively and exclusively by IKEA Systems since 1943. As observed in Inter IKEA Systems B.V. v. Telos Chamir, WIPO Case No. D2011-1961, numerous UDRP Panels over the years 16 “have considered IKEA for the purposes of their UDRP proceedings as ‘one of the world’s most well-known and reputed trademarks’ and/or as a trademark with ‘a high level of original distinctiveness’.” (quoting Inter IKEA Systems B.V. v. Charles Stapleton, WIPO Case No. D2011-1963; Inter IKEA Systems B.V. v. N/A Belly Scott, WIPO Case No. D2011-0910; Inter IKEA Systems B.V. v. WhoisGuard Protected / NA, Jerry Wray, WIPO Case No. D2010-1919). Considering the trademark’s unique and distinct characteristics, it is highly unlikely to this Panel that Respondent was unaware of the existence of the registered trademark or the brand it represents when it registered the confusingly similar Domain Name.
Indeed, the well-known character of a trademark with which a domain name is confusingly similar is, in itself, evidence of bad faith registration. See, inter alia, Société des Produits Nestlé SA v. Kayvan Sadeghi, WIPO Case No. DIR2007-0002, in which the Panel found that “even without evidence of the Complainant’s registered rights, it is apparent that the Complainant’s mark is so famous that, as such, a Panel could legitimately take the equivalent of ‘judicial notice’ of that fact. Judicial notice is a rule of evidence that allows a matter to be taken as proven, because it is so well-known that it cannot reasonably be contested.” See also Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Guccio Gucci S.p.A., v. Bravia Stoli, WIPO Case No. D2009-1170, (finding that the GUCCI mark is such a famous luxury brand that it “could not have reasonably escaped the Respondent’s attention when registering the disputed domain name.”); Yahoo! Inc. v. Logicland Corporación, WIPO Case No. DVE2001-0001. The Panel therefore finds that the Domain Name was registered in bad faith in full satisfaction of Policy paragraph 4(b).
With respect to bad faith use, published on the web site corresponding to the Domain Name is a series of commercial “pay-per-click” links to competitors and competitor products from which Respondent earns click-through revenues – a circumstance UDRP panels generally consider evidence of bad faith use. See, e.g., Inter Ikea Systems B.V. v. Yootana Tunmaneekool, Case No. D2011-1964, (in finding bad faith use, the Panel noted that “[t]he Respondent has used the disputed domain name only for a page containing sponsored links. … The Panel finds that Respondent’s use of the domain name is for the click through revenue from sponsored links.”). See also Deutsche Telekom AG v. Gary Seto, WIPO Case No. D2006-0690; Zinsser Co. Inc., Zinsser Brands, Co. v. Henry Tsung, WIPO Case No. D2006-0413; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Cox Radio, Inc. v. Domain Administrator, WIPO Case No. D2006-0387; Gianfranco Ferre’ S.p.A. v. Unasi Inc., WIPO Case No. D2005-0622; L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,, WIPO Case No. D2005-0623; Scania CV AB (Publ) v. Unaci, Inc., WIPO Case No. D2005-0585; Volvo Trademark Holding AB v. Michele Dinoia, WIPO Case No. D2004-0911; Claire’s Stores, Inc., Claire’s Boutiques, Inc., CBI Distributing Corp. v. LaPorte Holdings, WIPO Case No. D2005-0589; Members Equity PTY Limited v. Unasi Management Inc., WIPO Case No. D2005-0383. In light of the foregoing, the Panel concludes that the Domain Name has been used in bad faith in satisfaction of paragraph 4(a)(i) of the Policy.
Finally, it is well established that failure to respond to a cease and desist letter tends to evidence bad faith. See, e.g., Inter Ikea Systems B.V. v. Ikea Property Management, WIPO Case No. D2011-1966; Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062 (“Any such bad faith is compounded when the domain name owner or its duly authorized privacy service, upon receipt of notice that the domain name is identical to a registered trademark, refuses to respond or even to disclose the domain name owner’s identity to the trademark owner. Such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting.”)
In sum, the Panel finds that the Domain Name was registered and is being used in bad faith in full satisfaction of paragraphs 4(a)(iii) and 4(b) 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 Domain Name <ikeabedding.com> shall be transferred to Complainant.
Dated: April 3, 2012