WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. Privacy Protection
Case No. D2012-2456
1. The Parties
The Complainant is Inter IKEA Systems B.V., Delft LN, Netherlands, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is Privacy Protection, Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <ikea37.com> is registered with CJSC Registrar R01 (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2012. On December 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 2012, 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. In response to a notification by the Center that the Language of the registration is Russian, the Complainant filed an email communication confirming its request for English to be the language of the administrative proceedings. The Respondent did not respond to the Language of Proceeding Notification.
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 January 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2013.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on February 26, 2013. 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.
The Panel determined 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 appropriate to conduct the proceedings in the English language since the Complainant has sent the cease and desist letter in English, and the Respondent has never answered it. Moreover, the center proceeded in both the English and Russian languages and indicated that it would accept a Response in either language. The Respondent has ignored all attempts to solve this issue amicably, and the Panel finds it cannot profit from its intentional default, hence the language of these proceedings shall, upon the request of the Complainant, be English.
4. Factual Background
The Complainant is the owner of a unique concept for the sale of furniture and home furnishing products marketed under the trademark IKEA. The Complainant’s business model is developed through a franchise system in which only approved and licensed retailers are authorized to participate in the exclusive distribution system and make use of the IKEA trademark. Today, there are 338 IKEA stores in 38 countries operating under IKEA franchise agreements.
The Complainant owns over 1,500 trademark registrations for IKEA and IKEA variants in more than 80 countries around the world, covering goods and services in the International Classes 2, 8, 9, 11, 16, 18, 20, 21, 24, 25, 27, 28, 29, 30, 31, 35, 36, 38, 39, 41, 42, and 43, among others. The Complainant has several trademark registrations valid in the Russian Federation with the most senior dated September 24, 1982 (registration number: 71843). There are currently 14 IKEA stores located in the Russian Federation which is the country where the Respondent apparently resides. The Complainant has also registered the trademark IKEA incorporated in more than 300 gTLDs and ccTLDs domain names worldwide, among these; <ikea.com>.
5. Parties’ Contentions
The Complainant underlined that the mark IKEA is an invented name. It is an acronym comprising the initials of the founder's name (Ingvar Kamprad), the farm where he grew up (Elmtaryd), and his home parish (Agunnaryd) and it has no meaning in any language other than as a trademark identifying IKEA as a source of origin. The Complainant also submits that the trademark IKEA is considered to be significant. In 2012, IKEA websites had over 1.1 billion visitors. The trademark IKEA is one of the most well-known trademarks in the world. The mark IKEA is in possession of substantial inherent and acquired distinctiveness.
The disputed domain name comprises the word “Ikea”, which is identical to the registered trademark IKEA, therefore the disputed domain name is confusingly similar to the Complainant’s world famous trademark IKEA. The addition of the suffix “37” is not relevant and will not have any impact on the overall impression of the dominant part of the name, IKEA, instantly recognizable as a world famous trademark.
The domain name was registered by the Respondent on February 19, 2012, decades after the Complainant registered the IKEA trademark in the Russian Federation. The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the disputed domain name. Therefore, in the Complainant’s view it is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the name “Ikea” at the time of registration. It is rather obvious that it is the fame of the trademark that has motivated the Respondent to register the disputed domain name.
In the Complainant’s opinion anyone who sees the disputed domain name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the trademark of the Complainant. With reference to the reputation of the trademark, IKEA, there is a considerable risks that the public will perceive the Respondent’s domain name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant. The trademark also risk being tarnished by being connected to a website owned by a third party. By using the trademark as a dominant part of the disputed domain name, the Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant’s trademark. The Complainant is confident that anyone who sees the disputed domain name, even without being aware of the content, are likely to think that the disputed domain name is in some way connected to the Complainant, (“initial interest confusion”).
The Complainant states that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. Nor has the Complainant found anything that would suggest that the Respondent has been using the name/trademark IKEA in any other way that would give them any rights or legitimate interests in the disputed domain name. Consequently, the Respondent may not claim any rights established by common usage. It is also clear, that no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark IKEA.
Furthermore, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to his own website, offering home delivery services of products sold by the Complainant.
By doing this, the Respondent is misleading Internet users to a commercial website. It is highly likely that visitors would be confused into falsely thinking that this is a website owned, or sponsored, by the Complainant. No evidence has been found that the Respondent uses the name as a company name or has any other legal right in the name IKEA.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(b) the respondent has no rights or legitimate interests in the domain name; and
(c) the domain name has been registered and is being used by the respondent in bad faith.
A complaint may only be admitted if the above criteria are met simultaneously.
A. Identical or Confusingly Similar
The Complainant has proven that the disputed domain name <ikea37.com> is identical or confusingly similar to the name, trademarks and service marks of the Complainant.
The Complainant's trademark IKEA is an invented word with no meaning and therefore inherently distinctive. It is an acronym comprising the initials of the founder's name (Ingvar Kamprad), the farm where he grew up (Elmtaryd), and his home parish (Agunnaryd).
The confusing similarity of the disputed domain name <ikea37.com> to the Complainant’s trademark IKEA is apparent from a simple visual comparison. The disputed domain name is a replica of the Complainant’s mark with the non-distinctive numerical suffix “37”. This is sufficient to satisfy the requirement that the disputed domain name is confusingly similar to a mark in which the Complainant has rights (see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 wherein the UDRP panel found that “when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words”). Any added words, most obviously the suffix comprising of the number “37” is not sufficient to establish that the disputed domain name is not confusingly similar to the mark IKEA.
Moreover, the disputed domain name <ikea37.com> contains a famous, trademark owned legally by the Complainant IKEA and is confusingly similar to other domain names largely owned by the Complainant (i.e. <ikea.com>).
The Panel therefore finds that the disputed domain name <ikea37.com> is confusingly similar to the Complainant’s trademark and as a consequence, the Complaint brought by the Complainant meets the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
From the evidence submitted before the Panel it is clear that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent is not the Complainant’s licensee in any respect, nor is the Respondent authorised to use the Complainant’s marks. There is no evidence of the Respondent’s use of, or demonstrable preparation to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, noting the use of the Complainant’s trademark in the Respondent’s website which appears to be for a commercial purpose.
Nonetheless, the Respondent was also given the opportunity to contest the Complainant’s prima facie case against it. However, the Respondent did not submit any evidence that would demonstrate that it has any rights to, or legitimate interests in the disputed domain name <ikea37.com>.
The Panel therefore infers from the Respondent’s silence and the Complainant’s contentions that the Respondent has no serious arguments to prove its rights to, or legitimate interests in the disputed domain name <ikea37.com>. The Panel considers the requirement of paragraph 4(a)(ii) of the Policy fulfilled.
The Panel considers the requirement of paragraph 4(a)(ii) of the Policy fulfilled.
C. Registered and Used in Bad Faith
The Complainant is the owner of the trademark and worldwide known mark IKEA and the owner of the domain name <ikea.com>, under which it runs its official website.
The trademark IKEA belonging to the Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world. Finally, as rightly pointed out by the Complainant according to the provisions of Article 6bis of the Paris Convention for protection of Industrial Property (“PC”), confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), the statute of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered). Thus, the Panel shares the Complainant’s view that the protection for the IKEA trademark goes far beyond furniture and goods similar to furniture. Bad faith has already been found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection with the trademark suggests opportunistic bad faith (LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303).
Furthermore, the Complainant advised the Respondent by letter that the unauthorized use of the IKEA trademark within the Domain Name violated the Complainant’s rights in said trademark, requesting the Respondent to voluntarily transfer the disputed Domain Name. The Respondent, however, did not react to this request.
Given the fame of the IKEA mark and also the activities of the Complainant in Russian Federation , it is inconceivable that the Respondent was unaware of the Complainant before registering <ikea37.com>. It can therefore reasonably be excluded beyond any doubt that the Respondent created a name, which happened to consist of the word “ikea” and the number “37”.
Moreover, the Panel is persuaded that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent does not adequately disclose the relationship, or lack thereof, between the Respondent and the Complainant and does therefore conveying the false impression that the Respondent is an authorized service center for the Complainant’s products. Further, there is no visible disclaimer that the website is not endorsed or sponsored by the Complainant to explain the non-existing relationship with the trademark holder. Instead there is a copyright text displayed at the bottom of the website. Rather, the Respondent in the opinion of the Panel is trying to impersonate the official website of the Complainant by adding the IKEA logo to the website.
In the similar case InterIKEA Systems B.V. v. Michael Huang, WIPO Case No. D2004-0908, the disputed domain name <wwwikea.com> was connected to a website offering furniture. In this case the UDRP panel held; “In view of the above, it can be concluded that the goal of the Respondent’s registration was to intentionally attract internet users interested in the Complainant’s website for the Respondent’s own commercial gain.” The same discussion applies in the current case.
As a result, the Panel finds that the disputed domain name <ikea37.com> was registered and is used by the Respondent in bad faith and considers the requirements of paragraph 4(a)(iii) of the Policy to be fulfilled.
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, <ikea37.com> be transferred to the Complainant.
Date: March 25, 2013