WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. Personal use / Edvinas Karaulnovas
Case No. D2013-0282
1. The Parties
The Complainant is Inter IKEA Systems B.V. of Delft, the Netherlands, represented by Studio Barbero, Italy.
The Respondent is Personal use of Salcininkai, Lithuania / Edvinas Karaulnovas of Vilnius, Lithuania.
2. The Domain Name and Registrar
The disputed domain name <ikeabaldai.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2013. On February 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent “Personal use” 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 February 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2013. The Response was filed with the Center on March 14, 2013. The Response was filed by Mr. Edvinas Karaulnovas who identified himself as being the Respondent in this case.
The Center appointed Marcin Krajewski as the sole panelist in this matter on April 3, 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.
4. Factual Background
The Complainant is the owner of numerous trademarks used in connection with the well known IKEA furniture brands. In particular, the Complainant holds:
- Community Trademark Registration No. 001672997 for the nominative trademark consisting of the word “IKEA” of April 3, 2002, in class 35;
- Community Trademark Registration No. 00109652 for the nominative trademark consisting of the word “IKEA” of April 1, 1996, in classes 2, 8, 11, 16, 18, 20, 21, 24, 25, 27, 28, 29, 30, 31, 35, 36, 39, 41, and 42;
- Community Trademark Registration No. 000705343 for the nominative trademark consisting of the word “IKEA” of May 4, 2004, in classes 9, 35, and 38;
- International Registration No. 926155 for the figurative trademark including the word “IKEA” of April 24, 2007, in classes 16, 20, 35, and 43.
The Complainant’s business model is developed through a franchise system in which only approved and licensed retailers are authorized to participate in the distribution system and make use of the IKEA trademark. Today, there are 338 IKEA stores in 38 countries operating under the Complainant’s franchise agreements. The Complainant’s brand has been repeatedly recognized as one of the top one hundred most valuable brands in the world. The Complainant has registered the term “ikea” in over 200 gTLDs and ccTLDs, including <ikea.com>, which resolves to the Complainant’s official website.
The Respondent registered the disputed domain name on February 18, 2010. Since its registration it had been redirected to the website “www.ikeabaldai.wordpress.com”. This website was used by the Respondent to resell in Lithuania original IKEA products which were bought from an authorized IKEA distributor in Poland. The mentioned website published IKEA trademarks, images of IKEA products and links to the Complainant’s official website in Polish.
As the Complainant neither authorized the Respondent to resell IKEA products nor to register the disputed domain name, it instructed a Lithuanian IP Law Firm to contact directly the Respondent in order i.a. to reclaim the disputed domain name. The first cease and desist letter was sent on August 31, 2012. In answer to that letter the Respondent declared that he had removed the IKEA trademarks and IKEA catalogue cover from his website but refused to transfer the disputed domain name. In response to a second cease and desist letter, the Respondent stated that immediately from the date of that answer (i.e. from November 8, 2012) he published a disclaimer on his website informing users that UAB “Import & Export” was not an authorized distributor of IKEA.
Subsequently, on December 18, 2012, the Respondent sent an e-mail offering transfer of the disputed domain name in return for LTL 40,784.77, which corresponds to about EUR 11,500.00. The Respondent stated that the mentioned amount would cover fees related to the registration and administration of the disputed domain name as well as costs of advertising activity performed in order to promote his website.
In the meanwhile, the Respondent redirected the disputed domain name to his website “www.besta.lt”, promoting the Respondent’s sale of IKEA products and publishing a cover of an IKEA catalogue, together with a link to the Complainant’s original catalogue in Polish.
The last cease and desist letter, sent by the Complainant’s representative on January 14, 2013, remained materially unanswered.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are present in this case. In particular the Complainant claims that:
(i) The disputed domain name is confusingly similar to the trademarks in which the Complainant has rights
The Complainant claims that the addition of generic words to a trademark in domain names is insufficient to negate confusing similarity between a trademark and a domain name. In the present case the addition of the generic term “baldai”, the Lithuanian word for “furniture”, to the IKEA trademark in the disputed domain name is particularly misleading, insofar as it suggests that the Respondent is an authorized on-line distribution partner for goods sold by the Complainant. The Complainant also contends that the addition of the top-level domain “.com” is irrelevant in determining the confusing similarity between IKEA trademarks and the disputed domain name.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name
The Complainant states that no license or authorization of any other kind has been given by the Complainant to the Respondent to use the IKEA trademarks. The Respondent is not commonly known by the disputed domain name or by a name corresponding to the said domain name as an individual, business, or other organization.
The Complainant contends that the Respondent’s use of the disputed domain name neither can be considered a bona fide offering of goods and services nor legitimate noncommercial or fair use. While the Respondent may be entitled to identify genuine IKEA products that he resells, it is not legitimate to do so under a domain name that does not correspond to his name but fully incorporates the Complainant’s well-known trademark.
The Complainant claims that the Respondent’s redirection of the disputed domain name to a website publishing the Complainant’s trademarks and links to IKEA catalogues, together with the lack of an accurate and prominent disclaimer, suggest to Internet users that the Respondent’s website is an official website of the Complainant dedicated to Lithuanian consumers. It is therefore likely that Internet users looking for the Complainant would be misled and could believe that the Respondent’s website is associated with, originated at or sponsored by the Complainant. This risk of confusion is not prevented by the adoption of a disclaimer informing that the Respondent’s company is not affiliated with the Complainant, because it is located at the bottom of the pages and Internet users get to read it only after having scrolled the corresponding page. Furthermore, the said disclaimer was not published on the Respondent’s website until receipt of the Complainant’s cease and desist letter.
Finally, the Complainant concludes that the Respondent registered the disputed domain name with the intention to divert to his site Internet traffic intended for the Complainant for the purpose of promoting his own commercial activity. This cannot be considered legitimate noncommercial or fair use of the disputed domain name.
(iii) The disputed domain name was registered and used in bad faith
In support of this view, the Complainant contends that it is inconceivable that Respondent was unaware of the existence of IKEA trademarks at the time of registration of the disputed domain name. Moreover, the well-known character of a trademark with which a domain name is confusingly similar is, in itself, evidence of bad faith registration. The Respondent’s publication of the IKEA trademarks and catalogue on the website to which the disputed domain name resolves demonstrates that the Respondent was actually aware of the Complainant’s trademark and that his primary motive in relation to the registration and use of the disputed domain name was to capitalize on or otherwise take advantage of the Complainant's trademark rights.
The Complainant claims that it is apparent that the Respondent registered the disputed domain name in order to intentionally attract, for commercial gain, Internet users to his website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website by the Complainant, which meets the criteria set out in paragraph 4(b)(iv) of the Policy.
Moreover, the Complainant claims that the amount demanded by the Respondent as a remuneration for a voluntary transfer of the disputed domain name is clearly in excess of out-of-pocket costs directly related to the said domain name. Therefore, the circumstances of the present case indicate that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant for valuable consideration, which meets the criteria set out in paragraph 4(b)(i) of the Policy.
The Respondent agrees that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights. However, the Respondent claims to have a legitimate interest in the use of the disputed domain name. Moreover, the Respondent denies that the said domain name was registered and used in bad faith.
The Respondent states that a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in a domain name if the use meets requirements determined in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The said requirements are met in the present case. In particular, by using the disputed domain name the Respondent actually offers IKEA products, using the domain name only to sell the original trademarked goods, and his website accurately discloses the Respondent’s relationship with the trademark owner. Moreover, the Respondent is not trying to corner the market in all domain names.
Furthermore, the Respondent claims that the IKEA trademark is not well-known and/or reputed in the Republic of Lithuania, and there has never been any of the Complainant’s stores in that country. According to the Respondent, it prevents finding that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on or otherwise take advantage of the Complainant’s trademark rights. The Respondent uses the disputed domain name only because it really resells IKEA products and does not intend to create any confusion with the Complainant’s trademark or to take advantage of such confusion as to the source of his website or its affiliation.
The Respondent does not agree with the Complainant’s statement that the Respondent seeks to divert Internet users away from the Complainant’s legitimate website for his own benefit and commercial purpose. The Respondent claims always having a link on his website directing to the Complainant’s official Polish website.
Finally, the Respondent does not agree with the Complainant’s claim that the disputed domain name was registered for the purpose of selling it to the Complainant for valuable consideration in excess of documented out-of-pocket costs. The Respondent registered the disputed domain name in order to actually use it and his offer to transfer it for remuneration was expressly solicited by the Complainant.
6. Discussion and Findings
A. Identification of Respondent
The Complainant named “Personal use” as the Respondent. However, at the same time, the Complaint mentioned a series of Complainant’s cease and desist letters which were addressed to Mr. Edvinas Karaulnovas acting as a director of UAB Import & Export. It was also claimed by the Complainant that in answering to the first of these letters Mr. Karaulnovas confirmed that the disputed domain name was owned by his company UAB Import & Export. The Registrar, in reply to the Center’s request, confirmed that Private use was listed as the registrant of the disputed domain name. However, the Response was filed by Mr. Karaulnovas who named himself as the Respondent in this proceeding.
Considering that Mr. Karaulnovas has clearly full control over the disputed domain name and that it is highly unlikely for “Personal use” to be a separate or unrelated entity in the circumstances, this Panel finds it appropriate to treat Mr. Edvinas Karaulnovas as the substantive Respondent in this proceedings and references herein to “the Respondent” are to be construed accordingly. However, similar to the practice many most of the UDRP panels in cases involving a privacy or proxy registration service (despite differences between them and the present case, see further paragraph 4.9 of the WIPO Overview of the WIPO Panelist Views on selected UDRP Questions (“WIPO Overview 2.0)), the Panel finds it reasonable to record in this decision both the name of the registrant named in the Complaint and Registrar’s records as well as the name of the true owner of the disputed domain name as determined by this Panel.
Moreover, this Panel finds it unnecessary to further investigate the mutual relations between Personal use and Mr. Edvinas Karaulnovas. As it was convincingly argued by the panel in Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2003-0755: “There is a possible argument that the very question of who is the party against whom the proceedings have been brought is misconceived and imports into proceedings under the Policy concepts from inter partes court proceedings that may be unhelpful. If correct, what is important here is that proceedings are brought in respect of the disputed domain name and that the procedures are then followed to ensure that the person or persons who are reasonably identifiable as having an interest in that name are properly notified.” This Panel has no doubts that the last requirement is met in the present case.
B. The Merits
Paragraph 4(a) of the Policy provides that the following facts must be established in order to grant the Complainant the remedy requested:
(1) 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
(2) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) that the disputed domain name has been registered and is being used in bad faith.
(i) Identical or Confusingly Similar
The most distinctive part of the disputed domain name is “ikea”, which is identical to the Complainant’s trademarks. The Panel agrees with the Complainant’s argument that the addition of the generic term “baldai” is not relevant. Regarding the fact that the Complainant’s core business is selling furniture, using the Lithuanian word “baldai”, which means “furniture” in English, can even be regarded as increasing the risk of confusion.
For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the suffix “.com” usually is disregarded as being simply a necessary component of a generic top level domain.
Accordingly, the Panel finds that the Complaint has satisfied paragraph 4(a)(i) of the Policy.
(ii) Rights or Legitimate Interests
The crucial point of this case seems to be whether the Respondent has rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances establishing a respondent’s rights or legitimate interests in a domain name, including the following:
“(i) before any notice to you of the dispute, your 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”.
Following the view of most UDRP panels this Panel finds it appropriate to determine the question whether the Respondent may be found to have a right or legitimate interest in using the Complainant’s mark in the disputed domain name under the criteria articulated in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The panel in Oki Data concluded that the use of a manufacturer’s trademark as a domain name by a reseller could be deemed a “bona fide offering of goods or services” only if the following conditions are satisfied:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods;
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
In the opinion of this Panel the Oki Data criteria are appropriate even in cases where, as in the present case, the respondent is not an authorized dealer, so long as the respondent operates a business genuinely revolving around the trademark owner’s goods or services. See Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447; Daimler AG v. William Wood, WIPO Case No. D2008-1712; IVECO S.p.A. v. Zeppelin Trading Company Limited, WIPO Case No. D2008-1725; ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc., WIPO Case No. D2008-0936; and Magma Products Inc. v. Herb Halling, WIPO Case No. D2007-0995; Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227.
In the present case it seems that three of the mentioned requirements are satisfied. However, there are doubts to the Panel as to whether the third condition, regarding the accurate disclosure of the Respondent’s relationship with the trademark owner, was also met.
As it was stated above, the disclaimer on the Respondent’s website, informing that the Respondent was not an authorized distributor of IKEA, was inserted only after Respondent’s receiving the second cease and desist letter. It is crucial because Paragraph 4(c) of the Policy, in order to establish rights or legitimate interests in a domain name, requires bona fide offering of goods “before any notice to you of the dispute”. In Corinthians Licenciamentos LTDA v. David Sallen, Sallen Enterprises, and J. D. Sallen Enterprises, WIPO Case No. D2000-0461, after careful consideration of the issue, the panel concluded that “in the Policy a dispute is previous to the proceeding … [it] is not equal to “proceeding”, nor to ‘complainant's action to initiate proceedings'.” Rather, “dispute” means the controversy between the parties, including the controversy which took place before filing the Complaint. This Panel concurs with this opinion. It means that the disclaimer in the present case was not inserted in the Respondent’s website before any notice of the dispute but following such notice.
Moreover, the Panel does not agree with the Respondent’s claim that it was sufficient to place his contact details on the website in order to satisfy the requirement of accurate disclosure of the Respondent’s relationship with the trademark owner. Consequently, the Panel finds that Oki Data criteria were not fulfilled in the present case.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
(iii) Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.
Paragraph 4(b) of the Policy gives non-exhaustive illustrations of bad faith registration and use, including the following:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.”
There can be no doubt that the Respondent had the Complainant’s rights in mind when registering the disputed domain name, given the Respondent’s presence in the furniture market. The IKEA trademarks are long-established, widely known and distinctive.
It is equally clear that the disputed domain name was also used in bad faith. Considering the lack of a proper disclaimer, the Panel agrees that the Respondent was intentionally diverting Internet users to its website by exploiting the confusing similarity between the disputed domain name and the Complainant’s marks. Further, the Panel finds that the Respondent was engaging in this conduct in order to reap commercial gain.
Accordingly, the Panel finds that the Complaint has satisfied paragraph 4(a)(iii) of the Policy.
Only incidentally may it be noted that the Panel does not agree with the Complainant’s assertions that the circumstances mentioned in Paragraph 4(b)(i) of the Policy are also present in the current case. The Panel considers offer to sell the disputed domain name to the Complainant was solicited by the Complainant and other facts of the case clearly indicate that the said domain name was registered in order to actually use it, rather than to transfer it to the Complainant or any other party.
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 <ikeabaldai.com> be transferred to the Complainant.
Date: April 17, 2013