World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Inter IKEA Systems B.V. v. 2ndTo None Security LLC

Case No. D2013-0315

1. The Parties

The Complainant is Inter IKEA Systems B.V. of Delft, Netherlands, represented by Melbourne IT Digital Brand Services, Sweden.

The Respondent is 2nd To None Security LLC of Butler, Pennsylvania, United States of America.

2. The Domain Name and Registrar

The disputed domain name <ikeaway.net> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2013. On February 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15, 2013, 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.

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 Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for the 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 25, 2013. In accordance with the Rules, paragraph 5(a),the due date for Response was March 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2012.

The Center appointed Teruo Doi as the sole panelist in this matter on March 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.

4. Factual Background

The Complainant is engaged in the business of operating a franchise system under its trademark IKEA to have approved and licensed retailers engage in the sale of furniture and home furnishing products in accordance with the terms and conditions of their franchise agreements, with the exception of the IKEA Delft store in the Netherlands which is owned and directly operated by the Complainant. According to the facts stated by the Complainant, there are 338 IKEA stores in 38 countries operating under IKEA franchise agreements.

The Complainant owns a number of trademark registrations for IKEA and IKEA variants in more than 80 countries around the world for goods and services in a number of 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. In the United States, the Complainant owns several trademark registrations, earliest one dating May 22, 1979 (Registration No. 11188706), and there are currently 38 stores operating under IKEA franchise agreements.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <ikeaway.net> consists of the word “IKEA” which is identical to the registered trademark of the Complainant as a trademark and domain name in numerous countries of the world, including the United States. The Domain Name is confusingly similar to the Complainant’s world famous trademark IKEA. Furthermore, 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 a trademark identifying the Complainant as a source of origin. The addition of the term “way” is not distinctive and does not have any impact on the overall impression of the dominant part of the disputed domain name, “ikea”, instantly recognizable as a world famous trademark.

The Respondent has thus intentionally attempted for commercial purpose to attract Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of the Respondent’s websites or of the products offered on the Respondent’s websites. This is evidence of bad faith registration and use falling under the Policy, paragraph 4(b).

The Complainant requests transfer of the Domain name to it.

B. Respondent

The Respondent did not submit a formal response, and did not forward any substantive submissions in reply to the Complainant’ contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove that each of the following elements exists in seeking the transfer of the Domain Name at issue.

(i) 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;

(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.

A. Identical or Confusingly Similar

The disputed domain name registered by the Respondent consists of a combination of the Complainant’s trademark IKEA, followed by the words “way.net”. In view of the distinctive quality of the word “ikea”, the addition of these descriptive or non-distinctive words after the word “ikea” does not affect the finding that the disputed domain name is identical or confusingly similar to the Complainant’s trademark IKEA, which has been registered by the Complainant as a trademark and domain name in numerous countries of the world, including the United States.

B. Rights or Legitimate Interests

The Complainant submits that, in registering the disputed domain name, the Respondent did not have any right or legitimate interest in the disputed domain name. Hence, the Respondent obtained registration of the disputed domain name combined with a set of descriptive words such as “way.net”.

The Panel finds that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name, which showing has remained unrebuttable by the Respondent.

The Panel finds that the second element of the Policy has been met.

C. Registered and Used in Bad Faith

In view of the distinctive quality possessed by the word “ikea” which is the Complainant’s well-known trademark, the Respondent’s registration of the disputed domain name consisting of this word combined with a set of descriptive words is a clear indication of the Respondent’s bad faith in obtaining the disputed domain name registration at issue.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name, <ikeaway.net>, be transferred to the Complainant.

Teruo Doi
Sole Panelist
Date: April 15, 2013

 

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