WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. WhoisGuard / shane paxton
Case No. D2013-0384
1. The Parties
The Complainant is Inter IKEA Systems B.V. of Delft LN, the Netherlands, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is WhoisGuard of Los Angeles, California, United States of America / shane paxton of Blanchard, Oklahoma, United States of America.
2. The Domain Name and Registrar
The Domain Name <ikeareview.net> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2013. On February 26, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 27, 2013, the Registrar 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 March 4, 2013 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 amendment to the Complaint on March 4, 2013.
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 the Respondent of the Complaint, and the proceedings commenced on March 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2013.
The Center appointed Teruo Doi as the sole panelist in this matter on April 2, 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 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 United States with the most senior dated as early as May 22, 1979 (registration number: 11187006) (Annex 6 to the Complaint). Further, there are currently 38 IKEA stores located in the United States which is the country where the Respondent resides.
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 according to 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 has also registered the trademark IKEA incorporated in more than 300 gTLDs and ccTLDs worldwide, among these; <ikea.com>, Annex 9 to the Complaint. Furthermore the mark is in possession of distinctiveness per se. The awareness of the trademark IKEA is considered in the whole European Community to be significant, including the online world. In fact, the Complainant’s websites had over 1.1 billion visitors in 2012.
5. Parties’ Contentions
The Complainant’s trademark IKEA is one of the most well-known trademarks in the world having inherent and acquired distinctiveness. Being a well-known trademark, the IKEA trademark is entitled to protection against any unauthorized uses regardless of the products and services for which the trademark is registered. In the light of Article 6bis of the Paris Convention for the Protection of Industrial Property, confirmed by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), protection of a well-known trademark should entitle the owner of such a trademark to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services, regardless of the list of the products and services for which the trademark is registered. Thus, the protection of the IKEA trademark goes far beyond furniture and goods similar to furniture.
The Complainant contends that the Domain Name is confusingly similar to its trademark, that the Respondent has no rights or legitimate interests in the Domain Name, and that the Respondent has registered and is using the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s 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:
(i) The 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 the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
The Panel notes that the Respondent has failed to respond to the Complaint within the stipulated time and, as such, does not contest the facts asserted by the Complainant in the Complaint.
A. Identical or Confusingly Similar
The Domain Name registered by the Respondent consists of a combination of the Complainant’s trademark IKEA, followed by the words “review.net”. In view of the distinctive quality of the word “Ikea”, the addition of these descriptive and non-distinctive words after the word “Ikea” does not affect the Panel’s finding that the 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.
Therefore, the Panel finds that the first element of the Policy has been met.
B. Rights or Legitimate Interests
The Complainant submits that, in registering the Domain Name, the Respondent did not have any rights or legitimate interests in the Domain Name. The Complainant contended no authorization or license had been given to the Respondent, that the Respondent is not known by the Domain Name, and that by linking the website at the Domain Name to sell goods through Amazon.com, that the Respondent was not using the Domain Name for a bona fide purpose. The Respondent did not dispute the Complainant’s prima facie case.
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 Domain Name consisting of the word combined with a
set of descriptive words is a clear indication of the Respondent’s bad faith in obtaining the Domain Name.
Further, as the Complainant has provided evidence that the Respondent uses the website at the Domain Name to link to Amazon.com, presumably for commercial gain, the Panel finds that the Respondent is using the Domain Name in bad faith.
The Panel finds that the third element of the Policy has been met.
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, <ikeareview.net> be transferred to the Complainant.
Date: April 18, 2013