WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. Wang Shu
Case No. D2013-0385
1. The Parties
The Complainant is Inter IKEA Systems B.V. of Delft LN, Netherlands, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Wang Shu of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <ikeatips.com> (the “Domain Name”) is registered with Jiangsu Bangning Science & technology Co. Ltd. (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 confirming that the Respondent is listed as the registrant and providing the contact details.
On February 28, 2013, the Center sent an email communication to the parties in Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 March 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 2, 2013.
The Center appointed Karen Fong as the sole panelist in this matter on April 10, 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 one of the world’s leading furniture and home furnishing products’ business under the trade mark IKEA. Its business model is developed through a franchise system which provides for approved and licensed retailers to participate in the exclusive distribution system. There are 338 IKEA stores in 38 countries operating under Ikea franchise agreements. Between September 2011 and August 2012, there were 776 million visitors to Ikea stores. Annual turnover in 2012 was Euros 27.5 billion. More than 200 million copies of the Ikea catalog are printed each year.
The Complainant owns over 1,500 trade mark registrations for IKEA in more than 80 countries including China where the Respondent and the Registrar are based. The earliest trade mark registration in China dates back to April 15, 1983. The Complainant has 14 Ikea stores located in China. The Complainant also has over 300 domain names registered including trade mark IKEA. Ikea is listed by Interbrand as one of the Best Global Brands in 2012 and it is also on the Reputation Institutes list of The World’s Most Reputable Companies.
The Respondent registered the Domain Name on March 26, 2012. The Domain Name was connected to a website (the “Website”) offering products for sale via “www.taobao.com” which included both the Complainant’s products as well as third party products. The Domain Name at the time of writing this decision resolves to a pay-per-click site featuring various sponsored links including links to the Complainant’s website as well as other third party websites.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the IKEA trade marks, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement is Chinese.
The Complainant submits in Section IV. of the Complaint that the language of the proceeding should be English. The Complainant contends amongst other things that the Respondent did not respond to the Complainant’s cease and desist letter which was written in English. If the Respondent did not understand English, the natural thing to do would be to send a response saying that it did not understand the contents of the letter.
The Website appears different from the cached pages submitted with the Complaint. The Panel notes that the content of the Website currently is in the English language which indicates that the Respondent is familiar with the English language. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Further, the Respondent did not respond to the cease and desist letter, the reminder, the Complaint or the Center’s language of the proceeding email by the specified due dates. The Panel is of the view that the Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trade mark IKEA and also that IKEA is a well-known trade mark.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Complainant’s registered trade mark IKEA is the dominant portion of the Domain Name. The addition of the word “tips” after the word “ikea” does nothing to minimise the risk of confusion. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix “.com”. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
The Complainant alleges that it has not franchised, licensed, consented or otherwise authorized the Respondent to use its IKEA trade mark in the Domain Name or any other manner. The Respondent is not commonly known by the Domain Name nor does it have any trade marks for IKEA.
The consensus view under paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) says this:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to ‘corner the market’ in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.”
In this case, the Respondent is not an authorised franchisee or reseller. There is also nothing on the Website that adequately explains the relationship between the Complainant and the Respondent. It seems to this Panel that the content of the Website is intended to mislead Internet users that there is a connection between the Complainant and the Respondent. Therefore, the Panel finds the Oki Data principles for the rights or legitimate interests are not satisfied in this case.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
To succeed under the Policy, a Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s IKEA trade mark when it registered the Domain Name. The fact that the Domain Name incorporates the Complainant’s well-known trade mark in its entirety is in the Panel’s view, and in the circumstances of this case, evidence that the registration of the Domain Name was in bad faith.
The Panel also concludes that the actual use of the Domain Name was in bad faith. The use of the Complainant’s trade mark as the dominant part of the Domain Name is intended to capture Internet traffic from Internet users who are looking for the Complainant’s products. The Domain Name and the content of the Website are calculated to confuse Internet users that the Respondent is an authorised franchisee, licensee or somehow connected with the Complainant when this is not the case. This shows a clear intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s websites and the products sold on them were authorised or endorsed by the Complainant.
The Domain Name currently resolves to a pay-per-click site. This is also evidence of registration and use of the Domain Name in bad faith.
Both types of use are clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Name are in bad faith.
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 <ikeatips.com> be transferred to the Complainant.
Date: April 22, 2013