WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. Above.com Domain Privacy / Ni How
Case No. D2013-0387
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 Above.com Domain Privacy of Beaumaris, Victoria, Australia / Ni How of Nanjing, China.
2. The Domain Name and Registrar
The disputed domain name <insideikea.com> is registered with Above.com, Inc. (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 disputed domain name. On February 27, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed 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 7, 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 7, 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 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 Wilson Pinheiro Jabur as the sole panelist in this matter on April 11, 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 the IKEA trademark used in 338 IKEA furniture stores around the world in connection with a unique concept in relation to furniture and home furnishing products marketed under said trademark. The Complainant owns over 1500 trademark registrations for IKEA and IKEA variants in more than 80 countries around the world, covering goods and services in 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 (Annex 6 to the Complaint).
The disputed domain name <insideikea.com> was registered on April 4, 2012 (Annex 2 to the Complaint).
5. Parties’ Contentions
The Complainant states that the mark IKEA is an invented name, 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 used in connection with a unique concept in relation to furniture and home furnishing products marketed under the trademark IKEA, present in its 338 stores around the world (Annex 8 to the Complaint).
The global awareness of the IKEA trademark can be shown by the fact that, between September 1, 2011 and August 31, 2012, the Complainant received 776 million visitors in its stores, having reached an annual turnover in 2012 for all IKEA stores of EUR 27.5 billion. Moreover, over 200 million copies of the IKEA catalog were printed in 2012, in 62 editions and 29 languages (Annex 8 to the Complaint).
The Complainant also owns more than 300 domain names worldwide that incorporate the trademark IKEA, among which <ikea.com> (Annex 9 to the Complaint). In 2012, IKEA websites had over 1.1 billion visitors (Annex 8 to the Complaint).
The trademark IKEA is one of the most well-known trademarks in the world, having been included in the top 500 of the best known brands in the world by The Centre of Brand Analysis / Interbrand’s list of “Consumer Superbrands” (referred to by the Complainant as “Best Global Brands 2012” - Annex 12 to the Complaint) and ranked 35 on the Reputation Institute list of “The World’s Most Reputable Companies” (Annex 13 to the Complaint).
On January 17, 2012 the Complainant sent a cease and desist letter by email to the Respondent (Annex 11A to the Complaint) advising the Respondent that the unauthorized use of the IKEA trademark within the disputed domain name violated the Complainant’s rights in said trademark and requesting a voluntary transfer of the domain name and offering compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). Despite a reminder sent (Annex 11B to the Complaint), no response was received, what led to the filing of the Complaint.
According to the Complainant, the disputed domain name is confusingly similar to the Complainant’s notorious trademark since it incorporates the mark in its entirety and the addition of the term “inside” is not relevant and does not have any impact on the overall impression of the dominant part of the name IKEA, instantly recognizable as a world famous trademark.
In the Complainant’s point of view, the fame of the IKEA trademark motivated the Respondent to register the disputed domain name since 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 of the disputed domain name.
The Complainant further believes that its trademark risks being tarnished by being connected to a website owned by a third party. Also, by using the trademark as a dominant part of the disputed domain name, the Respondent exploits the goodwill and the image of the trademark, what may result in dilution and other damage for the Complainant’s trademark.
The Complainant further asserts that the Respondent has no rights or legitimate interests over the disputed domain name as there is no connection between the Respondent and the Complainant and no license or authorization of any kind has been given by the Complainant to the Respondent to use the trademark IKEA. In addition, the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.
Also, the Complainant states that it has not found any registered trademarks or trade names corresponding to the disputed domain name under the name of the Respondent. The Complainant further asserts that it found nothing that would suggest that the Respondent has been using IKEA in any other way that would give it any legitimate rights in the name, what in the Complainant’s view impedes the Respondent from claiming any rights established by common usage.
Furthermore, given that the Respondent is using the disputed domain name in connection with a parked pay-per-click website (Annex 10 to the Complaint), the Complainant asserts that the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain, but rather is misleadingly diverting consumers for its own commercial gain.
Moreover, according to the Complainant, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its websites, the Respondent has intentionally attempted for commercial purposes to attract Internet users to its website to the products and services available there, consequently tarnishing the trademark IKEA.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(i) of the Policy.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Complainant has established its rights in the trademark IKEA according to the list of registrations in Australia showing 48 registered trademarks incorporating IKEA in several classes (Annex 6 to the Complaint).
The Complainant’s mark is entirely reproduced in the disputed domain name and the addition of the term “inside”, in this Panel’s point of view, does not sufficiently distinguish the disputed domain name from the trademark. On the contrary, the disputed domain name possibly leads a certain portion of Internet users into thinking that the website relating to it might refer to the Complainant.
Previous cases have already concluded that “the linking element ‘inside’ does not sufficiently differentiate the disputed domain name from the Complainant’s trademark. In this context, the word ‘inside’ operates as a preposition and means ‘within CHANEL’. The combination points directly to the distinctive trademark CHANEL. There is nothing distinctive in the term ‘inside’ that would dispel confusion with the Complainant’s trademark CHANEL.” (Chanel, Inc. v. Above.com Domain Privacy/Transure Enterprise Ltd., Host Master, WIPO Case No. D2012-1065).
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s 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; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g. Banco Bradesco S/A v. Bradescoatualizacao.info Private Registrant, A Happy DreamHost Customer, WIPO Case No. D2010-2108). Nevertheless, the burden is still on the Complainant’s side to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that no authorization, license, permission or consent was granted for the use of IKEA in the disputed domain name.
Also, the absence of any registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the domain name, that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the indication of the absence of a legitimate interest.
Another element to be taken into account is the absence of any reply to the warning letter and respective reminder sent to the Respondent. Previous UDRP panels have already recognized that “[t]he fact that the Respondent was requested to transfer domain names consisting of famous brands at several occasions last year in other UDRP proceedings further suggests the absence of legitimate interests (see in particular Deutsche Telekom AG v. Spiral Matrix, WIPO Case No. D2005-1145; Dr Ing. h.c. F. Porsche AG v. Spiral Matrix et al., WIPO Case No. D2005-0890; Societe des Hotel Meridiens v. Spiral Matrix et al., WIPO Case No. D2005-1196; PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith can be found in the use of the domain name, with an intentional attempt to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, the use of the disputed domain name in connection with a parked pay-per-click website (Annex 10 to the Complaint) that provided links to “Office furniture”, “online store”, “Ikea Jobs”, “Living room furniture”, among others, characterizes the Respondent’s intent of commercial gain by misleadingly diverting the Complainant’s consumers or merely earning revenues from the advertisements and links that solely exist in view of the association with the Complainant’s trademark.
Such use, in this Panel’s view, constitutes an attempt to profit from the fame and goodwill associated with the Complainant’s notorious trademark, thus capitalizing on the fame of the Complainant’s IKEA mark by creating a likelihood of confusion in Internet users who likely believe that the disputed domain name is either connected, endorsed or authorized by the Complainant.
Also, as already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the disputed domain name.
For the same reasons as those stated above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy.
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 <insideikea.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: April 20, 2013