WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. Domains By Proxy, LLC / mustafa Yildiz
Case No. D2013-1146
1. The Parties
The Complainant is Inter IKEA Systems B.V. of Delft, the Netherlands, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Mustafa Yildiz of Izmir, Turkey.
2. The Domain Name and Registrar
The disputed domain name <ikea35.com> 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 June 27, 2013. On June 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 28, 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 July 1, 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 July 1, 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 July 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2013.
The Center appointed Antony Gold as the sole panelist in this matter on July 29, 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 a retailer and franchisor operating in a number of jurisdictions. As set out in greater detail below, it has trade mark protection in a number of classes for the mark IKEA as well as for IKEA variants. It also has an extensive portfolio of domain names which incorporate the term “ikea”.
The Respondent is based in the United States and Turkey. The disputed domain name <ikea35.com> was registered on December 21, 2012. The website operated by the Respondent at the disputed domain name sells a selection of the Complainant’s products. The language of the website is Turkish.
Because, for reasons which are explained below, the content of the website operated by the Respondent is relevant to the issues which require determination, the Panel has looked at the live version of the website in addition to the screen print of the home page submitted by the Complainant. It has also made limited use of an online translation service to gain a basic understanding of the meaning of the website content. Such services cannot be relied upon for an accurate translation into the English language but are sufficient for present purposes.
The home page contains what appears to be a photograph of part of one of the Complainant’s stores, including the mustard yellow and blue colours which are used by the Complainant at, for example, its website at “www.ikea.com”. The home page also contains a map of Turkey, in white outline on mustard yellow background with wording in blue which includes the words (in Turkish) “Ikea now”. Much of the remainder of the home page is occupied with information about the availability of product online and in store and with explanations about product promotions.
Underneath the image of the Ikea store is a series of buttons. The third is entitled (in Turkish) “About”. Clicking this button takes the visitor through to a photograph of a person said to be the founder of the website at the disputed domain name <ikea35.com> who is described as having worked at an Ikea furniture store in Turkey for six years. The translation service used by the Panel says that the remaining wording accompanying the photograph means “IKEA furniture store system acknowledge in a good way. Izmir and Aegean Region IKEA furniture store customers I help make shopping easy way”. A proper translation would presumably yield wording which is appreciably more elegant than this.
A fifth button entitled “Ikea Tarihçesi” (Ikea History) provides access to a history of Ikea.
5. Parties’ Contentions
The Complainant asserts that;
(1) The disputed domain name is identical or similar to a trademark in which it has rights.
The Complainant says that the name “ikea” is an invented word, being an acronym comprising the initials of the founder’s name, the farm where he grew up and his home parish.
In support of its claim to have rights in IKEA, the Complainant says it has more than 1500 trade mark registrations covering more than 80 countries and 21 International Classes of goods and services for the trade mark IKEA and for variants which incorporate IKEA. These registrations also include several marks in the United States of America, where the Complainant says the Respondent is based and where there are also 35 franchised stores. The Complainant says that, in the 12 month period commencing September 1, 2011, 776 million visitors “embarked on the IKEA shopping experience”. It says that 200 million copies of its IKEA catalogue are printed every year in 62 editions and 29 languages.
The Complainant has also registered over 300 domain names which incorporate the term “ikea”, including <ikea.com>. It says that its websites had over 1.1 billion visitors in 2012. The brand IKEA features in lists of very well-known and reputable brands. As a result of all of the above, the Complainant says it has extensive trade mark rights which give it a broad scope of protection against misuse of its brand.
The Complainant says that the disputed domain name is confusingly similar to its trade marks for IKEA. It says that the addition of the generic Top-Level domain “.com” should be disregarded for the purposes of determining the confusing similarity between the trade mark and the disputed domain name. It says that persons seeing the disputed domain name, even without being aware of the content of the website at the disputed domain name, are likely to think that it is in some way connected with the Complainant. Lastly, it says that the addition of “35” to its IKEA mark does not detract from the overall impression created by the disputed domain name and that it must therefore be considered to be confusingly similar to the Complainant’s trade mark.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name
The Complainant says that the Respondent does not have any trade marks or trade names corresponding to the disputed domain name, nor is there any other indication that the Respondent has been using the word “ikea” in such a way as to give the Respondent any legitimate rights in the disputed domain name. It says that no license or other authorisation has been given by the Complainant to the Respondent to use any of its IKEA trade marks. It explains that the Respondent is not an authorised dealer of the Complainant’s products and has never had a business relationship with the Complainant. It contends that there is no other known indication that the Respondent uses the name “ikea” as a company name or has any other legal right to the name “ikea”.
The Complainant says that its reputation in the IKEA trade marks is such that it is highly unlikely that the Respondent would not have known of the Complainant’s rights in the IKEA marks, or some of them, as at the time of registration of the disputed domain name.
The Complainant says that the Respondent is not using the dispute domain name in connection with a bona fide offering of goods and services. Rather, it is using the disputed domain name to generate traffic to its own website which offers for sale products of the Complainant. The Complainant says that it is highly likely that this will confuse Internet users to the website into thinking that the Respondent’s website is owned by, or sponsored by, the Complainant.
In this respect, the Complainant says that Respondent’s use of the disputed domain name would not meet the criteria which were applied in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (<okidataparts.com>). In particular, it says that all the Oki Data criteria need to be satisfied for the Respondent to be found to have a legitimate interest in respect of the disputed domain name. The Complainant says that the Respondent does not do so because one of the criteria applied in that decision was that the Respondent should disclose its relationship with the trade mark owner (usually the Complainant). The Complainant says that the Respondent has not done so in this case and has thereby created a false impression that the Respondent is an authorized service center for the Complainant’s products. Specifically, the Complainant says that there is no visible disclaimer that the website is not endorsed or sponsored by the Complainant. Moreover, it asserts that the Respondent is trying to impersonate the official website of the Complainant by adding the IKEA logo to its website.
The Complainant also alludes to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). The WIPO Overview 2.0 is dealt with in greater detail below.
(3) The disputed domain name was registered and is being used in bad faith.
The Complainant says that by connecting the disputed domain name to a web site offering products sold by franchisees of the Complainant for sale via its own reseller website the Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship or affiliation or endorsement of its website.
The Complainant says that it is highly improbable that, as the Complainant has been carrying on business under the IKEA trade mark for several decades, the Respondent was unaware of the Complainant’s rights in its trade marks. The Complainant says that the Respondent’s use of the disputed domain name does not comprise a legitimate noncommercial or fair use of the disputed domain name but is intentionally diverting Internet users for his own commercial gain. Accordingly, the Respondent has both registered and is using the disputed domain name in bad faith.
The Complainant draws attention to a number of previous UDRP decisions which have been brought by it in respect of domain names which incorporate its IKEA trade mark, in all of which it has been successful. The Complainant also says that it never had any response to a letter sent by it to the Respondent seeking a voluntary transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint;
(i) The disputed 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 with respect to 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
Notwithstanding the apparently extensive trade mark portfolio of marks it claims that it owns, the Complainant has only appended to the Complaint a single United States trade mark. It would have been helpful to have seen evidence of, at least, a trade mark in Turkey in view of the content of the website at <ikea35.com>. Nonetheless, the bar is set low in terms of the rights the Complainant is required to have in order satisfy this element of the Policy. The United States trade mark coupled with the evidence the Complainant has submitted of its repute and the scale of its business transacted through the IKEA trade mark is sufficient to establish that the Complainant has rights in the trade mark IKEA.
As the Complainant says, it is accepted and appropriate practice to disregard the “.com” suffix for the purpose of assessing similarity. The Panel accordingly needs to determine whether <ikea35> is confusingly similar to the Complainant’s trade mark IKEA.
When assessing similarity, it is material to have regard to the inherently distinctive character of the IKEA trade mark. Whilst the word “ikea” might conceivably have some descriptive meaning in one or more of the many jurisdictions in which the Complainant operates, it has no such meaning in the English language applicable to these proceedings, nor is there anything to suggest that it has any meaning in Turkish. It is also appropriate to take into account the repute of the IKEA trade mark; the greater the repute and the distinctive character of the IKEA trade mark, the more weight is attached to the “ikea” element of the disputed domain name and the less significance is attached to “35”. Moreover, the “35” element of the disputed domain name seems to have no particular meaning in a commercial or trading context and does not serve to distinguish the disputed domain name in any way from the trade mark of the Complainant.
Having regard to the repute of the IKEA mark and its distinctive character together with the lack of distinctive character in the additional component “35”, the Panel finds that the disputed domain name is confusingly similar to IKEA, being a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
In the absence of any contrary submission by the Respondent, the Panel accepts the Complainant’s assertion that the Respondent does not have any trademarks or other rights corresponding to the disputed domain name.
The Panel also accepts, for the same reason, the Complainant’s claim that it has not granted a license or given any other authorization to the Respondent in respect of its IKEA trade mark and that the Respondent is neither an authorized dealer in the Complainants’ products nor has ever had a business relationship with the Complainant.
Notwithstanding these findings, there are, as the Complainant has pointed out, circumstances in which an authorized dealer and, conceivably, a non-authorized dealer, in a Complainant’s products can be found to have a right or legitimate interest in registering a domain name which incorporates a trade mark of the complainant. There have been many UDRP decisions which have considered this issue and the position is helpfully summarized in the paragraph 2.3 of WIPO Overview 2.0:
“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.
“However, some panels take the position (while subscribing to the consensus view) that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant's trademark (i.e., <trademark.tld>). A small number of panels have taken the view that, without express authority of the relevant trademark holder, a right to resell or distribute that trademark holder's products does not create a right to use a domain name that is identical, confusingly similar, or otherwise wholly incorporates the relevant trademark.”
Of the various requirements set out in the Oki Data decision which the Respondent is required to fulfill in order to establish a legitimate interest in registering a domain name incorporating the Complainant’s trade mark IKEA, the problematic issue is whether the Respondent’s website can be said to accurately and prominently describe the Respondent’s relationship with the Complainant. As indicated by the WIPO Overview 2.0, this is a necessary but not sufficient requirement in order to demonstrate a legitimate interest in the disputed domain name.
Exactly what is required in order to accurately and prominently disclose a registrant’s relationship with a trade mark owner has been addressed in a number of UDRP decisions and is, to some degree, fact-specific. However, a brief reference to five decisions which have considered this issue provide helpful guidance on the approach generally taken by UDRP Panels.
In National Association for Stock Car Racing, Inc v.Racing Connection/The Racin’ Connection, Inc, WIPO Case No. D2007-1524 (<nascartours,com>), the home page of the respondent contained a detailed and prominent disclaimer of a connection with the complainant’s Nascar business which the panel found helped establish the Respondent’s legitimate interest in using the domain name.
In Volvo Trademark Holding AB v.Auto Shivuk, WIPO Case No. D2005-0447 (<volvo-auto-body-parts-online.com>), the panel found that a legitimate interest had been established by the respondent without a disclaimer. However, this was because “There are no facts which would suggest that the Respondent intentionally trades on the fame of Complainant and intentionally has adopted website presentation so as to benefit from the goodwill of the VOLVO mark. The Respondent does not use the Logo of Complainant or otherwise improperly suggests that it is the trademark owner or that the website is the official site”.
In Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481 (<porsche-buy.com> and <porschebuy.com>), where the complainant was also unsuccessful, a factor in the panel’s finding on legitimate interest was that “Respondent does disclose on the entry websites by a disclaimer that he is neither affiliated to nor authorised by the Complainant itself. Further, the Respondent does not use the distinctive characters nor the logo nor the drawing of the “PORSCHE” trademark but uses a different calligraphic presentation. Therefore Internet users are not misled to assume that the Respondent’s websites are run by the trademark owner itself, an affiliate or an official sales agent of the Complainant”.
In Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946 (<discount-marlboro-cigarettes.com>), the panel ordered a transfer, having observed that “the presentation of Respondent’s website is likely to mislead Internauts into believing that the site is operated or endorsed by or affiliated with the Complainant.” Use of the complainant’s logos coupled with the lack of any disclaimer “create a strong impression that the site is an official site of the Complainant”.
Lastly, the panel in Daimler AG v.William Wood, WIPO Case No. D2008-1712 (<mercedesshop.com>) found for the complainant and commented that “the use of a disclaimer in small print at the bottom of the home page and not always displayable when the page is loaded is not enough to overcome the likelihood of confusion. Moreover, the text of the disclaimer falls short of disclaiming any type of relationship with or endorsement by the Complainant”.
In this case, the Respondent (or, perhaps more accurately, the Turkish operator of the website) might not be deliberately attempting to masquerade as the Complainant. As explained above, the site includes an “About” section which explains that the operator of the website is a former employee of the Complainant or one of its franchisees. But against this needs to be put the fact that the home page of the website at the disputed domain name is heavily branded with the Complainant’s IKEA trade mark, including a large image of what would appear to be one of its storefronts in the colours associated with the Complainant. Moreover, there is nothing on the home page to indicate that the website is run by a non-authorized distributor of the Complainant’s product - specifically, there is no express disclaimer of a connection with the Complainant. Even allowing for substantial vagaries in the accuracy of the translation service used by the Panel, the statement about the founder of the <ikea35.com> website which can be found under the “About” section of the website at the disputed domain name does not clearly or unambiguously explain that the website is operated by a non-authorized dealer in the Complainant’s products. The absence of a prominent disclaimer on the home page of the website at the disputed domain name means that visitors to the website who have been attracted to it by the resonances with the Complainant created by the Respondent’s choice of the disputed domain name could easily be confused by the home page into thinking that there is a commercial connection with the Complainant. Whilst any initial confusion might sometimes be partially corrected by a more detailed examination of the “About ” section of the website other aspects of the website (such as the section providing a history of Ikea) are likely to perpetuate the impression of an authorised link with the Complainant.
The Panel accordingly finds that the form of the website operated at the disputed domain name is such that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
One of the grounds on which bad faith registration and use can be founded is paragraph 4(b)(iv) of the Policy which provides that there is evidence of bad faith registration and use where the Respondent has intentionally attempted to attract or commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship or affiliation or endorsement of its website.
The registration and use of the disputed domain name by the Respondent can only have been to attract the business of actual or prospective customers of the Complainant. As outlined above, the form of the website at the disputed domain name does not go far enough to ensure that confusion is avoided. Specifically, the impression of some form of affiliation with the Complainant created by the home page, including the lack of a disclaimer, is not negated by the rather vague information provided by the Respondent under the “About” section of the website.
Accordingly, the Panel finds that the disputed domain name has been registered and is being used 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 disputed domain name <ikea35.com> be transferred to the Complainant.
Date: August 12, 2013