WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter Ikea Systems B.V. v. del del
Case No. D2013-1151
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 del del of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <ikeagifts.info> 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 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 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 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 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 of furniture and home furnishing products operating in a number of jurisdictions internationally. As set out in greater detail below, it has trade mark protection in a number of classes for the IKEA mark. It also has an extensive portfolio of domain names which incorporate the term “Ikea”.
The Respondent registered the disputed domain name <ikeagifts.info> on June 10, 2013. As at June 10, 2013, at least, the website operated by the Respondent at the disputed domain name contained pornographic content. The only postal address provided by the Respondent would appear to be spurious.
5. Parties’ Contentions
The Complainant asserts that;
(1) The disputed domain name is identical or confusingly 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 1,500 trade mark registrations covering more than 80 countries and 21 International Classes of goods and services for the mark IKEA and for variants which incorporate IKEA, including trade mark registrations in Hong Kong, China. 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> and <ikea.hk>. It says that its websites had over 1.1 billion visitors in 2012. The IKEA mark 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 mark.
The Complainant says that the disputed domain name is confusingly similar to its trade mark IKEA. It says that the addition of the generic Top-Level Domain (gTLD), namely “.info”, should be disregarded for the purposes of determining the confusing similarity between the trade mark and the disputed domain name. It also says that persons seeing the disputed domain name, even without being aware of the content, are likely to think that the disputed domain name is owned by the Complainant or is in some way connected with it. Lastly, it says that the addition of “gifts” to its IKEA mark does not detract from the overall impression and that the disputed domain name 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 term “Ikea” in such a way as to give the Respondent any rights or legitimate interests 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 has never had a business relationship with the Complainant and 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 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 and that the Respondent has only registered the disputed domain name because it was aware that the fame of the Complainant’s IKEA brand would drive traffic to its website.
The Complainant says that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services but simply as a means of generating traffic to its website.
(3) The disputed domain name was registered and is being used in bad faith.
The Complainant asserts that IKEA is a well-known trade mark with a substantial and widespread reputation globally. It says that IKEA is a purely invented word mark and is not a word which traders would legitimately choose unless they were seeking to create an impression of an association with the Complainant.
The Complainant says that, by linking the disputed domain name to a website containing pornographic content, the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its websites. It says that a number of UDRP panels have held that pornographic content may be an indicator of bad faith use. The Complainant says that the Respondent is “pornosquatting”, that is taking advantage of the Complainant’s well-known trade marks to attract Internet users to its pornographic, commercial website. It points out that the disputed domain name appears to have been registered with a false name and says that this is further evidence of 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 initial registrant of the disputed domain name seeking a voluntary transfer of the disputed domain name, albeit that the ownership of the disputed domain name then changed one day after the cease and desist letter had been sent.
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
The Complainant appended to its Complaint details of 21 trade marks of IKEA which are registered in Hong Kong, China. These suffice to give the Complainant rights in the name “Ikea” for the purpose of this element of the Policy.
When assessing confusing similarity, it is material to have regard to both the inherently distinctive character of the IKEA mark and its repute. The greater the repute and the distinctive character of the IKEA mark, the more weight the Panel will attach to the “ikea” element of the disputed domain name and the less significance is attached to the added descriptive word “gifts”, not least because this word does not serve to distinguish the disputed domain name in any way from the business of the Complainant.
On the basis of the evidence submitted by the Complainant, the IKEA mark is clearly well-known. Having regard to the repute and the distinctive character of the IKEA mark as well as to the lack of distinctive character in the additional component “gifts”, the Panel finds that the disputed domain name is confusingly similar to IKEA, being a mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel accepts the Complainant’s assertion that the Respondent does not appear to have any trade marks or other rights corresponding to the disputed domain name. The Respondent has had an opportunity to correct this assertion, if it regarded it as incorrect, by filing a Response to the Complaint but has not done so.
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 it is neither an authorized dealer in the Complainants’ products nor has ever had a business relationship with the Complainant.
As there is nothing in the provided record which would tend to suggest any right or legitimate interest on the part of the Respondent which might justify the registration of a domain name incorporating the mark IKEA and the Respondent has not sought to challenge the Complainant’s case, the Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to 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 a respondent has intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
No one looking at the content of the website at the disputed domain name would be confused into thinking that it was associated in any way with the Complainant. But the incorporation of a well-known mark into a domain name as, in effect, bait to attract visitors to a commercial website and boost traffic and thereby income can amount to bad faith use. The likelihood of confusion is caused by the choice of a domain name which correlates closely to a mark of the Complainant, rather than by the website content. The disputed domain name was registered relatively recently. It is reasonable to suppose that it was registered with this purpose in mind.
A full text search on WIPO UDRP panel decisions reveals a number of cases in which the panels have considered the approach to be adopted when a respondent used a third party trade mark for the purpose of attracting visitors to a website hosting pornographic content. Subject to findings that turn on specific factual nuances, such activity is usually found to amount to bad faith registration and use. In this Panel’s view, that is plainly the appropriate finding to make on these facts. The Panel has regard, in particular, to the distinctive character and repute of the mark in issue, the failure of the Respondent to respond to either the Complainant’s cease and desist letter or to the Complaint, the bizarre and evidently non-genuine postal address provided by the Respondent, the asserted change in ownership of the disputed domain name after the cease and desist letter was sent and the lack of any indication which points, even theoretically, to a possible justification for the Respondent’s conduct. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith. The fact that the website under the disputed domain name appears to have been subsequently deactivated does not preclude the Panel’s such finding.
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 <ikeagifts.info> be transferred to the Complainant.
Date: August 12, 2013