WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. Above.com Domain Privacy / Host Master, Transure Enterprise Ltd
Case No. D2013-1152
1. The Parties
The Complainant is Inter IKEA Systems B.V. of Delft, Netherlands, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondents are Above.com Domain Privacy of Victoria, Australia and Host Master, Transure Enterprise Ltd of Tortola, Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <ikea-it.com> (the “Domain Name”) 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 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 June 28, 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 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2013.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 20, 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, a limited liability company registered in Delft, Netherlands, is a part of the privately held Swedish-Dutch IKEA Group consisting of both nonprofit foundations and for-profit companies. The IKEA Group designs and manufactures furniture, home furnishings, and related products. These are distributed through 338 IKEA stores located in 38 countries, operating under franchise agreements with the Complainant, as well as the IKEA store in Delft, Netherlands, which is directly owned by the Complainant.
The Complainant owns over 1500 trademark registrations consisting of or including IKEA, in more than 80 countries around the world (collectively, the “IKEA mark”), including Australian Trade Mark No. 288831 (registered July 15, 1975) and United Kingdom Trade Mark No. 1071520 (registered December 3, 1976), which is a seniority mark for Community Trade Mark No. 000109652 (registered October 1, 1998). The Complainant licenses these trademarks to IKEA franchisees and others for the benefit of the IKEA Group. According to the Complaint, the IKEA mark is an invented name, an acronym formed with the initials of the founder’s name (Ingvar Kamprad), the farm where he grew up (Elmtaryd), and his home parish in Sweden (Agunnaryd).
IKEA stores and products are advertised in broadcast and print media, in a printed catalog (more than 200 million copies are printed annually, in 29 languages), and online. The Complainant has registered more than 300 generic Top-Level Domains (“gTLDs”) and country code Top Level Domains (“ccTLDs”) worldwide incorporating the IKEA mark, including <ikea.com> and <ikea.it>. The Complainant reports that IKEA websites had over 1.1 billion visitors in 2012. For the fiscal year ending August 31, 2012, the IKEA Group claims 776 million customers and revenues of EUR 27.5 billion. In 2012, Interbrand listed IKEA among the 500 best known brands in the world, and in 2013 the Reputation Institute consultancy ranked IKEA as number 35 on its list of “The World’s Most Reputable Companies”.
The Domain Name was registered on December 3, 2012 in the name of the Respondent domain privacy service in Australia. As shown in a screen shot attached to the Complaint, in June 2013 the Domain Name resolved to a parked landing page hosted by Sedo displaying pay-per-click (“PPC”) advertising links for a variety of products. Following receipt of the current Complaint, the Registrar identified the registrant as the Respondent Host Master, Transure Enterprise Ltd, of Tortola, British Virgin Islands, with an email address using the domain name <transureent.com>. That domain name does not resolve to a company website but to a landing page with a search feature that displays what appear to be PPC advertising links. As the domain privacy service claims no interest in the Domain Name in this proceeding, the term “Respondent” will refer henceforth only to the Respondent Host Master, Transure Enterprise Ltd. In the absence of a Response or a company website, little is known about the Respondent – except that the same company appears as the respondent in more than 100 decided UDRP proceedings.
On June 10, 2012 the Complainant’s representative sent a cease-and-desist letter by email to the domain privacy service, asserting the Complainant’s trademark rights and demanding transfer of the Domain Name in exchange for reimbursement of out-of-pocket registration and transfer costs. A “Mr. Smith” replied, indicating that he had listed the Domain Name for sale on the Registrar’s domain name auction website. The Complainant’s representative responded that the Complainant would file a UDRP complaint if Mr. Smith did not agree to transfer the Domain Name, with reimbursement of registration costs up to USD 20. Mr. Smith countered with an offer to transfer the Domain Name in exchange for “administrative and registration costs”, for which “[the] equivalent in my country is US $500.” (Mr. Smith did not identify his country of residence.) The Complainant then initiated the current UDRP proceeding.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is confusingly similar to its distinctive and well-known IKEA mark, and that the Respondent has no rights or legitimate interests in using the mark in the Domain Name.
The Complainant argues that the Respondent registered and is using the Domain Name in bad faith, in an effort to mislead Internet users for commercial gain and to sell the Domain Name to the Complainant or a competitor for an amount in excess of its out-of-pocket costs.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(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.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
The Complainant unquestionably holds numerous IKEA trademark registrations. The Domain Name incorporates the IKEA mark in its entirety, adding only the letters “it” following a hyphen, which tends to separate and highlight the “IKEA” portion of the Domain Name. The addition of the letters “it” does not avoid confusion with the well-known and distinctive IKEA mark. The Complainant itself has hundreds of Domain Names adding generic or geographic terms or acronyms to the IKEA mark, and the Complainant holds the ccTLD <ikea.it>, which is used to redirect visitors to the Complainant’s Italian website.
The Panel concludes that the Domain Name is confusingly similar to the Complainant’s IKEA mark for purposes of the first element of the Complaint.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
“(i) before any notice to it 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) that the respondent has been commonly known by the domain name, even if it has acquired no 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.”
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the Domain Name, once the Complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Complainant has done so in this proceeding, by observing that the Domain Name incorporates in its entirety the Complainant’s distinctive, well-known, and registered IKEA mark. The Respondent has not submitted a Response in this proceeding claiming any rights or legitimate interests in the Domain Name. Indeed, the Respondent did not reply substantively to the Complainant’s earlier correspondence alleging trademark infringement. The Respondent does not claim to be a licensee. There is no evidence in the record that the Respondent has made noncommercial fair use of the Domain Name, is known by a corresponding name, or has made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. Using a domain name for advertising links relevant to its generic signification may in some instances represent use in connection with a bona fide offering of goods or services (see WIPO Overview 2.0, paragraph 2.6), but there is no claimed generic sense of “ikea”.
The Panel concludes that the second element of the Complaint has been established.
C. Registered and Used in Bad Faith
The Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following, on which the Complainant relies:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or . . .
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The “Mr. Smith” who communicated with the Complainant’s representative demanded USD 500 for the Domain Name and reported that he had listed the Domain Name on an auction website for any party to bid on. The stated amount substantially exceeds the Respondent’s likely out-of-pocket costs, given that the Domain Name had only recently been registered and the Registrar typically charges less than USD 10 for registration of a “.com” domain name (as indicated on the Registrar’s website). Thus, the Respondent’s conduct is consistent with the example of bad faith described in the Policy, paragraph 4(b)(i).
Allowing the Domain Name to be used in the interim for a PPC advertising website also indicates bad faith, whether or not the Respondent itself benefitted from the Sedo-hosted PPC landing page. The Respondent allowed the Domain Name, incorporating a world-renowned trademark, to be used for months for this commercial purpose, with the likelihood that it would attract Internet users seeking the Complainant’s websites. The IKEA mark is an invented term, an acronym not known to represent a word in any language, with no known generic value but enormous trademark value. Thus, there is no plausible reason for selecting the Domain Name other than to exploit the reputation of the Complainant’s brand. The Panel concludes that this conduct reflects bad faith within the meaning of the Policy, paragraph 4(b)(iv).
Even absent any active use of the Domain Name by the Respondent itself (apart from listing the Domain Name for sale), the registration and passive holding of a domain name based on a well-established mark may be considered evidence of bad faith. This is especially likely where, as here, the registration is accompanied by other indications of bad faith such as concealing the Respondent’s identity and failing to respond substantively to a trademark infringement letter and a UDRP complaint. See WIPO Overview 2.0, paragraph 3.2.
Further, the Respondent’s history as a cybersquatter supports the inference that the Respondent selected the Domain Name either to capitalize on the reputation of the Complainant’s mark by misleading Internet users or by selling the Domain Name to the Complainant or a competitor. In more than 100 previous UDRP proceedings to date, panels have found that the same Respondent acted in bad faith and have ordered the transfer of the disputed domain names to the trademark owners.
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 <ikea-it.com> be transferred to the Complainant.
W. Scott Blackmer
Date: September 4, 2013