WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. Arshad Merali
Case No. D2013-1154
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 Arshad Merali of Toronto, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <ikeakitchenexperts.com> is registered with 1&1 Internet AG (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.
On July 2, 2013, the Center sent an email communication to the Complainant inviting it to amend the Complaint, namely paragraph 9, relating to the Complainant’s submission to one (or two) appropriate mutual jurisdiction(s) with respect to any challenges that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the disputed domain name. The Complainant confirmed its selection on July 2, 2013.
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 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 Antony Gold as the sole panelist in this matter on July 30, 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 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 <ikeakitchenexperts.com> on December 14, 2012. As at June 24, 2013, at least (this being the date of the screen print of the home page provided by the Complainant), the website operated by the Respondent comprised a directory page containing links to the suppliers of a variety of different products including outdoor furniture, office chairs and pumps. The links are in Swedish and mainly point to Swedish websites.
5. Parties’ Contentions
The Complainant asserts that;
(1) The disputed domain name is identical or confusingly similar to a trade mark 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 mark IKEA and for variants which incorporate IKEA. The Complainant says it has several trade marks in Canada with the most senior dated October 21, 1977. 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.ca>. It says that its websites had over 1.1 billion visitors in 2012. The brand IKEA features in a 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 marks for IKEA. It says that the addition of the generic top level domain, namely “.com”, 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 “kitchenexperts” 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 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 he is aware that the fame of the Complainant’s IKEA brand will drive traffic to his 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 his commercial website and that, as a consequence, he is tarnishing the Complainant’s IKEA marks. In this respect, the Complainant cites another case in which it has been involved, Inter Ikea Systems B.V. v Domain Administrator firstname.lastname@example.org, WIPO Case No. D2011-1934 (<ikeafurnitures.com>), where the panel held that a website comprising parking pages offering goods and services of the Complainant’s competitors did not constitute a bona fide offering of goods and services..
(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 parking page, the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his website. It says that whether or not the Respondent is deriving revenue from the page is immaterial. The Complainant cites a number of other similar cases in which it has been involved successfully, including the decision relating to <ikeafurnitures.com> referred to above. In that case the panel found that the use of a third party’s trade mark in a domain name which pointed to a website comprising a parking page containing pay per click advertisements was evidence of bad faith use of the type described above.
The Complainant also says that it never had any response to a letter sent by it to the Respondent prior to the commencement of these proceedings 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
The Complainant appended to its Complaint details of a single Canadian trade mark for IKEA. This mark mentions other associated marks, details of which were not provided. This does not constitute evidence of the “several” trade marks which the Complainant says it has registered in Canada. Nonetheless, this mark alone coupled with the evidence of the Complainant’s established and extensive repute in the IKEA mark suffice to give the Complainant rights in the mark 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 additional element “kitchenexperts”. This is because this term does not serve to distinguish the disputed domain name in any way from the business of the Complainant as its business includes the sale of goods and services relating to kitchens. Accordingly, whilst the Complainant’s mark comprises, quantitatively, a small portion of the disputed domain name, the Panel considers that it remains the distinctive component of it.
On the basis of the evidence submitted by the Complainant, the IKEA mark is 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 “kitchenexperts”, 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 he is neither an authorized dealer in the Complainants’ products nor has ever had a business relationship with the Complainant.
Use of a domain name which incorporates a trade mark of a complainant in order to point to a website comprising a parking site generating income through sponsored or pay per click links does not inevitably prevent a respondent from having a legitimate interest in the disputed domain name. As the panel said in Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364 (<parishiltonheiress.com>), it is necessary to consider whether a respondent had used the domain name with the complainant’s marks in mind and with a view to taking unfair advantage of those marks. In this respect, the Panel accepts the Complainant’s submission that the choice of domain name by the Respondent in this case is deliberate and not fortuitous.
There is nothing in the 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. 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 set out at paragraph 4(b)(iv) of the Policy which provides that there is evidence of bad faith registration and use when a respondent has intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
The incorporation of a well-known mark into a domain name in order to attract visitors to a commercial website and boost traffic and income can amount to bad faith use of this type. 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. As the panel said in Paris Hilton v. Deepak Kumar, supra, “[t]he confusion that is usually relevant here is the confusion that draws the Internet user to the respondent’s website in the first place (for example, confusion that draws the Internet user to type the domain name into his Internet browser). It does not matter that when the Internet user arrives at the pay-per-click site that it then becomes clear that the website is unconnected with the trade mark holder”. The disputed domain name was registered relatively recently. It is reasonable to suppose that it was registered for the purpose of using it in order to host links similar to those shown in the screen print of the website which the Complainant has provided. On the basis of the information before the Panel, this is, on balance, the most likely explanation for registration.
Accordingly, the extensive repute of the Complainant’s IKEA marks, the use to which the Respondent’s website has been put and the unwillingness and/or inability of the Respondent to justify his conduct by responding to the letter sent to it by the Complainant’s representative or to the Complaint brings the conduct complained of within paragraph 4(a)(iii) of the Policy. Accordingly, the Panel finds that the disputed domain name was 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 <ikeakitchenexperts.com> be transferred to the Complainant.
Date: August 13, 2013