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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

IKEA Systems B.V. v. Jose Delfino

Case No. D2014-2070

1. The Parties

The Complainant is IKEA Systems B.V. of Delft LN, the Netherlands, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Jose Delfino of Miami, Florida, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <miamiikea.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 November 25, 2014. On November 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant.

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 November 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2014.

The Center appointed Alistair Payne as the sole panelist in this matter on January 7, 2015. 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 well-known IKEA business in furniture and homewares. It operates as a franchised business worldwide through 361 stores in over 40 countries with annual turnover in 2014 at EUR 30.1 billion. The Complainant operates 51 stores in the United States, including a store in Miami.

The Complainant owns numerous trade mark registrations worldwide for its IKEA mark including the combined word logo mark registration 73579935 in the United States dating from 1986 and CTM 109652 for the word mark IKEA from 1998.

The Complainant operates through websites at more than 300 generic Top-Level Domain (“gTLD”) and country code Top-Level Domain (“ccTLD”) domain names worldwide, including, <ikea.com>.

The Respondent registered the disputed domain name on February 28, 2014.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights in the IKEA mark as set out above and that its IKEA mark is a coined term which due to the success of the Complainant’s business has become one of the best known brands worldwide and is truly a famous or well-known mark.

It submits that the disputed domain name wholly incorporates its IKEA mark and the generic geographical name “Miami”. The Complainant says that the addition of “Miami” before the invented and distinctive IKEA mark does not distinguish the disputed domain name and is likely to cause Internet users to make an incorrect association between the disputed domain name and the Complainant.

The Complainant submits that it has not authorised or licensed the Respondent to use its IKEA mark and is not aware that the Respondent has otherwise used or is known by the IKEA mark. It further submits that it is highly unlikely that the Respondent could have been unaware of the Complainant’s IKEA mark at the date of registration of the disputed domain name. It says that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and that it has instead intentionally chosen a domain name based on a famous trade mark in order to generate traffic and presumably income through a parked pay per click site which it notes includes links to some of the Complainant’s competitors’ sites. In summary the Complainant therefore asserts that the Respondent has no rights or legitimate interests in the disputed domain name.

In view of the coined nature of the IKEA mark and its well-known and famous status, the Complainant submits that the Respondent must have been aware of the Complainant’s rights in its mark when it registered the disputed domain name in February 2014 and that it would not have chosen to incorporate the IKEA mark in the disputed domain name unless it was expressly seeking to confuse Internet users into thinking that there was an association with the Complainant which there was not and accordingly to divert Internet traffic to its website which features links to third party and competing sites. The Complainant argues that this is evidence of registration and use in bad faith in terms of paragraph 4(b)(iv) of the Policy. It says further that the Respondent’s failure to respond to the Complainant’s cease and desist letter of October 23, 2014, is further evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has registered trade mark rights in its IKEA mark in various countries but in particular, in CTM 109652 for the word mark IKEA dating from 1998. It also owns the combined word logo mark registration 73579935 in the United States dating from 1986 in which the word mark IKEA is the dominant element. The disputed domain name wholly incorporates the IKEA mark and has the geographical term “Miami” in front of it. The inclusion of such a geographical term does nothing to distinguish the disputed domain name and considering that the Complainant has an IKEA store in Miami, in the Panel’s view only serves to exacerbate the degree of potential Internet user confusion. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s IKEA mark and the Complaint succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that it has not authorised or licensed the Respondent’s use of its IKEA mark in the disputed domain name and that it is unaware that the Respondent is known by or has any rights in the IKEA mark or the disputed domain name, or is using it in relation to a bona fide offering of goods or services. For the additional reasons set out below, the Panel finds that overall the Complainant has made out its prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that this has not been rebutted by the Respondent. As a result the Panel finds that the Complainant has successfully made out its case that the Respondent has no rights or legitimate interests in the disputed domain name, and succeeds under the second element of the Policy.

C. Registered and Used in Bad Faith

The IKEA mark is undoubtedly one of those marks that is so well known that it can truly be said to be a famous mark. By 2014 when the disputed domain name was registered the Panel accepts that the Complainant’s business was extremely well established worldwide, including in the United States and the Panel notes that the Complainant also owned a store in Miami where the Respondent is located. In these circumstances and in the absence of any response from the Respondent, the Panel infers on the balance of probabilities that the Respondent must have been aware of the Complainant’s IKEA mark and business when it registered the disputed domain name, but it nevertheless proceeded purposefully with registration.

This conclusion is only reinforced by the fact that the disputed domain name resolves to a website that features links to third party sites and also to sites belonging to competitors of the Complainant. The Panel considers it highly unlikely that the Respondent would have chosen to incorporate the IKEA mark into the disputed domain name and then to arrange for or to permit it to resolve to what appears to be a pay per click parking site, unless it was seeking to profit from an association with the Complainant’s mark by confusing Internet users into thinking that there was some association with the Complainant which there was not and to thereby divert Internet traffic to its website. The Panel finds in this regard that the requirements of paragraph 4(b)(iv) of the Policy have been met which is evidence of the registration and use in bad faith of the disputed domain name.

Further, the Panel agrees with the Complainant’s submission that the Respondent’s failure to respond to the Complainant’s cease and desist letter concerning the disputed domain name only serves to reinforce the Panel’s inference that the disputed domain was registered and is being used in bad faith.

Accordingly, the Panel finds that the Complaint succeeds under this element of the Policy.

7. Decision

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 <miamiikea.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: January 21, 2014

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