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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Inter IKEA Systems B.V. v. Roman Zubrickiy

Case No. D2015-0046

1. The Parties

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

The Respondent is Roman Zubrickiy of Uzhgorod, Zakarpatskaya, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <ikea-family.club> (hereinafter: the “Disputed Domain Name”) is registered with 1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2015. On January 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 14, 2015, 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 January 22, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2015.

The Center appointed Neil J. Wilkof as the sole panelist in this matter on February 26, 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 Disputed Domain Name, <ikea-family.club>, was registered on October 8, 2014 .

The Complainant inter alia has the following trademark registrations:

CTM Registration No.109652 for the mark IKEA in international classes 2,8,11,16,18,20,21,24,25,27,28,29,30,31,35,36,39,41 and 42, registered on October 1, 1998.

Ukrainian Registration No. 6094 for the mark IKEA in international classes 2,8,16,21,25,28,29,30,31,35,36,39,41 and 42, registered on June 30, 1994.

CTM Registration No. 055560826 for the mark IKEA FAMILY in international classes 2,3,6,8,9,11,14,16,18,19,20,21,22,23,24,25, 27, 28, 31,35, and 41, registered on April 24, 2008.

Russian registration No. 344604 for the mark IKEA FAMILY in international classes 2,3,8,9,11,14,16,18,20,21,22,23,24,25,27,28,31,35 and 41, registered on February 27, 2008.

5. Parties’ Contentions

A. Complainant

The Complainant is the worldwide franchiser of a unique concept for the sale of furniture and home furnishing products operated under franchise agreements and marketed under the trademark IKEA and variations thereof, including the mark IKEA FAMILY (the “IKEA Mark”).

In 2014, there were 361 IKEA stores being operated in over 40 countries, including 255 IKEA stores in Europe. The Complainant, through its franchise operation, currently employs approximately around 164,000 employees. Over 821 million customers visited an IKEA store during the Complainant's 2014 business year. The Complainant's most recent annual turnover was approximately EUR 30.1 billion. Only retailers approved and licensed by the Complainant are authorized to operate a franchise in accordance with the Complainant's distribution system and to make use of the IKEA Mark. The Respondent is not such an authorized retailer.

The Complainant owns more than 1,500 trademark registrations for the IKEA Mark covering goods and services in a large number of international classes and the IKEA name and brand enjoys extensive reputation and goodwill throughout the world. IKEA was named by Interbrand as number 26 on Interbrand's 2014 list of the best global brands in the world.

The Complainant contends that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. The Respondent has intentionally chosen a domain name based on the famous trademark IKEA in order to generate traffic and income through a site offering potential visitors to sign up and receive “IKEA gift cards” and other discounted “deals”. The Respondent also appears to be offering “design solutions”. Further, the current site includes links leading to an online shop, namely <ikea-family.net.ua>, which is a domain name neither owned nor endorsed by the Complainant. By this, the Respondent is trying to imitate the Complainant and its business. The Complainant further contends that the Respondent does not disclose on the website the relationship, or lack thereof, between the Respondent and the Complainant.

The Complainant contends that the Disputed Domain Name was registered and is being used in bad faith. On November 14, 2014, the Complainant sent by email a cease and desist letter to the Respondent, informing him that the use of the IKEA Mark as part of the Disputed Domain Name violated the Complainant's rights. The Complainant requested that the Respondent voluntarily transfer the Disputed Domain Name to the Complainant and it offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). When no response was received, the Complainant sent two reminder letters. The Complainant did not receive any response to any of these letters.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complaint must prove the following:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

(ii) The Respondent has no rights or legitimate interests in the Disputed Domain Name.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

The Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.

A. Identical or Confusingly Similar

It is well-established that “a domain name that wholly incorporates a Complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the UDRP” (Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888). Here, the Disputed Domain Name wholly incorporates the Complainant's registered mark IKEA. Moreover, the Disputed Domain Name is virtually identical to the Complainant's registered mark IKEA FAMILY, differing only by the addition of a hyphen between the words IKEA and FAMILY in the Disputed Domain Name. This difference is wholly immaterial.

The addition of the Top-Level Domain ".club" to the Disputed Domain Name is not to the contrary. It has been recognized by another panel in the case of Canyon Bicycles GmbH v. Domains by Proxy LLC/Rob van Eck, WIPO Case No. D2014-0206 that the new gTLDs, such as ".club", might, in rather exceptional and specific circumstances, be taken into account in determining confusing similarity. Such circumstances are not present in the instant case, given the confusing similarity between IKEA FAMILY and the Disputed Domain Name..

Moreover, given that the mark IKEA FAMILY refers to a rewards club for the Complainant's customers, the addition of the gTLD suffix ".club" has the effect of reinforcing the misimpression that the Respondent is associated with the Complainant. See Inter IKEA Systems B.V. v. Hka c/o Dynadot Privacy, WIPO Case No. D2014-1874, ruling that the domain name <ikea.buzz> is confusingly similar to the mark IKEA ("…to the extent ".buzz" denotes news and information about "Ikea" this would exacerbate confusion.")

Based on the foregoing, the Panel finds that the Disputed Domain Name is confusingly similar to the IKEA Mark.

B. Rights or Legitimate Interests

There is no evidence that the Respondent has registered any mark that consists of, or contains, the IKEA Mark, or any material portion thereof. The Respondent's name does not bear any resemblance to the Disputed Domain Name nor is there any basis to conclude that the Respondent is commonly known by the IKEA Mark or the Disputed Domain Name. There is no evidence that the Complainant has entered into any agreement, authorization or license with the Respondent with respect to the use of the IKEA Mark or that the Respondent has ever been authorized to serve as a franchisee of the Complainant.

Having regard to the three suggested grounds set out in paragraph 4(c) of the Policy, on the basis of which a respondent may support a claim that it has rights or legitimate interests in the disputed domain name, the Respondent has not submitted any response to support such a claim. The Respondent does not use the Disputed Doman Name in connection with a bona fide offering of goods or services nor is the Respondent making any legitimate noncommercial or fair use of the Disputed Domain Name.

Based on the foregoing, the Panel rules that the Respondent has no right or legitimate interest in the IKEA Mark.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that point to bad faith conduct on the part of the respondent, as follows:

(i) circumstances indicating that the respondent has registered or has acquired the disputed 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 the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on the respondent’s web site or location.

Under the circumstances, the Respondent’s selection of the IKEA Mark supports the conclusion that the Respondent has acted in bad faith. The Respondent registered the Disputed Domain Name only in 2014, well after the Complainant first began to use and register the IKEA Mark. A previous panel has found the IKEA mark to be "famous and distinctive" (Inter IKEA B.V. v Hka c/o Dynadot Privacy, supra). As stated by the panel in the case of The American Automobile Association Inc. v. Sompop Padungkijjaroen, WIPO Case No. D2012-2168, “[g]iven the distinctive nature of the Complainant’s AAA Marks and the reputation of the mark, it is inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant or without the intention of targeting theComplainant.” These words apply equally in the instant situation

Further, the use of the Disputed Domain Name by the Respondent indicates an intention to attract Internet users to its website for commercial gain by taking advantage of the Complainant’s reputation in connection with the IKEA Mark. The Respondent has intentionally chosen the Disputed Domain Name in order to generate traffic and income through a site falsely suggesting that it is connected to the Complainant as to source, sponsorship, affiliation or endorsement.

Based on all of the foregoing, the Panel rules that the Respondent has registered and is using the Disputed Domain Name in bad faith.

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 <ikea-family.club> be transferred to the Complainant.

Neil J. Wilkof
Sole Panelist
Date: March 12, 2015

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