WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Inter IKEA Systems B.V. v. Zhang Vivian

Case No. D2015-0163

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 Zhang Vivian of Shenzhen, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <ikea-maid.com> is registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2015. On February 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 3, 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.

On February 4, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On February 6, 2015, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 in both Chinese and English, and the proceeding commenced on February 10, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 3, 2015.

The Center appointed Francine Tan as the sole panelist in this matter on March 6, 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 a unique concept for the sale of furniture and home furnishing products marketed under the trade mark IKEA. The Complainant’s business model is developed through a franchise system. Only approved and licensed retailers are authorized to participate in this exclusive distribution system and make use of the IKEA trade mark.

The trade mark IKEA is one of the most well-known trade marks in the world, due in part to decades of extensive advertising. The IKEA trade mark has been recognized as being famous in certain jurisdictions. In the list of “Best Global Brands 2014” provided by Interbrand, IKEA was ranked number 26 of the best global brands in the world. In 2014, the Reputation Institute nominated the IKEA brand to be number 39 on its list of “The World’s Most Reputable Companies”.

The Complainant owns more than 1,500 trade mark registrations for the mark IKEA and variants of said mark, in more than 80 countries around the world, covering goods and services in numerous classes of goods and services. The Complainant has, amongst others, several trade mark registrations in China, the first trade mark being registered as early as 1983. As of August, 2014 there were 16 IKEA stores located in China which is the country in which the Respondent is located. The Complainant opened its first IKEA store in China as early as 1998, and has since then expanded extensively. There is also an IKEA store in Guangzhou, located near the region in which the Respondent is located.

The Complainant has registered more than 300 top level and country-code domain names containing the trade mark IKEA, including <ikea.com> and <ikea.cn>. In 2014, the Complainant’s IKEA websites had over 1.6 billion visitors.

The disputed domain name was registered on July 31, 2014. The website to which the disputed domain name resolves appears to be offering employment services, marked under the name “IKEA Employment Service Center”. The Respondent mainly appears to be facilitating the arrival into China of individuals from the Philippines, after which these individuals would provide housekeeping and house cleaning services.

On November 14, 2014, the Complainant sent a cease and desist letter by email to the Respondent. In the letter, the Complainant advised the Respondent that the unauthorized use of the IKEA trade mark within the disputed domain name violated the Complainant’s rights in its trade mark. The Complainant requested a voluntary transfer of the disputed domain name and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). Despite two reminders sent, no reply was ever received.

5. Parties’ Contentions

A. Complainant

The Complainant asserts, firstly, that the disputed domain name is confusingly similar to the trade mark IKEA in which it has rights. The disputed domain name comprises the mark IKEA, an invented name. It is an acronym comprising the initials of the founder’s name (Ingvar Kamprad), the farm where he grew up (Elmtaryd), and his home parish (Agunnaryd) and it has, to the best of the Complainant’s knowledge, no other meaning in the Chinese language other than as a trade mark identifying IKEA as a source of origin. The addition of the generic term “maid” in combination with a hyphen does not detract from the overall impression and the disputed domain name must therefore be considered to be confusingly similar to the Complainant’s trade mark.

The Complainant asserts, secondly, that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not found that the Respondent has any registered trade marks or trade names corresponding to the disputed domain name. Neither has the Complainant found anything that would suggest that the Respondent has been using IKEA in any other way that would give it any legitimate rights in the disputed domain name. Further, no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trade mark IKEA. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. The disputed domain name was registered by the Respondent decades after the IKEA trade mark was registered in China and across the globe.

The Respondent is today not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has intentionally chosen a domain name based on a famous trade mark in order to generate traffic and income through a site that appears to be offering employment services, namely in the area of household cleaning. No evidence has been found that shows that the Respondent has been using the disputed domain name as a company name or has any other legal right in the trade mark IKEA. The information found on the Respondent’s website under the tab “company profile” (公司簡介), the company operating the website in question appears to have nothing to do with the trade mark IKEA, but reference is rather made to “深圳福德投資發展有限公司是福卡思國際（香港）有限公司的下屬子公司” (roughly translated as “Hartford Investment and Development Co., Ltd. of Shenzhen is a subsidiary 福卡思 International (Hong Kong) Limited”). It is therefore obvious that the Respondent is simply trying to exploit the fame of the Complainant’s trade mark to attract Internet visitors and to imply a connection to the Complainant.

Thirdly, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. The public awareness of the well-known trade mark IKEA is significant and substantial, including in China. The Complainant’s trade mark IKEA has been found to be a well-known trade mark (including in China) in a number of UDRP decisions. Further, considering that the trade mark IKEA is a purely-invented word mark, traders could not legitimately choose a name incorporating the IKEA trade mark unless they were seeking to create an impression of an association with the Complainant.

The Respondent did not reply to the Complainant’s cease and desist letter and reminders. This also suggests bad faith. The Respondent is clearly highlighting the IKEA trade mark on the website connected to the disputed domain name and uses the blue and yellow IKEA corporate colours. Potential visitors viewing the Respondent’s website would encounter the terms “IKEA Employment” and “IKEA Employment Service Center”, together with the blue and yellow colours. This, in combination with the fact that there is no disclaimer explaining the non-existing relationship between the Respondent and the Complainant as well as the fame of the Complainant’s mark, makes it likely that a potential visitor could very well assume that there is some kind of relationship between the Respondent and the Complainant. Therefore, the 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. In the Complainant’s view, there is no other plausible explanation as to the Respondent’s decision to include the IKEA mark in the disputed domain name and on the website connected to it.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceeding

Paragraph 11(a) of the Rules stipulates that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The Complainant requested that English be the language of the proceeding for the following reasons. The Complainant sent the cease and desist letter in English but the Respondent never took the trouble to answer, neither to reply to the issues raised in the letter, nor to state that she does not understand the content. If the Respondent had not understood the content of the cease and desist letter, the natural thing would have been for her to send a reply stating that she did not understand the content of the letter. The Respondent ignored all attempts to resolve the issue amicably. If the Respondent did not understand English and was acting in good faith, she would reply to any of the communication, asking for clarification. Further, some of the text found on the Respondent’s website is in English. The disputed domain name also incorporates an English term, “maid”. It would be cumbersome and to the Complainant’s disadvantage to be forced to translate the entire Complaint into Chinese.

The Respondent did not respond on the issue of the language of the proceeding.

Taking into consideration the circumstances of this case, in the exercise of its discretion pursuant to paragraph 11 of the Rules, the Panel holds that English shall be the language of the administrative proceeding. The Respondent’s choice and selection of the combination of the disputed domain name and the generic term “maid”, as well as the content on the Respondent’s website, shows a sufficient level of familiarity and comfort with the English language. If the Complainant were required to submit all the documents in Chinese by having them translated, the costs would be prohibitive and unduly delay the proceeding. The Panel therefore determines that English should be the language of the proceeding.

B. Identical or Confusingly Similar

The Complainant has established that its IKEA mark is a well-known mark, including in China where the Respondent is located. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s IKEA trade mark since it incorporates the said trade mark and the word “maid” is descriptive in nature and does nothing to distinguish the disputed domain name from the Complainant’s trade mark. The IKEA mark is immediately recognizable as it appears at the beginning. The addition of the hyphen also does nothing to remove the confusing similarity with the Complainant’s IKEA trade mark.

The Panel therefore concludes that the Complainant has proven that the disputed domain name is confusingly similar to the Complainant’s IKEA trade mark in which it has rights. Paragraph 4(a)(i) of the Policy has been satisfied.

C. Rights or Legitimate Interests

The Panel finds that a prima facie case has been established by the Complainant, that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has no relationship with the Respondent and has never authorized her to register or use the trade mark in a domain name. The extent of fame of the IKEA mark which, as an invented word make is a highly-distinctive mark, makes it extremely difficult for anyone else (who is not authorized or licensed by the Complainant to use or register the mark) to assert rights or legitimate interests in a domain name incorporating the IKEA trade mark. No evidence is available to show that the Respondent has been commonly known by a name corresponding to the disputed domain name or to show she has rights or legitimate interests to the mark IKEA by virtue of honest concurrent use through the bona fide offering of goods or services.

The Respondent has not responded nor offered evidence or arguments to counter what has been asserted by the Complainant. In the absence of any grounds for a contrary finding, the Panel therefore concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

The Panel is satisfied that the Respondent had knowledge of the Complainant and its IKEA mark when she registered the disputed domain name. The adoption of the well-known IKEA mark in the disputed domain name and the use of the Complainant’s corporate colours are obvious tell-tale signs of an intention to attract Internet users to the Respondent’s website and to create confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website where the disputed domain name resolves to. It is not possible to conceive of any plausible genuine and legitimate use of the disputed domain name by the Respondent. This is a clear instance where a well-known mark has been misappropriated. The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith.

The Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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-maid.com> be transferred to the Complainant.

Francine Tan
Sole Panelist
Date: March 8, 2015