WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter-IKEA Systems B.V v. Avi Chekroun
Case No D2000-0478
1. The Parties
Complainant is Inter-IKEA Systems B.V, Olof Palmestraat 1, NL 2616 LN Delft, The Netherlands, with the e-mail address "firstname.lastname@example.org". Complainant is represented by Fross Zelnick Lehrman & Zissu, attention Martin B. Schwimmer, 866 United Nations Plaza, New York, New York 10017.
Respondent is Avi Chekroun, b.p. 3124, Shlomi 22832, Israel. Mr Chekroun is current registrant of the "ikeaworld.com" domain name (see below).
2. The Domain Name and Registrar
The domain name at issue is "ikeaworld.com" which domain name is registered with Network Solutions, Inc (NSI), Herndon, Virginia, United States of America.
3. Procedural History
A Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the WIPO Center) by May 23, 2000 in e-mail form and on May 24, 2000, in hard copy form. On May 29, 2000, the WIPO Center issued an acknowledgement of Receipt of Complaint.
On May 29, 2000, a Verification Request was sent to Network Solutions and on May 31, a Registrar Verification Response was received.
That Response indicated:
- that in fact Network Solutions was in receipt of the Complaint;
- that Network Solutions is the Registrar of the domain name registration;
- that Avi, Chekroun is the current registrant of the IKEAWORLD.COM domain name registration;
- that the Registrant is indicated as: "AVI, CHEKROUN (IKEAWORLD2-DOM), b.p. SHLOMI,SHLOMI 22832 IL";
- that the Administrative Contact and Billing Contact is indicated as "AVI, CHEKROUN (CAX48 subcrono@YAHOO.COM)" with the same postal address as indicated above and with numbers indicated as follows: "00972 52 225200, FAX 123 123 1234";
- that the Technical and Zone Contact is indicated as: "WorldNIC Name Host (HOST-ORG) namehost @WORLDNIC.COM Network Solutions, Inc. 505 Huntmar Park Drive, Herndon, VA 20170, 1-888-642 9675;
- that Network Solutionsī5.0 Service Agreement is in effect; and
- that the domain name registration IKEAWORLD.COM is in "Active" status.
The WHOIS Query Results attached to the Complaint indicate that the domain name was registered on December 27, 1999.
Having verified, on June 1, 2000, that the Complaint satisfied the formal requirements of the Policy and the Rules, a Notification of Complaint and Commencement of Administrative Proceeding was transmitted the same day to Respondent by Post/Courier (with enclosures), by fax (complaint without attachments) and by e-mail (complaint without attachments) to "email@example.com", to "firstname.lastname@example.org" and to "namehost@WORLDNIC.COM" and to Complainant (by e-mail).
On June 2 and 7, 2000, respectively, the Mail Delivery system indicated that the e-mail messages to the complainantīs two first-mentioned e-mail addresses were undeliverable.
On June 4, 2000, a Response (in French) was received by WIPO Center. On June 6, the Complainantīs representative transmitted to WIPO an indication on that he was in receipt of the reply to the Complaint together with an excerpt from the WHOIS database containing indications about other domain name registrations by the Respondent.
On June 11, a Response Deficiency Notification was transmitted to the Respondent indicating that the following deficiencies had been identified: a) that the Response was not submitted in one original and four copies as required by Paragraph 5(b) of the Rules and Paragraph 3 c) of the Supplemental Rules; b) that the Response did not contain the full statement specified in Paragraph 5(b)(vii) of the Rules; c) that the Response had not been signed by the Respondent or his authorised Representative as required by Paragraph 5(b)(viii) of the Rules and; d) that the Response was not submitted in the language of the administrative proceeding as required by paragraph 11(a) of the Rules. The Respondent was requested to remedy the deficiencies by June 21, 2000 with a copy to Complainant. It was also indicated that regardless of whether the information was received or not, the WIPO Center would proceed to appoint the Administrative Panel and that the Panel would be informed of any deficiencies that the Respondent failed to remedy. The Notification was communitated by e-mail to the Respondent and to the Complainant.
On June 13, an Amended Response was received by the WIPO Center. The Response was in English, was signed by the Respondent and contained the statement required under Paragraph 5(b)(vii) of the Rules.
On June 21, 2000, in view of the Complainantīs designation of a single panelist, the WIPO Center invited Mr. Henry Olsson to serve as a panelist. Having received on June 23, Mr. Olssonīs Statement of Acceptance and Declaration of Impartiality, the Center transmitted to the Parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Olsson was formally appointed as the Sole Panelist. The Projected Decision Date was July 7, 2000.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.
4. Factual Background
The Complaint is based upon the following factual grounds.
IKEA is an acronym comprised of the initials of Mr. Ingvar Kamprad, who is the Complainantīs founder, together with the initials of the farm Elmtaryd and the parish Agunnaryd, in Sweden where Mr. Kamprad grew up. The term IKEA was first used on furniture in 1950 by Mr. Kamprad. The first IKEA catalogue was published in 1951 and the first IKEA store was opened in Sweden in 1958. Now the IKEA company comprises 155 stores in 29 countries; the sale of IKEA furnishings and accessories amounted to over US$ 8 billion in 1999.
IKEA was first registered as a trademark in Sweden in 1943. Today it owns more than 1200 trademarks for IKEA and IKEA variants in more than 70 countries around the world. Complainant owns 40 registrations and 17 pending applications for the IKEA mark in Israel which all were filed prior to Respondentīs domain name registration.
Exhibit B to the Complaint contains a database printout of part of the Complainantīs trademarks world-wide and Exhibit C a list of Complainantīs Israeli trademarks and copies of a sampling of Israeli Registration certificates for IKEA, IKEA & Device, IKEA in Hebrew and IKEA & Device in Hebrew. Those trademarks are owned by Complainant.
In order to show that there has been significant third party recognition of Complainantīs mark, the Complainant has transmitted
as Exhibit D an excerpt of a study by Interbrand rating the IKEA brand as the 43rd most valuable brand in the world;
as Exhibit E a printout from the amazon.com web site describing the book Leading by Design, the IKEA story, which is a biography of Mr. Kamprad by Bertil Torekull, published by Harper Business;
as Exhibit F a printout from the amazon com web site describing The Book of Home Design Using IKEA Home Furnishings, which is a guide to home furnishing, by Mr Anoop Prikh;
as Exhibit G copies of two comic strips "Calvin and Hobbs" and Citizen Dog having IKEA stores as their subject matter;
as Exhibit H printout from the Electric Library media database showing a sampling of articles about IKEA stores in the magazines Money and Fortune and in the news sires Reuters and Business Wire.
It appears from the Network Solutions Verification Response of May 31, 2000, that Respondent is the current registrant of the domain name ikeaworld and also that Respondent is the current Administrative and Technical Contact for this domain name.
5. Parties Contentions
- that the term IKEA has no meaning in any language other than as a trademark identifying complainant as a source of origin;
- that the mark IKEA is famous in the trademark law meaning of the word and has been held so by a judicial decision in Norway;
- that Complainant is aware of no third party that owns trademark registrations in Israel consisting of or incorporating the IKEA mark in Israel;
- that, on seeing the domain name "ikeaworld" consumers will believe that it is related to Complainant and that on searching the Internet for Complainant by using Complainant name and/or mark will be directed to the Registrant, thus increasing the likelihood for confusion;
- that there exists no relationship between Complainant and Registrant which would give rise to any license, permission or other right by which Registrant could own any domain name incorporating Complainantīs famous IKEA mark;
- that Respondent can demonstrate no legitimate interest in the domain name;
- that Respondent has either registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name or has done so in order to prevent Complainant from reflecting the famous IKEA mark; in this respect Complainant mentions that according to the WHOIS database Respondent has not listed any legitimate address, or telephone or facsimile number, all in order to avoid being located;
- that Complainant first discovered that the domain name had been registered by a third party was when it received an e-mail message from Registrant on January 5, 2000, containing the words http://ikeaworld.com>www.ikeaworld.com in the body and 9 000000$ in the subject line and then, on March 19, 2000, a message from Respondent indicating that he would transfer the domain name if Complainant made him a "justified offer."
The Complainant further contends
- that the Registrant targeted Complainant, something that is clear from the fact that IKEA is a famous and unique trademark in such a way that the domain name can only refer to Complainant;
- that the circumstantial evidence shows that the Registrant has no legitimate interest in the domain name but is holding it passively;
- that, as Complainant has not licensed or otherwise permitted Registrant to use its trademarks or to apply for a domain name incorporating its trademark and that Complainantīs mark is not one that their partners "would legitimately choose unless seeking to create an impression of an association with the Complainant", the Registrant can not be found to have any legitimate interests in the domain name (reference to Case No D2000-0003);
- that given Complainantīs rights in its IKEA mark there are no circumstances wherein the Registrant could make legitimate commercial use of the domain name; in the light of Complainantīs reputation, Registrant was surely aware of this fact at the time it registered the name (reference to the same case);
- as found in the same case, use of a domain name can be found by inactive as well as positive action; the Registrantīs passive holding of the domain name amounts to bad faith use because Complainantīs name is well known and there is no evidence of good faith use in the name of the Registrant.
On the basis of these contentions, Complainant requests
- in accordance with Paragraph 4(b)(i) of the Policy, for the reasons described above, that the Administrative Panel issue a decision that the domain name at issue be transferred to the Complainant;
- in accordance with Paragraph 3(b)(xii) of the Policy, Complainant agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer the domain name at issue of this Complaint, to the jurisdiction of the courts in the principal office of the concerned Registrar; the Respondent has submitted in its registration agreement to this jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name.
In its Amended Response Respondent indicated that the domain name "ikeaworld" was chosen because IKEA consists of the first letters of four associates in a non-lucrative association giving information and advice on network and internet security. To support this, Respondent has submitted a printout from http://www.w3org/Security/Faq/www-security-faq.htm which contains a study of security on the Internet which indicates, in its initial part, that it is meant to provide some background for people interested in this issue. The Respondent contends that, as the name IKEA was already taken, the domain name "ikeaworld" was chosen.
According to Respondent the web site will be ready in about three months and Respondent has invested seven years of savings in making the site, as it is essential to preserve the security of information.
Respondent contends that there could be no confusion between the two parties because web browsers such as Yahoo, GO Altavista, etc. search for information by keywords and not by domain names; thus, if IKEA is looked for, one automatically will get the site IKEA because there is only one site with the name IKEA. Respondent also suggests that only a few thousand people will use the Respondentīs site.
After the registration of the domain name "ikeaworld" the Respondent has received offers to take over the domain name for amounts between $ 50 000 and $ 10 000 000 which were sent by a server from which e-mails can be sent without the sender being identified. As a reaction to these offers, Respondent sent an e-mail to IKEA asking them to stop and indicating that "ikeaworld" was not for sale. If Respondentīs intention was to harm IKEA other domain names would have been chosen, such as IKEA-WORLD.COM and the Respondent had advised IKEA which names to reserve.
Respondent contends that he lives in a city in Israel where everyone has a post office box in order to receive their mail. The telephone number was not put on the address as this was not considered necessary for the moment but the telephone and fax number will soon be put on the site
Respondent expresses his surprise that the IKEA company would be well known, as his correspondents in Asia, Russia and the Middle East have never heard of it and out of 175 correspondents only three knew about IKEA, in France, the Netherlands and Norway. Thus it would be an exaggeration to claim that IKEA is known worldwide.
Finally, the Respondent certifies that the information contained in the Response is to the best of his knowledge complete and accurate, that the Response is not being presented for any improper purpose, such as to harass, and that the assertions in the Response are warranted under these rules and under applicable law as it now exists "or as it may be extended by a good-faith and reasonable argument."
According to the Response it was sent by Federal Express, on June 12, 2000, to the Complainants attorney and was transmitted to the e-mail address "email@example.com" and also by fax number (212)813-1591.
In the e-mail dated June 6, 2000, in which Complainantīs representative acknowledged receipt of Respondentīs Response (in French), Complainant requested the Panel to take judicial notice of the WHOIS Database which showed that AVI, CHEKROUN also registered, among others, "motorolaworld.com", "bbcworld2000.com", "altavista2000.com", "cnnworldnews.com", "wapnokia.com", "swatch2000.com", "amexworld.com", "visacard2000.com", and "evian2000.com". To the e-mail was attached an extract from the WHOIS databas showing that AVI, CHEKROUN registered 37 similiar domain names. This was copied the same day to Mr. Chekroun under the e-mail adress "firstname.lastname@example.org".
6. Discussions and Findings
The 5.0 Service Agreement by which Respondent is bound prescribes in its Paragraph 8: "If you reserved or registered a domain name through us, you agree to be bound by our current domain name dispute policy that is incorporated herein and made part of the Agreement by reference."
Rule 15 of the Rules, which thus apply in this case, prescribes that the 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.
Applied to this case, Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) that the domain name registered by Respondent is identical or confusingly similar to a trademark or a service mark in which Complainant has rights;
(ii) that Respondent has no rights or legitimate interests in the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
In the following the Panel discusses each of these elements.
Identity or Confusing Similarity
The domain name is "ikeaworld.com." The Network Solutionsī Verification Response shows that Respondent is the current registrant of the domain name, which is in Active status.
IKEA is a registered trademark of Complainant who has submitted a database printout containing a partial listing of Complainantīs IKEA trademarks worldwide and a list of Complainantīs Israeli trademarks and a sampling of Registration Certificates for Complainantīs trademarks in Israel, allegedly 40 registrations and 17 pending applications. From the listing appears that the filings in Israel were prior to Respondentīs domain name registration.
The domain name consists of the trademark of the Complainant with the noun "world" added. The ability of the word "world" to distinguish the domain name from the Complainantīs trademark is limited and is more a neutral addition to the trademark, in this case the more so as the IKEA company operates on a rather worldwide basis.
In view of the above, the Administrative Panel finds that the domain name is confusingly similar to the trademark of IKEA of Complainant.
Rights or Legitimate Interests
Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating any such mark.
Respondent has stated that the use of IKEA in the domain name "ikeaworld" is due to the fact that IKEA represents the first letters of four associates of which Respondent is one. The Respondent has, however, not submitted any indications or documentation supporting this statement. This fact, together with the fact that Respondent also has registered more than 30 other domain names in which also some worldwide known names of companies appear, leads inevitably to the conclusion that Respondent has failed to invoke any supported circumstance which could demonstrate, pursuant to paragraph 4 c) of the Policy, any rights or legitimate interests in the domain name.
Therefore, on the basis of the arguments and the evidence brought by Complainant and the failure of the Respondent to substantiate his statement concerning the origins of the part IKEA in the domain name, the Panel finds that Complainant has sufficiently established that Respondent has no right or legitimate interest in the domain name as it is now designed.
Registration and Use in Bad Faith
The trademark IKEA is currently enjoying fame internationally and is, according to Exhibit C to the Complaint, the subject of 40 registrations and 17 pending trademark applications in Israel. The Respondent states, in his Amended Response, that "IKEA was already taken." Consequently, the registration of the domain name "ikeaworld.com" must have been carried out in the knowledge at least of the domain name IKEA and a simple check would have informed the Respondent of the nature of the operations of the IKEA company and of the trademarks existing or applied for in the world and in Israel. This would in fact have been quite natural if it was important to use the letters IKEA in Respondentīs domain name and this regardless of the different nature of the activities of the IKEA company and those of Respondent and his associates.
The WHOIS Register shows that Respondent did not list any postal address other than a post-box number. Complainant suggests that the only plausible reason is that Respondent is trying to avoid being located. Furthermore, Complainant indicates that
e-mails were received, on January 5 and March 19, 2000, containing a mention of amounts of money in US dollars and that Respondent would transfer the Domain name if Complainant made him a "justified offer." Complainant claims that Respondent has either registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name or has done so in order to prevent the IKEA mark in a corresponding domain name. Respondent has stated that an e-mail was sent to IKEA "in order to ask them to stop." Furthermore, Respondent has mentioned that in his city in Israel everyone has a post office box and that the telephone and the fax numbers "will be put soon on the site."
Complainant has suggested that Respondent is passively holding the domain name and, given Complainantīs rights in the IKEA mark, there would be no circumstances where the Registrant could make legitimate commercial use of his domain name. Respondent has said that the web site to which the domain name refers would be ready in "three months time" but, as indicated above, Respondentīs own Amended Response makes it clear that the registration of the domain name was undertaken despite the fact that "IKEA was already taken." There is no evidence of Respondent having presently used the domain name.
It is clear that there have been some e-mail contacts from Respondent to Complainant but there is no evidence of the exact nature of the e-mails which Respondent sent. It would seem, however, that those dealt with financial suggestions.
Of some relevance in this case is also the fact that Respondent appears in the WHOIS Register as the holder of 36 other domain name registrations, among them such incorporating the names of internationally known companies (ERICSSON, MOTOROLA, CNNWORLDNEWS, WAPNOKIA and EXPLORERNETSCAPE) together with the noun "com" and also, for instance, PHILIPS2000, EVIAN2000, BBCWORLD2000 and ALTAVISTA2000 with the noun "com." This shows that Respondent has great familiarity with the operations of internationally known companies, of which IKEA is one. There are no indications about why the Respondent registered those domain names.
In view of what has been mentioned now and in particular of the other similar domain names registered by Respondent and also because it can be assumed that Respondent would not be able to use the domain name without coming in conflict with Complainantīs rights in the IKEA mark, the Panel comes to the conclusion that circumstances indicate that the domain name "ikeaworld.com" has been registered primarily for the purpose of selling or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of the Respondentīs documented out-of-pocket expenses directly related to the domain name.
The list of other registrations held by Respondent is also an indication that "ikeaworld.com " has been registered in order to prevent the owner of the mark IKEA from reflecting the mark in a corresponding domain name which is an evidence of registration in bad faith if Respondent has engaged in a pattern of such conduct. That list can be said to be an evidence of such a pattern, as no indications have been given of why all these registrations of domain names containing famous company names have been made.
In accordance with Paragraph 4(b)(i) and 4(b)(ii) of the Policy, these circumstances shall be evidence of registration and use of the domain name in bad faith.
In the light of the foregoing the Administrative Panel considers
- that the Domain Name "ikeaworld.com" registered by Respondent is confusingly similar to Complainantīs trademark IKEA;
- that Respondent has no right or legitimate interest in respect of the domain name; and
- that Respondentīs domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the policy and in accordance with the request by Complainant, the Panel requires that the Domain Name "ikeaworld.com" be transferred to Complainant.
Dated: June 27, 2000