WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter Ikea Systems B.V. v. N/A Belly Scott
Case No. D2011-0910
1. The Parties
The Complainant is Inter Ikea Systems B.V. of Delft, Netherlands, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondent is N/A Belly Scott of San Diego, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ikeafinance.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2011. On May 26, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On June 1, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 3, 2011. In accordance with paragraph 5(a) of the Rules, the due date for Response was June 23, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 1, 2011.
The Center appointed Brigitte Joppich as the sole panelist in this matter on July 22, 2011. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant realizes a unique concept for the sale of furniture and home furnishing products marketed under the trademark IKEA. In 1958, the world’s first IKEA store opened in Sweden. Currently, there are 316 IKEA stores in 38 countries worldwide, including 37 stores in the United States of America. Between September 1, 2009 and August 31, 2010, 699 million visitors came to the Complainant‘s stores. The annual turnover for all IKEA stores reached € 23.8 billion in 2010.
The Complainant owns more than 1,400 trademark and service mark registrations including the term “ikea” in more than 70 countries worldwide, inter alia U.S. Trademark Registration Nos. 1,443,893, 3,561,226, 2,747,517, 2,313,329, 2,565,487, 1,971,513, 1,659,330, 1,661,360, 1,118,706, and 1,418,733 for IKEA, covering, inter alia, a wide range of furniture and related goods and services as well as credit card services (hereinafter referred to as the “IKEA Marks”). The Complainant’s IKEA brand has consistently been recognized by Interbrand as belonging to the top 50 of the world’s most valuable brands. Furthermore, UDRP panels have recognized that the Complainant’s rights in the IKEA Marks are substantial and “uncontestable” and that the IKEA mark is “one of the world’s most well-known and reputed trademarks” and has a very high level of original distinctiveness” (cf. Inter IKEA Systems B.V. v. SC International Sport S.R.L., WIPO Case No. DRO2006-0001; Inter IKEA Systems B.V. v. Henric Lagerquist / Loopia Webbhotel AB, WIPO Case No. DNU2009-0003; Inter IKEA Systems B.V. v. Avi Chekroun, WIPO Case No. D2000-0478; Inter IKEA Systems B.V. v. InterikEA.com, Inc., WIPO Case No. D2006-1379; Inter IKEA Systems B.V. v. IKEA International Co. Ltd., WIPO Case No. D2003-0965).
The disputed domain name was first registered on December 14, 2010. The Respondent has used the disputed domain name to solicit personal information from members of the public in exchange for compensation as “mystery shoppers” or “IKEA consultants”. The “Mystery Shopper” job generally includes assignments such as shopping at an IKEA store or other selected stores, sending the receipt for purchased items back to “IKEA Limited” for reimbursement and/or evaluating the sales clerks at specific stores, and submitting surveys regarding the shopping experience. In its emails, the Respondent identified itself as “IKEA” and “IKEA Limited” and used the email address <email@example.com>.
The Complainant sent a letter of warning to the Respondent but never received any response.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is identical and/or confusingly similar to the Complainant’s famous IKEA Marks as it incorporates the mark IKEA exactly and in its entirety. The mere addition of the generic word “finance” fails to alleviate confusion, particularly in view of the fame of the IKEA Marks, the worldwide presence of IKEA, and the Complainant’s use of multiple domain names that include the IKEA Marks.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as, based on the fame of the IKEA Marks, there can be no legitimate use by the Respondent, as there is no relationship between the Complainant and the Respondent that gives rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating Complainant’s IKEA Marks, as the Respondent is not an authorized franchisee or distributor of the Complainant’s products or services, as there has never been any business relationship between the Complainant and the Respondent, as the Complainant does not sponsor or endorse the Respondent’s activities in any respect, as the Complainant has not provided its consent to the Respondent’s use and exploitation of the IKEA Marks and as use of a domain name in connection with an email fraud scheme is not a bona fide commercial purpose conferring a right or legitimate interest to a registrant.
(3) The disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent’s bad faith registration of the disputed domain name is established by the fact that the domain name incorporates completely and in its entirety Complainant’s IKEA Mark. The Complainant further argues that the Respondent’s bad faith registration and use are further evidenced by the fact that the Respondent’s sole purpose in registering the disputed domain name appears to have been to create a fraudulent domain name and/or email address designed to trick consumers into believing the domain name and email address are affiliated with the Complainant and to then harvest personal and/or confidential information about consumers. The Complainant finally contends that the Respondent’s bad faith registration of the disputed domain name is finally supported by the fact that the Respondent appears to have used false or incomplete contact information when registering the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s well-known IKEA Marks in which the Complainant has exclusive rights and is confusingly similar to such marks.
Firstly, the fact that some of the Complainant’s IKEA Marks include additional graphical elements does not hinder a finding of confusing similarity under the Policy. It is well established that the similarity between a trademark and a disputed domain name is not eliminated by the fact that the trademark includes additional graphical elements (cf. Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems, WIPO Case No. D2001-0932).
Secondly, the additional word “finance” in the disputed domain name is merely generic and describes one of the Complainant’s services. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words, such as “finance” (cf. Agfa Gevaert NV & Co. KG v. Fotografie Jules Dierick, WIPO Case No. D2011-0659; Allstate Insurance Company v. Moniker Privacy Services/Guowei Hai Gui, WIPO Case No. D2011-0176; Monster Worldwide, Inc., and Monster Worldwide Ireland Limited v. Monster Finance Limited, WIPO Case No. DIE2009-0001).
Finally, it is also well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent's rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the 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 trade mark 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 domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 website or location or of a product or service on its website or location.
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the IKEA Marks. The disputed domain name is composed of the Complainant’s mark IKEA and the additional word “finance”, which describes one of the Complainant’s services. Based on the fact that the Complainant’s mark IKEA is one of the world’s most valuable brands and that the Complainant is doing business in the United States of America, where, according to the WhoIs information, the Respondent is located, it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant and its rights in the IKEA Marks.
The Panel is further satisfied that the disputed domain name has been used in bad faith. Apparently, the disputed domain name has been used to create a fraudulent domain name and/or email address. It is well established that the use of a disputed domain name in connection with the distribution of fraudulent email spam is to be considered as bad faith under the Policy (cf. B & H Foto & Electronics Corp. v. Whois Privacy Protection Service, Inc. / Jackie Upton, WIPO Case No. D2010-0841; The Prudential Assurance Company Limited v. Domain Place, domainplace, WIPO Case No. D2009-1014; Bernardo M. Cremades Sanz-Pastor, B. Cremades & Asociados, S.L. v. Patrick Lucas, WIPO Case No. D2009-0566; Capstone Mortgage Co. v. Joshua Shook or J. Shook, Inc., WIPO Case No. D2004-0395; XO Communications Inc. v. XO Network Operations Center Inc., NAF Claim No. 150786; Samsung Electronics Co., Ltd. v. Albert Daniel Carter, WIPO Case No. D2010-1367).
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ikeafinance.com> be transferred to the Complainant.
Dated: July 28, 2011