WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter Ikea Systems B.V. v. Erol Baykal
Case No. D2011-1938
1. The Parties
The Complainant is Inter Ikea Systems B.V. of Delft, Netherlands, represented by Crowell & Moring, LLP, Belgium.
The Respondent is Erol Baykal of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <ikeacatalogo.net> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2011. On November 8, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 8, 2011, GoDaddy.com, Inc. 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 November 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2011.
The Center appointed Jane Lambert as the sole panelist in this matter on January 5, 2012. 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 grants franchises for the distribution of furniture and furnishings under the Ikea sign. Over 316 stores in 38 countries supplied furniture and furnishings under that sign in 2010. Between them those stores generated sales of EUR 23.8 billion. The stores attracted over 699 million visitors that year and distributed 200 million Ikea catalogues.
The Complainant has registered IKEA as a trade mark in a number of countries including Turkey. Copies of some of those registrations are annexed to the Complaint. They include international registration number 926155 by which a device framing the word “ikea” within an oval inside a rectangle has been registered for various goods in classes 16, 20, 35 and 43 in Turkey.
The Complainant and its franchisees market their goods through a number of websites including those at “www.ikea.com” and “www.ikea-usa.com”.
Very little is known of the Respondent other than his name, registration and use of the disputed domain name. The postal address in the WhoIs record appears to be false.
Attached to the Complaint is a screen dump of what appears to be the landing page of a blog at “www.ikeacatalogo.net”. The words “Ikea Catalogo” and the IKEA trade mark appear in the title space. There is some text in Turkish and two columns of sponsored links. The Panel tried to visit “www.ikeacatalogo.net” on January 19, 2012 but its browser could not find a website at that URL.
The Complainant’s lawyers tried to write to the Respondent on April 13, 2011 but their letter was returned unopened.
5. Parties’ Contentions
The Complainant claims the transfer of the disputed domain name on the grounds that:
- the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in the disputed domain name; and
- the disputed domain name was registered and is being used in bad faith.
As to confusing similarity, the Complainant relies on a long line of cases to the effect that there is confusing similarity where the entire mark in question is incorporated into the disputed domain name and only a generic word has been added.
On the absence of rights or legitimate interests in the disputed domain name, the Complainant says there is no evidence that the Respondent is commonly known by a name that is similar to the disputed domain name. He has no trade mark or service mark resembling the disputed domain name and the Complainant has never licensed him to use its marks.
With regard to registration and use of the domain name in bad faith, the Complainant refers to paragraph 4 (b) of the Policy which lists circumstances evidencing registration and use of a domain name in bad faith. The Complainant appears to rely primarily on sub-paragraph (iv) of paragraph 4(b) of the Policy arguing that the use of sponsored links falls within the ambit of that paragraph. It also refers to sub-paragraph (ii) but has made no submissions and produced no evidence to support a claim under that head.
Although it has not pleaded that it relies on paragraph 4(b)(iii) of the Policy the Complainant argues that the Respondent uses the disputed domain name to refer to competitors of the Complainant in the furniture business thereby disrupting the business of Complainant.
It claims that the Respondent must have been aware of a company as big and as famous as the Complainant. Even if he was not so aware he would have discovered the Complainant’s registrations had he made a simple trade mark search. Finally, the Complainant contends that giving a false postal address shows bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove that each of these three elements is present.
A. Identical or Confusingly Similar
The Complainant has produced evidence that it has registered a large number of trade marks that include or consist of the word “ikea” including the international registration mentioned above. There is also abundant evidence that it has goodwill or reputation in the mark IKEA in relation to the supply of furniture and furnishings by virtue of its sales and advertising in many countries.
The dominant part of the disputed domain name “ikeacatalogo” is composed of the words “ikea” and “catalogo”. The word “catalogo” means catalogue in several Romance languages. As “ikea” is the dominant element of both the registered trade mark and the disputed domain name, there is similarity between the disputed domain name and the registered mark. The incorporation of the word “catalogo” adds confusion. That is because Internet users are likely to surmise that the disputed domain name indicates a site belonging to, or authorized by, the Complainant where the Complainant’s catalogues in Spanish, Italian or perhaps some other language can be obtained.
The Panel therefore finds the disputed domain name to be confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, any of the following circumstances can demonstrate that the Respondent has rights or legitimate interests to the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to the Respondent of the dispute, its use 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 it has acquired no trade mark 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 consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that any of the above circumstances applies in this case. At the time the Complaint was filed, the Respondent has used the disputed domain name only for a blog containing sponsored links. Neither his surname nor his first name bears any resemblance to the disputed domain name. There is no evidence that he is known by any other name. His use of the disputed domain name is for the click through revenue from the sponsored links.
The Complainant has made clear that it has not licensed or authorized the Respondent to use its marks.
The Panel therefore concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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 it has engaged in a pattern of such conduct; or
(iii) the Respondent 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 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.
The Panel has already found that Internet users are likely to be misled by the confusing similarity between the disputed domain name and the Complainant’s trade mark into supposing that the disputed domain name indicates a site belonging to, or authorized by, the Complainant where the Complainant’s coupons can be obtained or exchanged. The only rational reason for using such a domain name would be to attract some of the Complainant’s customers to the Respondent’s site. Once there, at least some of them will click the sponsored links for which the Respondent will be paid. This falls full square within the ambit of paragraph 4(b)(iv) of the Policy. Accordingly the Panel finds that the disputed domain name was registered and is used in bad faith.
As the Complainant has succeeded under paragraph 4(b)(iv) of the Policy, it is unnecessary to consider its alternative claims under paragraph 4(b)(ii) and (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 <ikeacatalogo.net> be transferred to the Complainant.
Date: January 20, 2012