WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. IKEA Kitchens / Sam Dashin
Case No. D2012-0148
1. The Parties
Complainant is Inter IKEA Systems B.V. of Delft, Netherlands, represented by Kilpatrick Townsend & Stockton LLP, New York, United States of America.
Respondent is IKEA Kitchens of Canton, Georgia, United States of America / Sam Dashin of Woodstock, Georgia, United States of America, represented pro se.
2. The Domain Name and Registrar
The disputed domain name <ikeakitchens.net> (“the Domain Name”) is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2012. On January 27, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Domain Name. On January 27, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 31, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint.
Complainant filed an amended Complaint on February 3, 2012. The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on February 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2012. The Response was filed with the Center on February 27, 2012.
The Center appointed Clive L. Elliott as the sole panelist in this matter on February 7, 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 Domain Name was registered with GoDaddy.com, LLC on April 16, 2008.
5. Parties’ Contentions
Complainant asserts that it is the owner of a unique concept for the sale of furniture and home furnishing products marketed under the trademark IKEA, with its business model being based on a franchise system, and only approved retailers who have entered into an agreement with Complainant may use this concept, including the IKEA mark. (Complainant together with its authorized retailers and affiliated entities will be referred to collectively as “IKEA”) Complainant contends that for decades, Ikea has provided its customers with functional, well-designed furniture and home furnishings at low prices under its famous IKEA trademark.
Complainant states that the Ikea concept originated in the 1940s, when the Swedish entrepreneur Ingvar Kamprad founded the Ikea furniture company, with the philosophy to offer furniture products of good function and design at prices lower than competitors by using simple cost-cutting solutions that would not affect quality. Complainant contends that the Ikea name consists of the founder’s initials (I.K.) plus the first letters of Kamprad’s farm, Elmtaryd (E), and village, Agunnaryd (A).
Complainant asserts that the first IKEA advertisement appeared in newspapers in Sweden in 1945, and the first Ikea catalog was distributed to consumers as early as 1951, with the world’s first Ikea store opening in Sweden in 1958. Complainant contends that since that time, the Ikea brand has flourished in popularity, success, and is renowned on a multinational scale. It further states that there are 316 Ikea stores in 38 countries, including at least 35 stores in the United States, with approximately 699 million visitors embarking on the Ikea shopping experience between September 1, 2009 and August 31, 2010. Complainant asserts that its annual turnover in 2010 for all Ikea stores reached EUR 23.8 billion, and that nearly 200 million copies of its Ikea catalog are printed every year, with 61 editions being printed in 29 languages in 2010.
Complainant maintains that the core principles originally installed by Kamprad have defined the brand over the course of more than 60 years, and that it has become one of the most recognized brands in the world. In support of this assertion Complainant refers to the fact that Interbrand, a leading branding company, has consistently recognized the Ikea brand as belonging in the top 50 of the world's most valuable brands.
Complainant asserts that it owns more than 1,400 trademark registrations for IKEA and variations thereof in more than 70 countries and it owns a substantial number of trademark and service mark registrations on the Principal Register of the United States Patent and Trademark Office (the "USPTO") for the mark IKEA covering, inter alia, a wide range of furniture, housewares, home furnishings, and related goods and services. Complainant also states that in 1995 it registered the domain name <ikea.com>, and uses that domain name, as well as other domain names that include the IKEA mark, such as <ikeausa.com> (directing Internet users to “www.ikea.com/us/en” and those used for country-specific web sites such as, by way of example, <ikea.com.tr>.
As a result of its substantial promotional efforts and activities in connection with the IKEA mark, Complainant submits that many millions of people around the world have been exposed to its IKEA mark, and the consuming public and trade therefore recognize and associate the IKEA mark with Complainant. Complainant contends that accordingly, the IKEA mark has acquired a high degree of public recognition and distinctiveness. Complainant states that other WIPO panels have recognized that Complainant's rights in the IKEA mark 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.”
Complainant submits that Respondent registered the Domain Name on or around April 16, 2008 which is long after the IKEA mark became internationally famous and that since 2008 Respondent has used the Domain Name to direct Internet users to a web site at the Domain Name to promote Respondent’s kitchen installation, planning, and design services business. Complainant further submits that Respondent’s business offers services that are identical or nearly identical to those that Complainant offers or coordinates and that Respondent claims to provide his “Ikea Kitchens” services in the Atlanta (Georgia) geographic area, where an IKEA store is located and where Complainant's kitchen design and planning services are available to consumers.
Complainant asserts that there is no relationship or affiliation between Respondent and Complainant although, Complainant submits, Respondent has sought to create an aura of affiliation, endorsement, or sponsorship with Complainant and the famous IKEA brand by:
(a) using the IKEA mark in the Domain Name along with the generic word "kitchens,"
(b) using the email address […]@ikeakitchens.net,
(c) including a list of various IKEA styles (and pictures of such styles) on the web page at “www.ikeakitchens.net/styles” ("IKEA Kitchen Cabinetry Styles, Colors and Finishes"), and
(d) indicating that Internet users using the <ikeakitchens.net> web site can link directly from Complainant's legitimate web site and design/planning services to Respondent's web site and purported design/planning services.
By way of example, Complainant notes that Respondent states on the web page at “www.ikeakitchens.net “if you are sending a link to your files via IKEA Home Planner please make sure to send us your actual email address since your link comes with firstname.lastname@example.org as a return address.” Complainant points out that the IKEA mark and name appears dozens of times throughout Respondent's <ikeakitchens.net> web site, and that Respondent has titled two of his web pages “IKEA Styles” and “Why IKEA,” and uses the colors blue and yellow to highlight particular parts of his home page at “www.ikeakitchens.net”.
Complainant asserts that on or around August 29, 2011, it contacted Sam Dashin and explained that Dashin’s use of the IKEA mark in the Domain Name, as well as the purported trade name “IKEA Kitchens” and email address […]@ikeakitchens.net, was not authorized by Complainant and constituted trademark infringement. Complainant advises that Dashin refused to cease using the IKEA mark in the Domain Name and business name “IKEA Kitchens” and that whilst Dashin responded to Complainant’s email messages in September and October of 2011, he continued to refuse to comply with Complainant's request regarding its famous IKEA mark and refused to cease use of the Domain Name.
Complainant states that its counsel in the United States contacted Dashin on or around November 17, 2011 and repeated the demand that Dashin cease using the IKEA name and mark in the Domain Name, as well as the above-referenced unauthorized trade name and email address. Complainant advises that Dashin again refused to cease using the Domain Name, and did not change the content of his web site or cease using the email address […]@ikeakitchens.net.
Complainant submits that Respondent’s use of Complainant’s IKEA mark in the Domain Name and on Respondent’s web site is an exploitation of Complainant’s valuable goodwill and reputation for commercial gain and has been registered in bad faith and in violation of the Policy.
Complainant contends that the Domain Name is identical and/or confusingly similar to Complainant's famous IKEA mark, as it incorporates the mark IKEA exactly and in its entirety, and the addition of the generic word “kitchens” fails to alleviate confusion, particularly in view of the fame of the IKEA mark, the worldwide presence of Ikea, and Complainant's use of multiple domain names that include the IKEA mark. Complainant further contends that the addition of the word “kitchens” in the Domain Name actually increases consumer confusion because Complainant offers so many services focusing on the remodeling and outfitting of kitchens, and offers hundreds of kitchen products.
Complainant suggests that Respondent is not making a legitimate noncommercial or fair use of the Domain Name because he is using the IKEA mark as part of a business name and not in a fair or descriptive way to explain his services. Rather, Respondent has sought to brand himself and his business as IKEA for profit.
Complainant submits that Respondent has registered and is using the Domain Name to generate revenue through a competing business at the expense of Complainant and the goodwill it has built in its IKEA mark is evident from the content posted on Respondent’s web site, which advertises and promotes Respondent's business. Complainant further submits that Respondent is trading on Complainant’s goodwill to attract Internet users to the Domain Name site by naming his business “Ikea Kitchens” or “Ikea Installations” and by making statements on the Domain Name site that would lead those viewing the web pages to believe that there is a legitimate relationship between the parties or a sponsorship or endorsement by Complainant.
Finally, Complainant submits that the content posted at the “www.ikeakitchens.net” web site proves that Respondent has actual knowledge of Complainant and its IKEA name and mark is evidence of bad faith registration.
Respondent states that his business is listed as “IKEA Kitchen Installers/Atlanta” which briefly describes the nature of his services which is assisting his fellow residents with assembly and installation of kitchen cabinetry sold by an Ikea store in Atlanta area. Respondent asserts that such service does not require any endorsement or certification by Ikea.
Respondent contends that he called his business “IKEA Kitchen Installers/Atlanta” since he installs only kitchens and only from the IKEA store and only in Atlanta area. Respondent further contends that his business name was too long for an Internet domain name, and therefore he had to shorten it and then find a domain name relevant to his business name. Respondent asserts that <ikeakitchens.net> was one of those few available for purchase.
Respondent rejects Complainant’s contentions that he has registered the Domain Name, and uses it, in bad faith, and that he has no rights or legitimate interests in respect of the Domain Name; and therefore requests the Administrative Panel to deny the remedies requested by Complainant.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has established that it is the exclusive owner of the trademark IKEA and that it together with its authorized retailers and affiliated entities has for decades provided its customers with well-priced, functional furniture and home furnishings under its famous IKEA trademark. Such rights date back to well before the date of registration of the Domain Name.
It is equally clear that by virtue of its business operations under the IKEA trademark, none of which is disputed, that an unrelated entity using a similar domain name is likely to lead to members of the public being confused and deceived.
On this basis it is found that:
a) Complainant has rights in respect of the IKEA trademark.
b) The Domain Name, which incorporates the IKEA trademark in its entirety and simply adds the descriptive term “kitchens” is confusingly similar to the IKEA trademark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
While the first element, discussed above, is relatively non-contentious, the second element, whether Respondent has rights or legitimate interests in the Domain name, is more difficult.
Under normal circumstances, a reseller or distributor, or in this case installer, can make a bona fide offering of goods and services and thus have a legitimate interest in the domain name in question, if its use meets certain well established requirements. These requirements normally include, in accordance with the principles in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. It is also generally accepted that the respondent must also not try to “corner the market” in domain names that reflect the trademark.
Even though Respondent has filed little more than a pro forma response it appears that, as an installer of genuine Ikea kitchens in the Atlanta area that he is actually installing the legitimate goods or services at issue. Respondent also asserts, without contradiction from Complainant, that he is using his web site only to promote his installation services, which in turn relate only to Ikea kitchens. There is also no suggestion that Respondent has tried to corner the market in all domain names.
That means that Respondent has met three of the four criteria set out in Oki Data. Americas, Inc. v. ASD, Inc., supra. However, what of the fourth requirement, namely that the site must accurately disclose the registrant's relationship with the trademark owner?
Some panels, while broadly accepting the Oki Data principles, have concluded that it can, in certain circumstances, be difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trademark rights and without the authority of the complainant has used a domain name identical to the complainant's trademark. For example, in National Association of Realtors v. John Fothergill, WIPO Case No. D2010-1284 the panel held:
“In particular, under Oki Data, in order to be a “bona fide” offering, “[t]he site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site if, in fact, it is only one of many sales agents.” […] Respondent’s website does not make clear his relationship with NAR and its website <realtor.com>. By offering a $99 “For Sale By Owner” package, which purports to allow consumers to list their homes for sale directly on <realtor.com> and several other websites, Respondent gives consumers the impression that it is appropriate to get their homes listed on <realtor.com> in this way […] By using the REALTOR mark, the block “R” symbol, and the domain name <realtor.com> several times on its website, Respondent misrepresents his relationship to Complainant and wrongly suggests to consumers that Complainant endorses or approves the service he is offering.”
It is clear that the question of whether Respondent has rights or legitimate interests in the Domain Name depends on the particular facts and circumstances and cannot be answered without reference to those facts and circumstances.
In the present case, Complainant asserts that Respondent has sought to create an “aura of affiliation”, endorsement, or sponsorship with Complainant and its IKEA Trademark by:
- using the IKEA mark in the Domain Name along with the generic word “kitchens”;
- using the email address […]@ikeakitchens.net;
- including a list of various Ikea styles, including pictures, on his web site;
- indicating that Internet users using the <ikeakitchens.net> web site can link directly from Complainant's legitimate web site; and
- using the Ikea colors blue and yellow to highlight particular parts of his home page.
None of this is disputed by Respondent. It suggests Respondent has in fact sought to create an aura of affiliation, endorsement, or sponsorship with Complainant and by doing so misrepresent his relationship to Complainant and wrongly suggest to consumers that Complainant endorses or approves the service he is offering his customers.
Respondent may be correct to say that in terms of installation of kitchen cabinetry sold by an Ikea store in Atlanta that such service does not require any endorsement or certification by Ikea. However, on the basis of the record, Respondent has gone further and held himself out as not merely an installer of Ikea kitchens in Atlanta but as associated or endorsed in some way by Complainant. That is a different matter.
In this regard the Panel observes that it is perhaps unfortunate that Respondent did not see fit to provide anything more than a perfunctory response and chose, for some reason, to not respond to the bulk of the assertions made by Complainant. The Panel is obliged to determine the Complaint on the evidence and submissions before it and does so accordingly.
On that basis Complainant has established the second element of the Policy.
C. Registered and Used in Bad Faith
For the reasons set out above, none of which need to be repeated, the Panel finds that Respondent registered and is using the Domain Name to take bad faith advantage of customers, particularly those who are Internet users, who may wish to purchase and have installed in the Atlanta area kitchens and other houseware products and accessories.
By virtue of Respondent’s actions these Internet users are likely to be attracted to Respondent’s web site and be misled as to his true affiliations “vis a vis” Complainant.
The Panel thus concludes that the third limb of the Policy has been met.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <ikeakitchens.net> be transferred to Complainant.
Clive L. Elliott
Dated: March 21, 2012