WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. daishi hamada / Whois Privacy Protection Service by MuuMuuDomain
Case No. D2012-2333
1. The Parties
The Complainant is Inter IKEA Systems B.V., Delft LN, The Netherlands, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Daishi Hamada, Masago Mihama, Chiba-shi, Chiba, Japan / Whois Privacy Protection Service by MuuMuuDomain of Tenjin Prime, Fukuoka-shi, Japan.
2. The Domain Name and Registrar
The disputed domain name <ikea-japan.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2012. On November 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name(s) which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 30, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 20, 2012.
Also on November 30, 2012 the Center transmitted an email to the Parties both in English and Japanese regarding the language of the Proceedings. On December 11, 2012, the Complainant confirmed its request that English be the language of the Proceedings. The Respondent did not comment on the language of the proceedings. The Center verified that the Complaint together with the amendment to 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 December 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 16, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 22, 2013.
The Center appointed Keiji Kondo as the sole panelist in this matter on February 4, 2013. 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.
According to Paragraph 11(a) of the Rules the language of the proceedings shall be the language of in the registration agreement but the Panel has the authority to determine a different language. Even though the language of the registration agreement of the disputed domain name is Japanese, the Complainant opted for the English language to be used in these proceedings. The Panel notes that the utilization of English words on the website at the disputed domain name provided by the Complainant, and under the circumstances, finds that it would be inappropriate to conduct the proceedings in the Japanese language and request a Japanese translation of the Complaint while the Respondent has failed to raise any objection or even to respond to the Complaint or the Center’s communication with regard to the language of the proceedings. Therefore, the Panel concludes that, according to Rules, paragraph 11(a), the language of the proceedings shall be English.
4. Factual Background
The Complainant has registered trademarks in Japan under the registration numbers: 4298656, 2250421, 5197726, 4303329, 4296337, 4296336, 1428966, 3043035, 3297312, 3023187, 3079617, 3189857, 5197726, 1579416, 2287321, 2308972, 2261478, 2267914, 2310857, 2265703, 2230956, 1445499, 1978157, 1918343, 1896846 and 1950230. These trademarks comprise a word "Ikea". The most senior registered trademark is registration number 1428966 dated at July 31, 1980.
There are currently six (6) IKEA stores located in Japan.
With respect to domain names, the Complainant is the holder of <ikea.com> and <ikea.jp>.
The disputed domain name was registered by the Respondent on February 28, 2012.
5. Parties’ Contentions
(1) Notability of the Complainant's Trademarks
As explained below, the Complainant's trademarks and sign IKEA were very well-known before the disputed domain name <ikea-japan.com> was registered.
The Complainant is the owner of a unique concept for the sale of furniture and home furnishing products marketed under the trademark IKEA. Complainant’s business model is developed through a franchise system in which only approved and licensed retailers are authorized to participate in the exclusive distribution system and make use of the IKEA trademarks.
Today, there are 338 IKEA stores in 38 countries operating under IKEA franchise agreements. An astonishing 776 million visitors embarked on the IKEA shopping experience between September 1, 2011 and August 31, 2012. Annual turnover in 2012 for all IKEA stores reached Euro 27.5 billion. Moreover, over 200 million copies of the IKEA catalog are printed every year. In 2012, the catalog was printed in 62 editions and 29 languages.
The trademark IKEA is one of the most well-known trademarks in the world, due in part to decades of extensive advertising. Indeed, the IKEA trademark and brand have been recognized as being famous in certain jurisdictions. For instance, a list of “Best Global Brands 2012”, provided by Interbrand, showing IKEA in the top 500 of the best known brands in the world. Earlier this year, the Reputation Institute nominated the IKEA brand to be number 35 on their list of “The World’s Most Reputable Companies”.
(2) Idential or Confusingly Similar to a Trademark or Service mark
The disputed domain name <ikea-japan.com> comprises the word “Ikea”, which is identical to the registered trademark IKEA, which has been registered by the Complainant as a trademark and domain name in numerous countries all over the world, including in Japan.
The mark IKEA is 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 no meaning in any language other than as a trademark identifying IKEA as a source of origin.
The term “japan” in combination with a hyphen is not relevant and will not have any impact on the overall impression of the dominant part of the name, IKEA, instantly recognizable as a world famous trademark.
(3) Rights or Legitimate Interests in Respect of the Disputed Domain Name
The Respondent did not have or acquire at any time any rights or legitimate interests in the disputed domain name. This is supported by the following:
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. Nor has the Complainant found anything that would suggest that the Respondent has been using IKEA in any other way that would give them any legitimate rights in the name.
No license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark IKEA. The Respondent is not an authorized dealer of the Complainant's products and has never had a business relationship with the Complainant.
It is highly unlikely that the Respondent would not have known of the Complainant's legal rights in the name IKEA at the time of registration. It is rather obvious that it is the fame of the trademark that has motivated the Respondent to register the disputed domain name.
The disputed domain name was registered by the Respondent on February 28, 2012, decades after the Complainant registered the IKEA trademark in Japan.
As stated above, the Respondent is today not using the disputed domain name in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to his own website, offering furniture products similar to those sold by the Complainant.
(4) Bad Faith Registration and use of the Disputed Domain Name
The Respondent registered and has been using the disputed domain name in bad faith. This is supported by the following:
IKEA is a famous trademark. There is no doubt that the Respondent was aware of the rights the Complainant has in the trademark IKEA and the value of said trademark, at the point of the registration.
There is no connection between the Respondent and the Complainant. By using the disputed domain name the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but has misleadingly diverted consumers for his own commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel has found that the Complainant has trademark rights in IKEA under the Japanese Trademark Registration Nos. 4298656, 2250421, 5197726, 4303329, 4296337, 4296336, 1428966, 3043035, 3297312, 3023187, 3079617, 3189857, 5197726, 1579416, 2287321, 2308972, 2261478, 2267914, 2310857, 2265703, 2230956, 1445499, 1978157, 1918343, 1896846 and 1950230. The Panel has also found that the Complainant's trademark IKEA in Japanese was well known as the Complainant's corporate symbol before the disputed domain name was registered on February 28, 2012.
In addition, the Panel also finds, as the Complainant contends and other UDRP panels confirmed (See, Inter-IKEA Systems B.V v. Hoon Huh, WIPO Case No. D2000-0438), that the sign IKEA has no meaning in any language other than as a trademark identifying Inter-IKEA as a source of origin.
Therefore, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark because it incorporates it in its entirety. The mere addition of “-japan.com”, does not alter such similarity to the Panel.
B. Rights or Legitimate Interests
As prior UDRP panels (see Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270; Chanel, Inc v. Estco Technology Group, WIPO Case No. D2000-0413 Inter-Continental Hotel Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252) have decided, once a complainant establishes a prima facie showing that none of the three circumstances listed at paragraph 4(c) of the Policy establishing rights or legitimate interests or rights apply, the burden of proof on this element shifts to the Respondent to rebut the showing.
Moreover, prior UDRP panels (see Singapore Airlines limited v. European Travel Network, WIPO Case No. D2000-0641; Bayerische Motoren Weke AG v. Null, WIPO Case No. D2002-0937) have accepted that the silence of the Respondent might support a finding, based on other relevant circumstances, that he has no rights or legitimate interests in respect of the disputed domain name.
Considering this prior practice, the Panel finds that in this case the Complainant established a prima facie showing that the Respondent has no rights to or legitimate interests in the disputed domain name. The Panel, referring to the Respondent, has no indication whatsoever of any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant holds a distinctive trademark and the Complainant has not authorized the Respondent to use its mark. On the website at the disputed domain name, from its appearance, may confuse Internet users looking for the Complainant’s products. Therefore, the Panel finds the Complainant has satisfied this element.
C. Registered and Used in Bad Faith
The Panel finds that the Complainant has established that the Complainant’s trademark IKEA has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world. Further, the trademark IKEA is a purely invented word mark and the use of the word is not one that traders would legitimately choose unless they were seeking to create an impression of association with the Complainant.
On the other hand the fact that the disputed domain name has previously been connected to a web site offering the same products as those sold by the franchisees of the Complainant well demonstrates that the Respondent has been using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website. Even if the website under the disputed domain name is currently inactive, it does not alter the conclusion.
Accordingly, the Panel concludes that the disputed domain name was registered and has been used in bad faith.
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-japan.com> be transferred to the Complainant.
Date: February 15, 2013