WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. Above.com Domain Privacy / Trent Bradley - Domainer Energy
Case No. D2013-0919
1. The Parties
The Complainant is Inter IKEA Systems B.V of Delft LN, Netherlands, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Above.com Domain Privacy of Beaumaris, VIC, Australia / Trent Bradley - Domainer Energy of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <ikead2.com> is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2013. On May 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 28, 2013, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 28, 2013, 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 May 28, 2013. According to information provided by Registrar, the domain name Registrant is Trent Bradley and this Panelist will act correspondingly. When referring to the Respondent, this Panelist shall solely be referring to Trend Bradley – Domainer Energy.
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 May 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2013.
The Center appointed Luis C. Schmidt as the sole panelist in this matter on July 12, 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.
4. Factual Background
The Complainant is the owner of the IKEA trademark and owns over 1,500 trademark registrations for IKEA and IKEA variants in more than 80 countries around the world, covering goods and services in the International Classes 2,8,9,11,16,18,20,21,24,25,27,28,29,30,31,35,36, 38, 39, 41, 42 and 43, among others.
The Complainant is the worldwide IKEA franchisor and all stores operating under the IKEA trademark have executed franchise agreements, with the exception of the IKEA Delft store in the Netherlands. There are 338 IKEA stores in 38 countries operating under IKEA franchise agreements. Between September 1, 2011 and August 31, 2012, the IKEA stores had 776 million visitors. Annual turnover in 2012 for all IKEA stores reached Euro 27.5 billion. Over 200 million copies of the IKEA catalog are printed every year.
The Complainant has registered the IKEA trademark in more than 300 gTLDs and ccTLDs domain names worldwide, among these, <ikea.com> and <ikea.ph>.
Interbrand included IKEA in the top 500 of the best known brands in the world. In early 2013, the Reputation Institute nominated the IKEA brand to be number 35 on their list of “The World’s Most Reputable Companies”, and the IKEA trademark has been recognized as being famous in certain jurisdictions.
5. Parties’ Contentions
First, the Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant argues that the disputed domain name comprises the word “ikea”, which is identical to the registered trademark IKEA, which has been registered by the Complainant as a trademark and domain names in numerous countries worldwide. The Complainant states that “ikea” is an invented name, being an acronym comprising the initials of the founder’s name, the farm where he grew up and his home parish, and it has no meaning in any language other than as a trademark identifying IKEA as a source of origin. The Complainant further argues that the addition of the suffix “d2” is not relevant and does not prevent a finding of confusing similarity.
Second, the Complainant contends that the Respondent has no right or legitimate interest in the disputed domain name. The Complainant claims that it has not found any registered trademark or trade name corresponding to the disputed domain name. The Complainant further claims that no license or any authorization has been given to the Respondent to use the IKEA trademark. It also claims that the inclusion of a well-known trademark in the domain name is evidence that the Respondent has no rights or legitimate interest in the disputed domain name. The Complainant alleges that the disputed domain names was registered by the Respondent on September 21, 2012, decades after the Complainant registered the IKEA trademark.
Third, the Complainant contends that the disputed domain name was registered and is used in bad faith due to the worldwide reputation of the trademark IKEA. The Complainant states that on May 16, 2012, it sent a cease and desist letter by email to the Respondent, requesting the voluntary transfer of the disputed domain name and offering compensation for the expenses of registration and transfer fees, without receiving any response. The Complainant asserts that the disputed domain name is currently connected to a parked pay-per-click website. Complainant claims that since the IKEA trademark is based on an invented word, it is likely that the fame of the IKEA trademark was the reason that made the Respondent register the disputed domain names. In addition, Complainant points out that since IKEA is a famous trademark, there is no doubt that the Respondent was aware of the rights the Complainant has over the IKEA trademark and the value of said trademark, at the point of registration. Finally, Complainant claims that the disputed domain name has been used in relation to “waterhole attacks”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has clearly established its rights in the registered trademark IKEA as evidenced by the trademark registrations submitted with the Complaint. Previous UDRP decisions also held that IKEA is a well known trademark with an international reputation (Inter-IKEA Systems B.V. v. Technology Education Center, WIPO Case No. D2000-0522, Inter-IKEA Systems B.V. v. Polanski, WIPO Case No. D2000-1614, Inter Ikea Systems B.V. v. Ikea International Co. Ltd. WIPO Case No. D2003-0965), and Inter IKEA Systems B.V. v. Domains By Proxy LLC/Getme Ikea, WIPO Case No. D.2012-0965.
Furthermore, the Panel finds that although the disputed domain name is not identical to the Complainant’s trademark, the trademark and the disputed domain name are confusingly similar, since it includes the IKEA trademark in its entirety. Previous UDRP decisions have held that a domain name is confusingly similar to a trademark when it comprises a well-known mark in its entirety, and in particular, the IKEA trademark (Inter IKEA Systems B.V. v. Domains By Proxy LLC/Getme Ikea, WIPO Case No. D.2012-0965).
As previous UDRP decisions have held, the addition of generic terms or suffixes, such as “d2” is not sufficient to exclude similarity, especially with a well-known trademark (Pepsico Inc. v. Johan De Broyer WIPO Case No. D2007-1021; L’OREAL v. Lewis Cheng, WIPO Case No. D2008-0437; L’oreal v. Domain Park Limited, WIPO Case No. D2008-0072).
The Complainant has therefore made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Once a complainant has established a prima facie case that the respondent lacks legitimate interest or right, the burden of production shifts to the respondent to prove its right or legitimate interest in the disputed domain name (F. Hoffman-La Roche AG v. Steven Pratt, Supra and Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd., Supra). Since the Respondent failed to respond, this Panel takes the Complainant’s claims as valid. From the Complainant’s assertions, the Panel concludes that no license or authorization of any kind has been given to the Respondent, and that the Respondent never had a business relationship with the Complainant.
The Panel finds no evidence that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name, and since the disputed domain name directs towards a parking page displaying sponsored links, which does not constitute a bona fide offering of goods, the Panel considers that the condition set out by paragraph 4(a)(ii) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which if found shall be evidence of the registration and use of the disputed domain name in bad faith.
(i) The disputed domain name has been registered in bad faith
Previous UDRP panels have considered that in certain circumstances when the complainant’s trademark is well known, such as the IKEA trademark, the respondent’s bad faith could be inferred (AT&T Corp. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1088, that establishes that “bad faith can be presumed based on the fame of the Complainant’s marks, such that the Respondent was aware or should have been aware of the Complainant’s well-known marks and claims of rights thereto”.
Furthermore, the Complainant’s trademark is based on an invented word which has no meaning in any language. According to a previous UDRP decision, where the complainant was also the Complainant, “it is actually likely that the fame of the trademark IKEA was the reason that decided the Respondent to register the disputed domain name”. See Inter IKEA Systems B.V. v. Domains By Proxy LLC/Getme Ikea, WIPO Case No. D.2012-0965.
Therefore, in the circumstances, the Panel concludes that the disputed domain name has been registered in bad faith by the Respondent.
In order to meet the requirement of paragraph 4(a)(iii) of the Policy, it is not sufficient to prove that the disputed domain name is registered in bad faith, it is also necessary to prove that the disputed domain name is being used in bad faith.
(ii) The disputed domain name has been used in bad faith
As previously indicated, the Respondent is likely aware of the existence of the Complainant’s trademark IKEA. Even more, Complainant sent a cease and desist letter by email to the Respondent, requesting the voluntary transfer of the disputed domain name and offering compensation for the expenses of registration and transfer fees, without receiving response. Previous panels have considered that the failure of a respondent to respond to a cease and desist letter can be considered relevant in the finding of bad faith. See News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. 2000-1623.
Furthermore, the Respondent used the disputed domain name to resolve to a parked pay per click web site, which should be considered as use in bad faith. In previous UDRP decisions, it was recognized that “the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use.” See Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258).
Finally, the Complainant claims to have justifiable suspicion that the disputed domain name has been used in relation to “watering hole attacks”, where an “attacker compromises a site likely to be visited by a particular target group, rather than attacking the target group directly. Eventually, someone from the targeted group visits the “trusted” site and becomes compromised1. The disputed domain name coincides with the internal site used by the Complainant for product development, and “watering hole attacks” use malware, although the Panel cannot find evidence of there currently being links to malware at the site. Previous UDRP decisions, such as Twitter, Inc. v. Moniker Privacy Services/accueil des solutions Inc, WIPO Case No. D2013-0062, state that distribution of malware demonstrates that a domain name has been registered and is being used in bad faith.
For all of these reasons, the Panel finds that the disputed domain name has been registered and is being used in bad faith. Therefore, the Panel considers that the condition set out by paragraph 4(a)(iii) of the Policy has been met by the Complainant.
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 <ikead2.com> be transferred to the Complainant.
Luis C. Schmidt
Date: July 26, 2013
1 SCHULTZ, Jaeson. Watering hole attacks, an attractive alternate to spear phishing. CISCO Blogs. May 6, 2013. Located at http://blogs.cisco.com/security/watering-hole-attacks-an-attractive-alternative-to-spear-phishing/