WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. Sirzee Enterprises, Phillip Sirota / WhoisGuard, WhoisGuard Protected
Case No. D2013-1147
1. The Parties
The Complainant is Inter IKEA Systems B.V. of Delft, Netherlands, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is Sirzee Enterprises, Phillip Sirota of Phoenix, Arizona, United States of America / WhoisGuard, WhoisGuard Protected of Los Angeles, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name, <futonsikea.com> (the “Domain Name”), is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2013. On June 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 28, 2013, the Registrar 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 the Complainant on July 5, 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 July 5, 2013. In response to a request of clarification from the Center, the Complainant filed a further amendment to the Complaint on July 9, 2013.
The Center verified that the Complaint together with the amendments 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 with the amendments to the Complaint, and the proceedings commenced on July 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2013.
The Center appointed Tony Willoughby as the sole panelist in this matter on August 14, 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.
At or shortly before the date of filing of the Complaint the Domain Name was registered to WhoisGuard, WhoisGuard Protect of Los Angeles, California, United States of America, a privacy service, and the registrar was NameCheap Inc. also of Los Angeles, United States of America. It subsequently transpired following the Center’s registrar verification requests that the current registrant is Sirtzee Enterprises, Phillip Serota of Phoenix, Arizona, United States of America and the current registrar is the Registrar. For the purposes of this decision the Panel proposes to treat WhoisGuard, WhoisGuard Protect and Sirtzee Enterprises, Phillip Serota as one and the same and to refer to them together hereafter as the “Respondent”.
4. Factual Background
The Complainant is a substantial retailer of household goods with a sales turnover in 2012 of in excess of EUR 27 billion. It has been trading internationally under the “Ikea” name (mainly through a franchising network) for many decades. “Ikea” is an acronym of the name of the founder of the business (Ingvar Kamprad), that gentleman’s home farm where he grew up (Elmtaryd, Sweden) and the name of the parish in which the farm resides (Agunnaryd, Sweden).
The Complainant is the proprietor of a large number of trade mark registrations around the world for the trade mark, IKEA, For present purposes it is only necessary to mention one of those registrations, namely United States Registration No. 1118706 IKEA (word mark, but with a “Mark Drawing Code” reading “Design plus words, letters, and/or numbers”) in classes 11, 20, 21, 24 and 27 for a wide variety of goods including sofas, couches and beds. The mark was applied for on March 14, 1977 and registered on May 22, 1979.
The Domain Name was registered on January 9, 2013 and is connected to a website, the homepage of which makes prominent reference to the Complainant’s IKEA brand. It lauds the excellence of the Complainant’s futons, but points out that one can obtain futons from other sources at a lower cost. It claims to be a fan site. To the side of the homepage is a legend in small print reading “This site is not affiliated with IKEA or IKEA.com”. At the foot of the homepage is a disclaimer (again in small print) reading: “IKEA is a registered trademark of Inter-IKEA Systems B.V. LEGALLY REQUIRED DISCLAIMER: This fan-run website is NOT related to IKEA, IKEA.com or the IKEA Group. Any and all links to IKEA.com are presented for reader convenience only and do not imply IKEA’s approval of this website and/or the modification of its products.” The page also featured prominent links to third party commercial websites. This is how the page appeared to the Panel when the Panel visited the site from the United Kingdom of Great Britain and Northern Ireland (“UK”) today (August 20, 2013).
The text on the screenshot from the Respondent’s website annexed to the Complaint is difficult to decipher, but appears to be different from that described above in that the space taken up by the first of the above quoted passages is replaced by an invitation to claim a free USD 1,000 gift card and the second of the above quotes is not visible; moreover, the links to the third party commercial websites are different.
The commercial links on the Respondent’s website visible to the UK visitor today are three in number, “Dreams”, “getlaidbeds.co.uk” and “futons-direct.co.uk”, all being UK retailers of beds.
On June 10, 2013 the Complainant’s representative wrote to the Respondent drawing the Respondent’s attention to the Complainant’s rights and seeking transfer of the Domain Name. Despite a reminder sent a week later, the Respondent never replied.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its IKEA registered trade mark (see details in section 4 above), that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The 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 Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
Apart from the “.com” top level domain identifier, which may be ignored for the purpose of assessing identity and confusing similarity under this element of the Policy, the Domain Name comprises the word “futons”, which is a description of one of the products sold by the Complainant, and the Complainant’s trade mark, IKEA. While, as can be seen from section 4 above, the cited registration is described not only as a word mark, but also as a design plus words etc., the design is effectively the word/name “IKEA” surrounded by an oval and a rectangle. The word/name, “IKEA”, is the dominant element of the mark.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trade mark.
C. Rights or Legitimate Interests
There can be no question but that the Respondent registered the Domain Name with the Complainant in mind. The text on the Respondent’s homepage makes express reference to the Complainant’s futons of which it claims to be an admirer.
As indicated in section 4 above, the Respondent’s website appears to have undergone changes since the date of the Complaint and the changes, being the addition of disclaimers disassociating the site from the Complainant, were no doubt intended to improve the Respondent’s position in this administrative proceeding. One of the disclaimers characterizes the Respondent’s website as a “fan-run website”.
To the Panel the “feel” of the Respondent’s website is not the “feel” of a fan site. To the Panel it is the “feel” of a pay-per-click parking page, the third party commercial links all being links generated by the nature of the Domain Name, i.e. links to third party retailers of beds (including futons). It is inconceivable to the Panel that a fan-run website would feature links to the websites of competitors of the subject of that fan’s adulation.
Whatever may be the appropriate characterization of the Respondent’s website, it has overtly commercial third party links to competitors of the Complainant and in the view of the Panel, the presence of the Complainant’s distinctive trade mark in the Domain Name will be likely to be a powerful source of attraction to the website.
The Complainant has cited authority for the proposition that respondents are to be taken to be responsible for the content of their websites even if they have had no direct hand in designing the content of the website in question. That may or may not be so. In the view of the Panel it depends upon the surrounding circumstances. However, in this case the debate is unnecessary as the new disclaimers make it clear that the Respondent runs the website.
In the Panel’s view whether the Respondent is to be taken to be a fan of the Complainant or whether it is to be taken as the operator of a commercial website, to use another’s trade mark in this way without permission and in a manner calculated to lead visitors to the Complainant’s competitors’ websites is neither fair use of the Domain Name nor a bona fide offering of goods or services such as to give rise to rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
The Complainant contends that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Paragraph 4(b)(iv) of the Policy reads:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The Complainant contends that the operator of the website (whether or not it be the Respondent) is using the Domain Name to attract visitors to the website, visitors interested in futons of the Complainant. The operator of the website then, for commercial gain, diverts those visitors by way of the third party commercial links to competitors of the Complainant.
As indicated above, the current version of the website visible to the Panel makes it abundantly clear that the Respondent is the operator of the website. In the view of the Panel, operators of websites do not normally feature third party commercial links on their websites for no benefit. In the view of the Panel the overwhelming probability is that the Respondent is deriving (or hoping to derive) a commercial gain from the third party links.
The fact that the Respondent failed to respond to the Complainant’s representative’s letter of June 10, 2013 (see section 4 above) combined with the failure of the Respondent to respond to the Complainant’s contentions suggests strongly to the Panel that the Respondent has no innocent explanation for its selection of the Domain Name.
In the absence of any obvious alternative explanation, the Panel finds on the preponderance of the evidence before it that the Respondent registered the Domain Name in bad faith and is using it in bad faith within the meaning of paragraph 4(b)(iv) 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, <futonsikea.com>, be transferred to the Complainant.
Date: August 20, 2013