WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. WhoisGuard Protected / Andreas L / Andreas Leino
Case No. D2013-1150
1. The Parties
The Complainant is Inter IKEA Systems B.V. of Delft, the Netherlands, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is WhoisGuard Protected of California, United States of America / Andreas L / Andreas Leino of Gimo, Sweden.
2. The Domain Name and Registrar
The disputed domain name <ikeagiftcard-free.info> 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 disputed domain name. On June 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 June 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 July 1, 2013.
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 July 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2013.
The Center appointed Antony Gold as the sole panelist in this matter on August 1, 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 a retailer and franchisor operating in a number of jurisdictions internationally. As set out in greater detail below, it has trade mark protection in a number of classes for the IKEA mark. It also has an extensive portfolio of domain names which incorporate the term “ikea”.
The disputed domain name <ikeagiftcard-free.info> was registered on December 29, 2012. As at June 24, 2013, at least (this being the date on the screen print of the home page provided by the Complainant), the webpage at the site operated by the Respondent contained a notice “Oops! This Offer is Not Available in Your Area. Redirecting to another offer….”. A window then opened into a third party website promoting a competition offering various electronic products as prizes.
5. Parties’ Contentions
The Complainant asserts that;
(1) The disputed domain name is identical or similar to a trade mark in which it has rights.
The Complainant says that the name IKEA is an invented word, being an acronym comprising the initials of the founder’s name, the farm where he grew up and his home parish.
In support of its claim to have rights in IKEA, the Complainant says it has more than 1500 trade mark registrations covering more than 80 countries and 21 classes of goods and services for the mark IKEA and for variants which incorporate IKEA. The Complainant says it has several trade registrations valid in the United States with the most senior dated May 22, 1979. It also says it has 38 IKEA stores in the United States. The Complainant says that, in the 12 month period commencing September 1, 2011, 776 million visitors “embarked on the IKEA shopping experience”. It says that 200 million copies of its IKEA catalogue are printed every year in 62 editions and 29 languages.
The Complainant has also registered over 300 domain names which incorporate the term “ikea”, including <ikea.com>. It says that its websites had over 1.1 billion visitors in 2012 and that the brand IKEA features in lists of very well-known and reputable brands. As a result of all of the above, the Complainant says it has extensive trade mark rights which give it a broad scope of protection against the misuse of its brand.
The Complainant says that the disputed domain name <ikeagiftcard-free.info> is confusingly similar to its trade marks for IKEA. It says that the addition of the top level domain, namely “.info”, should be disregarded for the purposes of determining the confusing similarity between the trade mark and the disputed domain name. It also says that persons seeing the disputed domain name, even without being aware of the content, are likely to think that the disputed domain name is owned by the Complainant or is in some way connected with it. Lastly, it says that the addition of the suffixes “giftcard” and “free“ to its IKEA mark do not detract from the overall impression of association with the Complainant. Indeed, it says that the addition of “giftcard” actually strengthens that impression because the Complainant offers for sale gift cards on its website. For these reasons, the Complainant says that the disputed domain name must therefore be considered confusingly similar to the Complainant’s trade mark.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant says that the Respondent does not have any trade marks or trade names corresponding to the disputed domain name, nor is there any other indication that the Respondent has been using the term “ikea” in such a way as to give the Respondent any rights or legitimate interests in the disputed domain name. It says that no license or other authorisation has been given by the Complainant to the Respondent to use any of its IKEA trade marks. It explains that the Respondent has never had a business relationship with the Complainant and contends that there is no other known indication that the Respondent uses the name IKEA as a company name or has any other legal right to the name IKEA.
The Complainant says that its reputation in the IKEA marks is such that it is highly unlikely that the Respondent would not have known of the Complainant’s rights in the IKEA marks, or some of them, as at the time of registration of the disputed domain name and that the Respondent registered the disputed domain name because it was aware that the fame of the Complainant’s IKEA brand would drive traffic to its website which is then redirected to a third party website.
The Complainant says that the use by the Respondent of the disputed domain name for the purpose to which it has been put is not using the disputed domain name in connection with a bona fide offering of goods and services. The Respondent’s use of the disputed domain name is accordingly tarnishing the Complainant’s IKEA marks. In this respect, the Complainant cites another case in which it has been involved, Inter Ikea Systems B.V. v. Domain Administrator firstname.lastname@example.org, WIPO Case No. D2011-1934, in which the panel held that a website comprising parking pages offering goods and services of the Complainant’s competitors did not constitute a bona fide offering of goods and services. The Complainant says that the same point arises in this case.
(3) The disputed domain name was registered and is being used in bad faith.
The Complainant asserts that IKEA is a well-known trade mark with a substantial and widespread reputation globally. It says that IKEA is a purely invented word mark and is not a word which traders would legitimately choose unless they were seeking to create an impression of an association with the Complainant.
The Complainant says that the Respondent’s use of the disputed domain name is solely in order to generate income for the Respondent by increasing the traffic which it can redirect to the third party website and that it is the use of the Complainant’s IKEA mark within the disputed domain name which will attract visitors to the Respondent’s website. For this reason, the Complainant says that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. The Complainant cites a number of other similar cases in which it has been involved successfully, including Inter Ikea Systems B.V. v. Domain Administrator email@example.com, WIPO Case No. D2011-1934. In that case the panel found that the use of a third party’s trade mark in a domain name which pointed to a website comprising a parking page containing pay per click advertisements was evidence of bad faith use of the type described above. The Complainant says that the same reasoning should be applied in this case.
The Complainant also says that it never had any response to a letter sent by it to the Respondent prior to the commencement of these proceedings seeking a voluntary transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 14(b) of the Rules provides that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint;
(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 with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant appended to its Complaint details of a United States trade mark registration dated March 14, 1977 for the word mark IKEA. This mark coupled with the evidence of the Complainant’s established and extensive repute in the IKEA mark, as outlined above, suffice to give the Complainant rights in the trade mark IKEA for the purpose of this element of the Policy.
When assessing confusing similarity, it is material to have regard to both the inherently distinctive character of the IKEA mark and its repute. The greater the repute and the distinctive character of the IKEA mark, the more weight is attached to the “ikea” element of the disputed domain name and the less significance is attached to the additional element “giftcard-free”. This is because this term does not serve to distinguish the disputed domain name from the trade mark of the Complainant. Incorporation of “giftcard” does not distinguish the disputed domain name from the Complainant’s trade mark as the Complainant offers for sale gift cards on its website. It is difficult to ascribe any particular meaning to the word “free” in this context other than to note that the offer of free products or services is often used as a means of attracting the attention of prospective customers.
A determination of whether a disputed domain name is confusingly similar to a trade mark or service mark does not only assess whether the mark and disputed domain name are visually and/or aurally similar but also a number of additional factors, as outlined below. Adding additional words to a mark which comprises the first element of a domain name does not necessarily render the domain name and mark dissimilar even if the words are such as to render the mark, quantitatively, only a small part of the domain name. This is because the determination of confusing similarity also considers whether the added words are purely descriptive (as they are in this case), whether the words serve to distinguish the disputed domain name from a complainant’s mark (which, on these facts, they do not) and whether the repute and nature of a complainant’s mark is such as to render the mark the dominant part of the disputed domain name from a qualitative, if not quantitative, perspective. The Complainant has established that it has considerable repute in the mark IKEA and that the mark is inherently distinctive. The Complainant’s mark comprises, qualitatively, the distinctive component of the disputed domain name. Having regard to all of the above, the Panel finds that the disputed domain name is confusingly similar to IKEA, being a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel accepts the Complainant’s assertion that the Respondent does not appear to have any trade marks or other rights corresponding to the disputed domain name. The Respondent has had an opportunity to correct this assertion, if it regarded it as incorrect, by filing a Response to the Complaint but has not done so.
The Panel also accepts, for the same reason, the Complainant’s claim that it has not granted a license or given any other authorization to the Respondent in respect of its IKEA trade mark and that it is neither an authorized dealer in the Complainants’ products nor has it ever had a business relationship with the Complainant.
Use of a domain name which incorporates a trade mark of a complainant in order to point to a website intended to generate income for the registrant does not inevitably prevent a respondent from having a legitimate interest in the disputed domain name. As the panel said in Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364 which related to use of a domain name in connection with a parking page with sponsored links, it was necessary to consider whether a respondent had used the domain name with the complainant’s marks in mind and with a view to taking unfair advantage of those marks. In this case, on the basis of the screen print of the website to which the disputed domain name has pointed and the subsequent pages to which the user is taken, there is nothing which would explain the Respondent’s decision to incorporate the trade mark IKEA into the disputed domain name other than in order to increase traffic to its website which was then redirected to the third party site. In this respect, the Panel accepts the Complainant’s submission that the choice of disputed domain name by the Respondent in this case is deliberate and not fortuitous.
There is accordingly no evidence of any right or legitimate interest on the part of the Respondent which might justify the registration and use of the disputed domain name incorporating the mark IKEA. The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
One of the grounds on which bad faith registration and use can be founded is set out at paragraph 4(b)(iv) of the Policy which provides that there is evidence of bad faith registration and use when a respondent has intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
The incorporation of a well-known mark into a domain name in order to attract visitors to a commercial website and boost traffic and thereby income can amount to bad faith use of this type. The likelihood of confusion is caused by the choice of a domain name which correlates closely to a mark of the Complainant, rather than by the website content. As the panel said in the Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364 case mentioned above, “The confusion that is usually relevant here is the confusion that draws the Internet user to the respondent’s website in the first place (for example, confusion that draws the Internet user to type the domain name into his Internet browser). It does not matter that when the Internet users arrives at the pay-per-click site that it then becomes clear that the website is unconnected with the trade mark holder”. In this Panel’s view, for the purpose of considering bad faith registration and use, there is no difference in principle between the parking page form of a website and a holding page which redirects the user to a third party site promoting a competition. In both cases, the motive in selecting and using a domain name which incorporates the trade mark of a well-known brand is exactly the same, namely to use the fame of the brand in order attract users to the website, almost invariably for the purpose of generating income for the respondent.
The disputed domain name was registered relatively recently. It is reasonable to suppose that it was registered for the purpose to which it has been put, as described by the Complainant.
Accordingly, the repute of the Complainant’s IKEA marks, the use to which the Respondent’s website has been put and the unwillingness and/or inability of the Respondent to attempt to justify its conduct by responding to the letter sent to it by the Complainant’s representative or to the Complaint brings the conduct complained of within paragraph 4(a)(iii) of the Policy. As a result, the Panel finds that the disputed domain name was registered and is being 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 <ikeagiftcard-free.info> be transferred to the Complainant.
Date: August 15, 2013