WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. izumi akiyama / Whois Privacy Protection Service by MuuMuuDomain
Case No. D2013-1164
1. The Parties
The Complainant is Inter IKEA Systems B.V., Delft, Netherlands, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Izumi Akiyama / Whois Privacy Protection Service by MuuMuuDomain, of Yokohama, Japan.2. The Domain Name and Registrar
The disputed domain name <ikea-market.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 June 28, 2013. On June 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 1, 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 July 1, 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 2, 2013.
On July 1, 2013, the Center transmitted an email to the parties in both Japanese and English language regarding the language of the proceeding. On July 2, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2013. An informal email communication was received from the Respondent on July 2, 2013.
The Center appointed Erica Aoki as the sole panelist in this matter on August 7, 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.
Despite the fact that the language of the Registration Agreement is in Japanese, the Panel, in consideration with the Complainant’s request and according to paragraph 11 (a) of the Rules, determines that the language of these administrative proceedings shall be the English language.
The Panel finds inappropriate to conduct the proceedings in Japanese as 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.
Considering the overall circumstances of this particular case, the Panel determines that the language of the administrative proceeding is English.
4. Factual Background
The Complainant is the owner of a unique concept for the sale of furniture and homefurnishing products marketed under the trademark IKEA and is the worldwide
IKEA franchisor. There are 338 IKEA stores in 38 countries operating under
IKEA franchise agreements and 776 million visitors embarked on the IKEA
shopping experience between September 1, 2011 and August 31, 2012.
The Complainant has registered the trademark IKEA and incorporated it in more than 300 generic Top-Level Domains and country code Top-Level Domains worldwide, among these; <ikea.com> and<ikea.jp>. The IKEA websites have had over 1.1 billion visitors.
The trademark IKEA is one of the most well-known trademarks in the world, due in part to decades of extensive advertising and is listed in the top 500 of the best known brands in the world and the Reputation Institute nominated the IKEA brand to be number 35 on their list of “The World’s Most Reputable Companies”.
The disputed domain name <ikea-market.com> was registered on January 14, 2013.
5. Parties’ Contentions
The trademark IKEA is one of the most well-known trademarks in the worldand the IKEA brand has been recognized as being famous in certain jurisdictions.
The Complainant submits that the mark IKEA is in possession of substantial inherent and acquired distinctiveness. The Complainant states that the provisions of Article 6bis of the Paris Convention for protection of Industrial Property (“PC”), confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), the statute of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered). Thus, the protection for the IKEA trademark goes far beyond furniture and goods similar to furniture.
The Complainant asserts that the disputed domain name including the term IKEA, is confusingly similar to the Complainant’s trademark IKEA, that the Respondent has no rights or legitimate interests to the disputed domain name and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not formally reply to the Complainant’s contentions.
The Panel notes here that the Respondent’s email of July 2, 2013, does not dispute the Complainant’s assertions.
6. Discussion and Findings
The Complainant must satisfy the requirements specified under paragraph 4(a) of the Policy:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in respect of 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 disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based on the facts presented by the Complainant, this Panel finds that the disputed domain name is confusingly similar to a mark in which the Complainant has rights under paragraph 4(a)(i) of the Policy. The Panel finds that there is no doubt that the disputed domain name is confusing similar to the Complainant’s registered trademark, as the disputed domain name includes the Complainant’s IKEA marks in its entirety.
B. Rights or Legitimate Interests
The Panel finds the following facts on the record to be present to these proceedings.
- The Respondent is in default and thus has made no affirmative attempt to show any rights or legitimate interests in the disputed domain name;
- The Policy indicates that a registrant may have a right or legitimate interest in a domain name if it was making use of the disputed domain name in connection with a bona fide offering of goods or services prior to notice of the dispute;
- The Respondent’s knowledge of the Complainant’s right is presumed since it is selling Complainant’s products and its competitor’s products on its website;
- The Respondent is in no way connected with the Complainant and has no authorization to use any of the Complainant’s trademarks; and
- There is no evidence that the Respondent is or was commonly known by the disputed domain name as an individual, business or other organization.
Thus, in this Panel’s view, the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
Further, the Panel notes that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use activity.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy and that the Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to the Respondent’s website or other online location by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s site or of a product or service offered on the Respondent’s site.
In this Panel’s view, there is no doubt that the Respondent was aware of the Complainant’s rights in the IKEA mark at the time the disputed domain name was registered, indicating that such registration was made in bad faith.
The Panel finds that the Respondent registered the disputed domain name with the intention of obtaining benefits and harming the Complainant’s reputation in the market.
Also, based on the undisputed allegations, the registration and use of the disputed domain name by the Respondent is in order to divert Internet users seeking information about the Complainant.
Accordingly, and as also supported by the Panel’s findings above under the second element of the Policy, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith under paragraph 4(a)(iii) 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 disputed domain name <ikea-market.com> be transferred to the Complainant.
Date: August 21, 2013