WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. Dmitriy Daraselia, Knopka Desing Inc.
Case No. D2013-2192
1. The Parties
The Complainant is Inter IKEA Systems B.V. of LN Delft, Netherlands, represented by Studio Barbero, Italy.
The Respondent is Dmitriy Daraselia, Knopka Desing Inc. of New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ikeakitcheninstalation.com is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2013. On December 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2014.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on January 31, 2014. 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
According to information supplied by the Complainant, it is a supplier of home products and furnishings including kitchen systems. The name and trademark IKEA are derived from the initials of the Swedish founder Ingvar Kamprad, followed by those of his Elmtaryd farm and his village, Agunnaryd. The Complainant’s company was founded in the 1940s and has grown to have, for example, 345 IKEA Systems stores in 42 countries in Europe, North America, the Middle East, Asia-Pacific and the Caribbean. The company has an online presence at “www.ikea.com” and 200 other websites, and received some 1.2 billion online visits during 2013.
The Complainant holds more than 1400 trademarks for IKEA, including the following:
IKEA, Community Trademark, Office for Harmonization in the Internal Market (OHIM), registered April 3, 2002, registration No. 001672997, class 35;
IKEA, Community Trademark, OHIM, registered October 1, 1998, registration No. 001672997, classes 2, 8, 11, 16, 18, 20, 21, 24, 25, 27, 28, 29, 30, 31, 35, 36, 39, 41, 42;
IKEA, Community Trademark, OHIM, registered May 4, 2006, registration No. 000705343, classes 9, 35, 38;
IKEA (design), International Registration, registered April 24, 2007, registration No. 926155, classes 16, 20, 35, and 43;
IKEA, United States Patent and Trademark Office (USPTO), registered August 5, 2003, registration No. 2747517, class 9;
IKEA, USPTO, registered October 22, 1991, registration No. 1661360, classes 2, 18, 25, 29, 30, 31, 35, 36, 39, 41;
IKEA, USPTO, registered June 23, 1987, registration No. 1443893, classes 8, 11, 16, 20, 21, 24, 27, 28;
IKEA, USPTO, registered November 25, 1986, registration No. 1418733, class 42.
No information is available about the Respondent except for the details submitted to the Registrar for the purpose of registering the disputed domain name, which appears to have been registered on January 30, 2007. It is noted that the spelling of Knopka Design Inc., appearing on certain websites is different from Knopka Desing Inc., the name of the registrant.
5. Parties’ Contentions
The Complainant has submitted copies of online documentation in support of its claim of rights in the trademark IKEA, sourced from the OHIM website for the Community Trademark registrations, the WIPO ROMARIN website for the International registration, and the Trademark Electronic Search System (TESS) for the USPTO registrations.
The Complainant contends that its brand and trademark are famous, and has produced a copy of the Interbrand global ranking of brands, showing it to have climbed in ranking from 38th in 2007 to 26th in 2013, and other supporting data.
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 generic Top Level Domain (gTLD) “.com” should be disregarded in the determination of confusing similarity. It is contended that the addition of generic or descriptive terms to a trademark to form a domain name, in this instance the addition of “kitchen” and “instalation” (a misspelling of “installation”) to IKEA does not negate confusing similarity with the trademark.
The Complainant further contends that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent is not a licensee or authorized agent of the Complainant and has not been authorized by the Complainant to use the trademark IKEA in the disputed domain name. The Complainant is not aware of any evidence to the effect that the Respondent, as an individual or business, might be commonly known by a name corresponding to the disputed domain name. The Respondent’s use of the disputed domain name is not bona fide, noncommercial or fair since it is to divert the Complainant’s prospective customers to the Respondent for the purposes of the supply of competing services or goods.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The trademark IKEA is well-known, original and distinctive and it is inconceivable that Respondent was unaware of it at the time of the registration of the disputed domain name. The Respondent’s use of the disputed domain name, in the field of kitchen installation for which the Complainant is a world leader, is further evidence of the Respondent’s awareness of the Complainant’s trademark. It is contended that according to previous decisions under the Policy, the registration of a domain name containing a well-known trademark, or a trademark of which the respective respondent must have been aware, may in and of itself be evidence of registration in bad faith.
The Complainant contends that the Respondent is using the disputed domain name intentionally to attract Internet users for commercial gain to the corresponding website. Internet users are attracted by confusion owing to the Respondent’s use of the Complainant’s trademark in the disputed domain name. Visitors are likely to believe mistakenly that a relationship exists between the Respondent and the Complainant. Once at the Respondent’s website they are offered goods and services to the Respondent’s commercial advantage. These include the services of Home Design US llc. and Knopka Design Inc., and the claim on the website: “We provide IKEA kitchen installation service in New York, New Jersey and Connecticut areas”.
Having become aware of the grounds for the dispute after the Complainant had sent a cease and desist letter, and not before April 2013, the Respondent placed a disclaimer on the website, which read: “Disclaimer: Our company is independent from IKEA, we are not affiliated with any of their stores. IKEA is a registered trademark of Inter-IKEA Systems B.V. Home Design US llc. is independent Ikea kitchen installer”. The Complainant contends that the disclaimer, being at the bottom of the website page, is not seen by visitors until after they have scrolled down the page and after their initial diversion to the Respondent’s website. It is submitted partly with reference to previous decisions under the Policy that the placement of a disclaimer does not remedy the initial diversion to the website.
The Complainant states that it sent cease desist letters to the Respondent dated February 11, 2013, February 19, 2013, March 14, 2013 and April 10, 2013, setting out the Complainant’s rights in the IKEA trademark and requesting transfer of the disputed domain name. No reply was received. The Complainant submits that, in the light of previous decisions under the Policy, failure to respond to a cease and desist letter can be evidence of bad faith and may amount to an admission of the Complainant’s allegations by the Respondent.
The Complainant has cited a number of previous cases under the Policy, some involving the Complainant, that it wishes the Panel to consider as having possible precedential value.
The Complainant requests the Panel to order the transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
When considering confusing similarity the generic Top Level Domain (“gTLD”) suffix, in this instance “.com”, may usually be neglected.
The disputed domain name, <ikeakitcheninstalation.com, commences with “ikea” which is identical to the Complainant’s trademark and is followed by the clearly discernible words “kitchen” and “instalation”. It is accepted according to the evidence that the trademark IKEA is effectively an invention having no dictionary meaning and being of no significance other than as the long-established and valuable trademark of the Complainant.
In the disputed domain name the trademark IKEA is followed by two words that, according to the evidence, aptly describe an area of household goods and services for which the Complainant is well-known, namely kitchen installations. The misspelt word “instalation” in the disputed domain name is found by the Panel to evoke convincingly the more conventional spelling of “installation”. The placement of the expression “kitcheninstalation” after IKEA is found not to create any distinction from the Complainant’s trademark, but on the contrary, by creating a reference to the Complainant’s business activities, to increase the perception of identity with the Complainant. The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark within the meaning of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted that it has no connection with the Respondent and has not in any way authorised or permitted any use of the Complainant’s trademarks by the Respondent. The Complainant has addressed the Respondent’s possible reply in the terms of paragraph 4(c) of the Policy by stating that the Complainant is not aware of any evidence that the Respondent might be commonly known by a name corresponding to the disputed domain name and that the Respondent’s use of the disputed domain name is not bona fide, noncommercial or fair because its purpose is to divert the Complainant’s prospective customers to the Respondent’s website for commercial purposes.
Paragraph 4(c) of the Policy provides for the Respondent to establish rights or legitimate interests in a disputed domain name by demonstrating:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The above circumstances are illustrative and rights or legitimate interests may be established otherwise to the satisfaction of the Panel.
The Respondent has not responded and the Panel cannot contemplate any realistic circumstance whereby the Respondent could succeed in establishing rights or legitimate interests in the disputed domain name. The Panel finds for the Complainant under of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 website or location or of a product or service on your website or location.”
The Complainant has produced evidence in the form of screenshots of variants of the website to which the disputed domain name resolves. These display the company name Knopka Design Inc., in a logo-style design, at the upper left. They are illustrated with pictures of kitchens in the built-in style, with liberal references to the IKEA trademark and name, for example: “IKEA Kitchen Pictures”, “IKEA Hardware”, “IKEA Package Appliances”. References to other well-known trademarks also appear, for example “Bosch Package Appliances”, “Electrolux Package Appliances”. A page marked “Contact Us” enables customers to submit their contact details and includes the sentence “Our specialist will contact you shortly”; by inference this means a Knopka Design Inc., specialist.
The Panel finds, on the evidence and on the balance of probabilities, that the disputed domain name is in use for the purpose of attracting Internet users who are likely to be searching for the authentic website of the Complainant, and that the Respondent’s purpose in doing so is to attract potential customers to its business for commercial gain. The Respondent’s means of attracting visitors relies in turn on the attractiveness of the Complainant’s well-known trademark and the goodwill embodied in that trademark. The Panel finds the Respondent’s conduct to constitute use of the disputed domain name in bad faith.
The Panel is satisfied on the balance of probabilities, having regard to all the evidence, that the disputed domain was registered for the purpose for which it has been used. Registration and use of the disputed domain name in bad faith are found in the terms of paragraph 4(b)(iv) and paragraph 4(a)(iii) of the Policy. The Respondent’s failure to reply to the Complainant’s cease and desist letter, which was sent on four dates, is found to have been an aggravating factor in bad faith in this case (Ebay, Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632).
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, <ikeakitcheninstalation.com, be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: February 14, 2014