WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. Registration Private / Todd Cunningham
Case No. D2014-0804
1. The Parties
The Complainant is Inter IKEA Systems B.V. of Delft, Netherlands, represented by Studio Barbero, Italy.
The Respondent is Registration Private of Scottsdale, Arizona, United States of America (“US”) / Todd Cunningham of Dana Point, California, US.
2. The Domain Names and Registrar
The disputed domain names <ikeakitcheninstallerorangecounty.com>, <ikeakitcheninstallerorangecounty.info>, <ikeakitcheninstallerorangecounty.net> and <ikeakitcheninstallerorangecounty.org> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2014. On May 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 16, 2014, 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 May 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2014. The Center received informal email communications from the Respondent on June 15 and 17, 2014.
The Center appointed Ian Lowe as the sole panelist in this matter on June 23, 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
The Complainant is part of the privately held Swedish-Dutch IKEA group. The history of IKEA dates back to the early 1940s. The first IKEA store opened in Sweden in 1958. IKEA is now a leading worldwide brand. There are 345 IKEA stores in 42 countries in Europe, North America, Middle East, Asia Pacific and the Caribbean. Annual sales in 2013 for all IKEA stores were more than USD 37.38 billion.
The Complainant owns over 1,400 international and national trademark registrations worldwide including Community trademark number 00109652 for the word mark IKEA registered on October 1, 1998 and United States trademark number 1661360 IKEA registered on October 22, 1991.
The Domain Names were registered by the Respondent on September 27, 2012. Since registration they have been redirected to the Respondent’s website at “www.plspros.com” which promotes the broad range of services of the Respondent’s company, PLS Pros, of craftsmanship, remodeling and furniture assembly, including the installation of kitchens. The mark IKEA is used in the source script of the website, both as part of the title of the home page and as a meta tag and keyword.
In reply to a cease and desist letter sent to the Respondent, the Respondent replied “I own them you want to buy them make an offer”.
5. Parties’ Contentions
The Complainant contends that the Domain Names are confusingly similar to its IKEA trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Respondent registered and is using the Domain Names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not file a formal reply to the Complainant’s contentions. However, in response to the Center’s email notifying the Respondent’s default, the Respondent replied “do what you want. I called go daddy and gave up all those domains, I don’t own them anymore.” In further email exchanges with the Center the Respondent made similar statements.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has undoubted, uncontested rights in the trademark IKEA both by virtue of its numerous trademark registrations around the world and as acquired through worldwide use for over 50 years. The Domain Names comprise the entirety of the IKEA mark together with the words “kitchen installer Orange County” and their respective generic Top-Level Domain (“gTLD”) suffix. The descriptive term “kitchen installer Orange County” does not detract from the distinctiveness of the IKEA mark. Accordingly, the Panel finds that each of the Domain Names is identical or confusingly similar to a mark or marks in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent can have no rights or legitimate interests in the Domain Names. The Respondent is not authorised in any way by the Complainant to use the IKEA mark as part of the Domain Names. In the Panel’s view it is quite clear that the Respondent registered the Domain Names intending them to be associated with the Complainant’s products and with a view to attracting Internet users to the Respondent’s website promoting the services of installing kitchens (including kitchens manufactured by the Complainant) and other similar activities.
It is well established in numerous UDRP decisions that the fact that a respondent’s activities include some dealings with the complainant’s products does not as such give rise to rights or legitimate interests in domain names comprising the complainant’s trademarks.
The Respondent has chosen not to reply formally to the Complaint or to make out any claim to any relevant rights or legitimate interests or otherwise to displace the prima facie case made out by the Complainant. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
C. Registered and Used in Bad Faith
In light of the nature of the Domain Names and the use made of them by the Respondent, there can be no doubt that the Respondent registered them with the Complainant and its products in mind. In the Panel’s view, the Respondent has used the Domain Names to attract Internet users to the Respondent’s website and to promote the Respondent’s construction and kitchen installation services for commercial gain, the use of the IKEA trademarks falsely suggesting that the Respondent and the Respondent’s business is in some way endorsed by the Complainant. The Respondent has intentionally created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Domain Names.
Accordingly, the Panel finds that the Domain Names have been registered and are 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 Domain Names <ikeakitcheninstallerorangecounty.com>, <ikeakitcheninstallerorangecounty.info>, <ikeakitcheninstallerorangecounty.net> and <ikeakitcheninstallerorangecounty.org> be transferred to the Complainant.
Date: July 4, 2014