WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. Domain Admin, PrivacyProtect.org / Juan Pablo Gallego Rich
Case No. D2014-1580
1. The Parties
Complainant is Inter IKEA Systems B.V. of Delft, the Netherlands, represented by Studio Barbero, Italy.
Respondent is Domain Admin, PrivacyProtect.org of Nobby Beach, Queensland, Australia / Juan Pablo Gallego Rich of Santiago, Chile.
2. The Domain Name and Registrar
The disputed domain name <lonasikea.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 15, 2014. On September 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 2014, 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 Complainant on September 17, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 19, 2014.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on September 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2014.
Email communications were received from Respondent on September 19, 23 and 29, 2014 and October 1, 2014. Email Communications were received from "Ali Girgin" on September 18, 2014 and "Mehmet Ali Girgin" on October 7, 2014.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on October 29, 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
Complainant claims to be the deviser of the trademark IKEA, an acronym comprised of the initials of the company's founder (Ingvar Kamprad), and the initials of the farm (Elmtaryd) and parish (Agunnaryd), where he grew up.
Complainant contends to have been selling furniture under the IKEA trademark since 1951, and that the business has grown to include 316 IKEA stores in 42 countries around the world. Annual sales in 2013 for all IKEA stores surpassed $ 37.38 billion, with official IKEA websites visited over 1.23 billion times over 2013.
Complainant owns many trademark registrations for the IKEA mark in a number of jurisdictions, including trademarks applicable in Chile, the United States, and internationally. The marks include Chilean trademark registration no. 723801, registered on April 22, 2005; Chilean trademark registration no. 723311, registered on April 15, 2005; Chilean trademark registration no. 803632, registered on July 14, 2007; Chilean trademark registration no. 603822, registered on September 24, 2001; US trademark registration no. 2747517, registered on August 5, 2003; US trademark registration no. 1661360, registered on October 8, 1991; US trademark registration no. 1443893, registered on June 23, 1987; US trademark registration no. 1418733, registered on November 25, 1986; and International trademark registration no. 926155, registered on April 24, 2007.
Respondent registered the disputed domain name <lonasikea.com> on November 12, 2012.
5. Parties' Contentions
Complainant contends that the disputed domain name is confusingly similar to Complainant's IKEA mark, that Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
Respondent did not formally reply to Complainant's contentions. In his various email communications to the Center, Respondent has contended that he is not in fact the "owner" of the disputed domain name but was only hired as a web designer by "Mehmet Ali Girgin" to create the website at the disputed domain name. On September 18, 2014, the Center received an email communication from "Ali Girgin" claiming, "I don't using domain name IKEA. I am only using…Lonasikea." On October 7, 2014, the Center received an email from "Mehmet Ali Girgin" stating, "I AM THE OWNER OF THE WEB PAGE…["]www.lonasikea.com["]...JUAN PABLO GALLEGO RICH my employment web page designer you do not disturb it."
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed, Complainant must prove each of the following:
(i) The disputed domain name is identical or confusingly similar to a trademark or a service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Preliminary issue: Respondent Identity
The Rules define "Respondent" as "the holder of a domain-name registration against which a complaint is initiated." Respondent has been named by the Registrar as the holder of the disputed domain name's registration. As such, the Panel finds it appropriate that he be named as the respondent to this administrative proceeding. However, the email communications discussed above have indicated that "Mehmet Ali Girgin" appears to be the beneficial owner of the disputed domain name. As such, the references to Respondent hereinafter shall also apply to Mr. Girgin.
B. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the trademark IKEA (and related marks). The record shows that Complainant has owned registered trademark rights in IKEA since at least 1987, more than 25 years before the disputed domain name's registration on November 12, 2012.
The disputed domain name incorporates the IKEA mark in its entirety with the addition of the word "lonas". "In most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to that mark." Research in Motion v. One Star Global LLC, WIPO Case No. D2009-0227. "Lonas" refers to a type of fabric in Spanish, and it is a descriptive or generic term when used in connection with products that involve textile fibers and does not add any distinguishing element to the disputed domain name. Previous UDRP panels have found that the use of a word like "fabric" immediately after Complainant's mark is not enough to eliminate confusion between the disputed domain name and the trademark, but rather strengthens the association between the disputed domain name and Complainant. See Kravet Inc. v. Laksh Internet Solutions Private Limited, WIPO Case No. D2008-0658; see also Alcantara S.p.A. v. Asia pacific construction, WIPO Case No. D2008-0846. Furthermore, the addition of the top level domain ".com" is also non-distinctive because a top level domain is required for the registration of a domain name.
The Panel finds that the disputed domain name is confusingly similar to the IKEA mark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
C. Rights or Legitimate Interests
Complainant must show a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, which Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Respondent has used the IKEA mark without authorization throughout the website connected to the disputed domain name and has not disclosed to Internet users that <lonasikea.com> is not authorized or licensed by Complainant to use the IKEA trademark or to register and use the disputed domain name. Respondent's website also has additional content which misleads Internet users into believing the activity on the site is affiliated with, or approved by, Complainant. In particular, the website offers visitors the opportunity to become distributors of its exclusive trademark in Chile, the IKEA trademark is featured on the site's club card, and the IKEA trademark is misappropriated in the pages and catalogues available on the site. It is clear that Respondent is attempting to take unfair advantage of Complainant's trademark to promote its own business, by creating the impression that the website at <lonasikea.com> is an authorized IKEA website and making it likely that Internet users would be confused by the use of the trademark in the disputed domain name.
Complainant claims that it did not authorize or license the use of the IKEA mark to Respondent, there is no disclaimer regarding the absence of affiliation with Complainant on the website, and that Respondent has no proprietary or contractual rights in any registered trademark corresponding in whole or in part of the disputed domain name. Complainant discusses the possibility that there may be fair use of the IKEA trademark to identify genuine IKEA products for resale, but Respondent was not given explicit authorization to do so under a domain name that fully incorporates Complainant's trademark. See X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207. The Panel is satisfied that there is no indication that Respondent was commonly known by the disputed domain name or that it has used the disputed domain name for a bona fide offering of the goods or services.
Respondent has filed no formal Response,and there is nothing in the case file that indicates that Respondent has a right or legitimate interest in the disputed domain name. The Panel finds there is no evidence in the record to indicate that Respondent is associated or affiliated with Complainant or that Respondent has any other rights or legitimate interest in the mark IKEA. The Panel also finds that there is no evidence that Respondent is engaged in a bona fide offering of goods or services, Respondent's use of the disputed domain name is a legitimate noncommercial or fair use, or that Respondent is commonly known by the disputed domain name.
The Panel finds that Complainant has successfully presented an unrebutted prima facie case, and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
D. Registered and Used in Bad Faith
Complainant contends that the IKEA trademark is a world-famous brand. A copy of a report of a recent study by Interbrand, a leading brand-metrics company, was attached to the complaint as an exhibit. At the time of the registration of the disputed domain name, this report ranked the IKEA trademark as the 28th most valuable brand in the world, with an estimated value of USD 12.80 billion.
The evidence submitted by Complainant sufficiently shows that the IKEA mark is well-known worldwide. The record also shows that Complainant owns trademark rights in IKEA that pre-date the registration of the disputed domain name, which contains Complainant's trademark in its entirety. Given the international recognition of Complainant's trademarks, the Panel finds that Respondent was likely aware of Complainant's rights in the trademark IKEA when registering the disputed domain name. The use of both word and figurative IKEA trademarks on the website confirm this awareness at the time of registration. The registration of the disputed domain name, which incorporates a famous mark, by Respondent, who has no legitimate connection or relationship with the mark or the owner of the mark and possesses awareness of Complainant's trademark rights, constitutes bad faith at the moment of registration (e.g., Ints It Is Not The Same, GmbH v. Carlos Gil Belmonte, WIPO Case No. D2010-0456; Swarovski Aktiengesellschaft v. huang dougong, WIPO Case No. D2013-1605; and Swarovski Aktiengesellschaft v. Whois Privacy Protection Service, Inc. / ning ning, WIPO Case No. D2012-0979).
Complainant has also submitted evidence, by means of printouts of the website to which the disputed domain name resolves, that Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating confusion with Complainant's mark. Respondent's bad faith use of <lonasikea.com> is highlighted by the use of the IKEA trademark and videos taken from official YouTube channels of IKEA companies, in order to create a likelihood of confusion as to source, sponsorship, affiliation, or endorsement.
Therefore, the Panel finds the disputed domain name was both registered and is being used in bad faith, and that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 <lonasikea.com> be transferred to Complainant.
Lynda J. Zadra-Symes
Date: November 17, 2014