WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. John Hendrix
Case No. D2014-1905
1. The Parties
The Complainant is Inter IKEA Systems B.V. of Delft, Netherlands, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is John Hendrix of Sumter, Connecticut, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <ikea-design.com> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2014. On October 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 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 November 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2014.
The Center appointed C. K. Kwong as the sole panelist in this matter on December 15, 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 the owner of numerous trademarks consisting of or comprising the word “ikea”. These registrations include United States Trademark Registration No. 1443893 for IKEA registered on June 23, 1987 in respect of goods in classes 8, 11, 16, 20, 21, 24, 27 and 28 (Annex 6 to the Complaint].
The uncontradicted evidence produced by the Complainant shows that the registration of its aforesaid IKEA mark occurred many years before the registration of the disputed domain name <ikea-design.com> on July 4, 2014.
The Complainant has also registered more than 300 domain names consisting of or comprising the word “ikea” including, inter alia, <ikea.com> on July 5, 2004 and <ikea.com.cn> on September 3, 2002 ( Annex 9 to the Complaint).
Other than the particulars shown on the printout of the data base search conducted by the Complainant of the WhoIs database (Annex 2 to the Complaint) and the website to which the disputed domain name resolves as provided in Annex 12 to the Complaint, there is no other evidence in the case file concerning the background of the Respondent and its business.
5. Parties’ Contentions
The Complainant has made the following contentions:
1. The Complainant has rights in the trademark IKEA which is widely known in the world, being listed the 26th by Interbrand in the “Best Global Brands 2013” and being nominated the 48th on the List of “The World’s Most Reputable Companies” by Reputation Institute (Annexes 10 and 11 to the Complaint ). It has 345 Ikea stores in 42 countries worldwide including the United States and with an annual turnover in 2013 of EUR 29.2 billion. The Ikea websites had over 1.2 billion visitors and its catalog application was downloaded almost 10 million times in 2013 (Annex 8 to the Complaint).
2. The disputed domain name embodies the word “ikea” and is confusingly similar to the Complainant’s well-known mark IKEA, which is an invented word comprising the initials of the founder’s name (Ingvar Kamprad), the farm where he grew up (Elmtaryd) and his home parish (Agunnaryd).
3. The addition of a hyphen followed by the indistinctive suffix “design” and the top-level domain “.com” do not change the overall impression of the disputed domain name to distinguish it from the Complainant’s well-known mark IKEA. The disputed domain name suggests a commercial relationship or association with the Complainant.
4. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name. It has not registered any trademarks or trade names corresponding to the disputed domain name. The disputed domain name is not being used with a bona fide offering of goods or services by the Respondent. The Complainant has not licensed or authorized the Respondent to use the trademark IKEA for registration of any domain name incorporating said trademark or in any other way.
5. The Complainant operates its business with the unique concept of a franchise system only allowing approved and licensed retailers to participate in its exclusive distribution system making use of the IKEA trademark. With the exception of the IKEA Delft Store in the Netherlands which is owned and operated by the Complainant, all Ikea stores worldwide operate under franchise agreements with the Complainant as franchisor. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.
6. The IKEA trademark was registered well before the registration of the disputed domain name and embodied in over 300 domain names registered worldwide including <ikea.com>. It is inconceivable that the Respondent would not have had actual notice of the Complainant’s trademark at the time of the registration of the disputed domain name. The disputed domain name currently resolves to a commercial website which is intended to attract Internet users by creating a likelihood of confusion with the Complainant’s mark for the Respondent’s commercial gain and is used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Notice of proceedings
The contact particulars of the Respondent and the disputed domain name were fully set out in the WhoIs search results provided in Annex 2 to the Complaint.
Such contact details also match those provided by the Registrar to the Center on October 29, 2014.
On November 4, 2014, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent in accordance with the contact details above by email with copies to the Registrar. The Center also forwarded the Written Notice to the Respondent by courier.
The Panel finds that as long as the Complainant or the Center as the case may be has communicated with the Respondent using the contact information which the Respondent has chosen to provide to the Registrar as reflected in the above contact details, their respective obligations of such communications will be discharged and the Respondent is bound accordingly.
The Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a reply is not due to any omission or inadequate communication by the Center.
B. The Three Elements
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “[t]he Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 14(b) of the Rules further provides that, “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Paragraph 5(e) of the Rules further provides that, “[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.
The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
The said three elements are considered below.
1. Identical or Confusingly Similar
On the evidence available, the Panel has no hesitation in finding that the Complainant has rights in the trademark IKEA by reason of its trademark registration as recited in Section 4 above.
Furthermore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark IKEA.
The disputed domain name <ikea-design.com> embodies the Complainant’s trademark in its entirety. The mere addition of the indistinctive word “design” behind a hyphen does not assist in distinguishing the disputed domain name from the Complainant’s mark.
It is also well established practice to disregard the generic Top-Level Domain (“gTLD") part of a domain name, such as “.com”, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d’Evian and Societe des Eaux de Volvic v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2008-0416.
After removing the said non-distinctive hyphen, the non-distinctive word “design” and the gTLD, only the word “ikea” is left in its entirety.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is established.
2. Rights or Legitimate Interests
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
In the present case, the Complainant has asserted registration and use of the registered trademark IKEA well before the Respondent’s registration of the disputed domain name <ikea-design.com> on July 4, 2014. The Complainant has confirmed that it has no business relationship with the Respondent.
There is no explanation on the record as to why it was necessary for the Respondent to adopt the word “ikea” in its domain name.
There is no evidence before the Panel to suggest that the Respondent is commonly known as <ikea-design.com>.
There is also no evidence available to demonstrate any legitimate noncommercial or fair use of the disputed domain name by the Respondent.
Accordingly, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name.
3. Registered and Used in Bad Faith
Given the Complainant’s supported claim of registration of its said IKEA trademark and the apparent use of that mark for many years long before the registration of the disputed domain name in 2014, there is a strong case for the Respondent to come forward to defend itself. Unfortunately, the Respondent has not come forward with any defence on its choice of embodying the word “ikea” in its entirety as part of the disputed domain name.
The incorporation of the word “ikea” in its entirety as part of the disputed domain name without any explanation, the prior extensive use and the registration of the Complainant’s mark worldwide (including registration in the United States where the Respondent resides) as well as the extensive use and registration of over 300 domain names by the Complainant (including <ikea.com.cn> registered on September 3, 2002) leads to the irresistible conclusion that the Respondent must have been aware of the existence of the Complainant and its trademark IKEA at the time of the registration of the disputed domain name.
The printout of the website to which the disputed domain name resolves as shown in Annex 12 to the Complaint shows a gambling site apparently serving as a platform displaying links to other gambling sites and online game sites which the operator of the site using the disputed domain name is presumed to benefit commercially when Internet users attracted there by the disputed domain name click through the website. Being the registrant of the disputed domain name, the Respondent has used or allowed others to use the disputed domain name for operating of the said website to which it resolves.
The Panel cannot conceive of any use by the Respondent of the disputed domain name that would not be a bad faith use. Some degree of deception or confusion would seem to be inevitable in any use by the Respondent of the disputed domain name. The use of the term “ikea” in the disputed domain name is likely to create confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on the websites or online locations where the disputed domain name leads to. It is not possible to think of any plausible and genuine use of the disputed domain name by the Respondent.
The Panel finds that the presumption under paragraph 4(b)(iv) of the Policy has been invoked.
Accordingly, the Panel finds that the disputed domain name has been registered and used 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-design.com> be transferred to the Complainant.
C. K. Kwong
Date: December 29, 2014