WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. Wei Weiyi
Case No. D2015-0603
1. The Parties
Complainant is Inter IKEA Systems B.V. of Delft LN, Netherlands, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Wei Weiyi of Songyuan, Hebei, China.
2. The Domain Name and Registrar
The disputed domain name <ikea3.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 April 7, 2015. On April 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 7, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceeding commenced on April 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 8, 2015.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on May 22, 2015. 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 trademark upon which the Complaint is based is IKEA. According to the documentary evidence and contentions submitted, Complainant owns several trademark registrations for the IKEA trademark, including variants of said trademark, in various countries around the world. In addition, Complainant owns several trademark registrations in China, the first IKEA trademark having been registered in 1983 (Registration No. 175289, effective as of April 15, 1983).
According to the documentary evidence and contentions submitted, Complainant has developed and employs a unique concept for the sale of furniture and home furnishing products marketed under the IKEA trademark through a franchise system. Complainant opened its first IKEA store in China in 1998 and has since then expanded its activities in that country.
According to the documentary evidence and contentions submitted, the IKEA trademark has been recognized as one of the most well-known trademarks in the world. Complainant has also registered several domain names worldwide which incorporate the trademark IKEA, including <ikea.com> and <ikea.cn>.
The disputed domain name was registered on November 30, 2014.
5. Parties’ Contentions
Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark because (i) it incorporates the well-known IKEA trademark in its entirety; (ii) the word “ikea” is an invented name and has, to the best of the Complainant’s knowledge, no other meaning in the Chinese language other than as a trademark identifying IKEA as a source of origin; (iii) the addition of the numerical suffix “3” will not have any impact on the overall impression of the dominant part of the name; and (iv) the addition of the generic Top-Level Domain (gTLD) “com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is, therefore, irrelevant to determine the confusing similarity between the IKEA trademark and the disputed domain name.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Complainant has not found that Respondent has any registered trademarks or trade names corresponding to the disputed domain name, nor has Complainant found anything that would suggest that Respondent has been using “Ikea” name in any other way that would give it any legitimate rights in that name; (ii) no license or authorization of any other kind has been given by Complainant to Respondent to use the IKEA trademark; (iii) it is unlikely that Respondent would have been unaware of Complainant’s legal rights in the name Ikea at the time of registration of the disputed domain name as IKEA is a famous trademark worldwide; (iv) Respondent is currently not using the disputed domain name in connection with a bona fide offering of goods or services, but has intentionally chosen a domain name based on a famous trademark in order to generate traffic and income through a site that features adult content, such as live, pornographic video feeds, adult themed chat services, and dating services.
Finally, Complainant contends that the disputed domain name has been registered and is being used in bad faith by Respondent because: (i) the IKEA trademark has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world, and Respondent was aware of Complainant’s rights in the IKEA trademark and the value of said trademark, at the point of the registration; (ii) on March 12, 2015, Complainant sent a cease and desist letter by email to Respondent, but no reply was ever received; a failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered in previous UDRP decisions relevant in a finding of bad faith; (iii) the incorporation of a well-known mark into a domain name in order to attract visitors to a commercial website and boost traffic and thereby income can amount to bad faith use of this type; (iv) Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is misleading consumers, for its own commercial gain; and (v) the essence of bad faith in cases such as the instant case lies not only in the initial interest confusion, but also in the capacity to tarnishthe IKEA trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Effect of the Default
The consensus view is that the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.6). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., supra; RX America, LLC. v Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
B. Identical or Confusingly Similar
The disputed domain name <ikea3.com> incorporates the IKEA trademark in its entirety. Previous UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., TELSTRA CORPORATION LIMITED V BARRY CHENG KWOK CHU, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd, WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r. l., WIPO Case No. D2001-1206; Utensilerie Associate S. p. A. v. C & M, WIPO Case No. D2003-0159; Lilly ICOS LLC. v. John Hopking/ Neo net Ltd. , WIPO Case No. D2005-0694; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282. This is particularly true where the registered trademark is well-known as in the instant case.
As decided in previous UDRP cases, “the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone”. LEGO Juris A/S v. Name Administrator, Hong Kong Domains, LLC., WIPO Case No. D2009-0924. See also Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812. In the instant case, the only difference between the disputed domain name and the IKEA trademark is the numerical suffix “3” added at the end of the word “ikea”.
Finally, the addition of the generic top-level domain suffix “.com” is non-distinctive in this case because it is a simple requirement for the registration of the domain name. RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540; Sanofi-aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the IKEA trademark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
C. Rights or Legitimate Interests
The consensus view of URDP panels is that a complainant is required to make out an initial prima facie case, after which the burden of demonstrating its rights or legitimate interests in the domain name shifts to the Respondent. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. WIPO Overview 2.0, paragraph 2.1.
In the instant case, Complainant has done enough to establish a prima facie case. The Panel finds reasonable Complainant’s contentions that Respondent has never been licensed, authorized or otherwise permitted to use the disputed domain name, and that Respondent may not claim any rights established by common usage. In fact, Respondent must have been aware of Complainant’s well-known IKEA trademark at the time of registration of the disputed domain name.
The Panel also finds that Respondent’s use of the disputed domain name does not satisfy the test for bona fide use established in prior UDRP decisions as the disputed domain name is being directed to a site that features adult content, such as live, pornographic video feeds, adult themed chat services, and dating services. This indicates that there is a capitalization of the IKEA trademark value, and such practice cannot be considered as a bona fide use.
In short, the contents of the site to which the disputed domain name resolves and the explicit use of the IKEA trademark by Respondent in the disputed domain name support a finding that Respondent lacks rights or legitimate interests in the disputed domain name.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
D. Registered and Used in Bad Faith
Complainant’s contention of bad faith registration is based on the argument that at the time of the registration of the disputed domain name Respondent knew of the existence of the well-known IKEA trademark. The Panel finds that Respondent must have been aware of the existence of Complainant’s trademark when Respondent registered the disputed domain name as the only difference between the well-known IKEA trademark and the disputed domain name is the addition of the numerical suffix “3”.
The Panel also finds that that the disputed domain name was selected and is being used by Respondent to take advantage of the notoriety and goodwill associated with the IKEA trademark, with the intent to attract for commercial gain Internet users. As a matter of fact, in the case of a domain name so obviously connected to a well-known registered mark, its use by someone with no legitimate interests in respect of the registered domain name constitutes what has been called as “opportunistic bad faith”. See SSL INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080; Perfumes Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
The Panel agrees with Complainant’s contention that in this case the confusing similarity between the disputed domain name and the Complainant’s trademark and the “pornography-equivalent” nature of the website must be considered as tarnishing the IKEA trademark and, therefore, constitutes evidence of bad faith use of the disputed domain name under the Policy.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 <ikea3.com> be transferred to Complainant.
Manoel J. Pereira dos Santos
Date: June 2, 2015