WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. Michael Herman
Case No. D2015-0653
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 Michael Herman of Matthews, North Carolina, United States of America (“USA”).
2. The Domain Names and Registrar
The disputed domain names <customforikea.com>,<customikeaparts.com>,<custom4ikea.com>,<diy-ikea.com>,<idea-ikea.com>, <ideaikea.com>,<ideas-ikea.com>,<ideasikea.com>,<ideas4ikea.com>,<ikea-aftermarket.com>, <ikeaaftermarketparts.com>,<ikeacustomization.com>,<ikea-customizations.com>, <ikeacustomizations.com>,<ikeacustomparts.com>,<ikeacustoms.com>,<ikeaftermarket.com>, <ikeaftermarketparts.com>,<ikeaidea.com>,<ikeaparts-aftermarket.com>,<ikeapartsaftermarket.com>, <ikea-rebuild.com>,<ikea-redesign.com>,<ikearemodel.com>,<ikea4ideas.com>,<pimpmy-ikea.com>, <rebuild-ikea.com>,<rebuildmyikea.com>,<redesign-ikea.com>, <redesignikea.com> and <remodelikea.com> (together referred to as 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 April 13, 2015. On April 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 15, 2015, 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 April 21, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 11, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 12, 2015.
The Center appointed Dawn Osborne as the sole panelist in this matter on May 27, 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 Complainant is in the business of selling furniture and home furnishing products and owns many trade mark registrations for IKEA around the world including the USA. It is a famous mark.
The Domain Names were registered in 2013. The Respondent has used them to point to adult content unconnected with the Complainant.
5. Parties’ Contentions
The Complainant’s submissions can be summarized as follows:
The Complainant is the owner of more than 1,500 registered trade marks for IKEA in more than 80 countries of the world in a wide variety of classes of goods and services. There are 51 stores in the USA where the Respondent resides. The annual turnover in 2014 for all IKEA stores reached EUR 30.1 billion. The Complainant also has more than 300 domain names containing IKEA including <ikea.com>. In 2014 the Complainant’s web sites had over 1.6 billion visitors. The IKEA mark is famous: in 2014 it was number 26 of the Interbrand “Best Global brands 2014” and nominated by the reputation Institute to be number 39 on their “World’s Most Reputable Companies”. Well known marks with inherent distinctiveness have the right to prevent any use in relation to any goods and services under trade mark law.
The Domain Names are confusingly similar to the Complainant’s world famous trade mark IKEA which is an invented name, being an acronym of the founder’s name (Ingvar Kamprad), the farm where he grew up (Elmtaryd) and his home parish (Agunnaryd). It has no other meaning in the English language than as a trade mark identifying the source of origin as the Complainant. The addition of the generic terms “parts”, “aftermarket”, “rebuild”,. “pimp”, “my”, “custom”, “4”, “four”, “diy”, “idea”, “customization”, “redesign”, “custom” and “remodel” will not have any impact on the overall impression of the dominant part of the name IKEA, instantly recognizable as a world famous trade mark. Said suffixes and prefixes are merely generic words/abbreviations and do not, distinguish the Domain Names from the Complainant’s trade mark.
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 Domain Name and is therefore irrelevant to determine the confusing similarity between the trade mark and the Domain Names.
Due to the reputation of the trade mark IKEA there is a considerable risk that the public will perceive the Respondent’s Domain Names either as domain names owned by the Complainant or that there is some kind of commercial relationship with the Complainant. There is a high risk of the trade mark being diluted by being associated with a site owned by a third party. By using the trade mark as a dominant part of the Domain Names the Respondent exploits the goodwill and the image of the Complainant’s trade mark. The Domain Names are clearly confusingly similar to the Complainant’s registered trade mark IKEA.
The Respondent does not have any trade marks or trade names corresponding to the Domain Names. It has not used the trade mark in any way that would give it rights or legitimate interests in the Domain Names. No authorization of any kind has been given by the Complainant to the Respondent to use the mark IKEA.
It is obvious that it is the fame of the trade mark that has motivated the Respondent to register the Domain Names in the first place. The Domain Names were registered by the Respondent on July 21, 2013, decades after the IKEA trade mark was registered in the USA and across the globe.
The Domain Names are not being used in connection with a bona fide offering of goods or services. The Respondent has intentionally chosen the Domain Names based on a famous trade mark in order to generate traffic and income through names that redirect Internet users to a web site that features adult content such as selling sex toys, displaying pornographic images and selling pornographic videos. The Respondent is using the IKEA mark to mislead Internet users to a commercial website. The Respondent has no rights or legitimate interests in respect of the Domain Names.
Since “IKEA” is an invented word, traders would not legitimately choose a name incorporating said trade mark unless they were seeking to create and impression of an association with the Complainant. No reply was received to a letter before action sent to the Respondent which indicates bad faith.
The Respondent is using the IKEA trade mark to attract visitors/boost traffic and then redirect them to a web site featuring adult content. The Respondent has intentionally attempted to attract for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site and, as such, is acting in bad faith. The confusing similarity between the Domain Names and the Complainant’s mark and the pornography nature of the web site should in combination be sufficient for the Panel to conclude that the Domain Names were registered and are being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusing Similarity
The Complainant has trade mark registrations for IKEA around the world, including in the USA, with first use in commerce recorded as 1966. It is a famous mark and is an invented sign with no known meaning in the English language other than as a reference to the Complainant.
The Panellist agrees with the Complainant that the Domain Names are confusingly similar to the Complainant’s trade mark consisting of the Complainant’s IKEA registered trademark and the generic terms “parts-aftermarket”, “aftermarketparts”, “rebuild my”, “pimpmy-”, “custom4”, “customfor” , “customparts”, '”diy-”, “idea-”, “idea”, “ideas-”, “ideas4”, “ideas”, “-aftermarket”, “-customizations”, “-rebuild”, “-redesign”, “4ideas”, “customization”, “customizations”, “customparts”, “customs”, “partsaftermarket”, “remodel”, “rebuild-“, “redesign-“, “redesign” and misspellings of generic terms such as <ikeaftermarket.com> and <ikeaftermarketparts.com> which are designed to be read as “aftermarket” using the “a” of IKEA as a bridge.
The distinctive part of the Domain Names is the IKEA name. The addition of the non-distinctive generic terms as listed in the previous paragraph does nothing to prevent the confusing similarity of the Domain Names with the Complainant’s IKEA trade mark, especially as many if not all of the terms, such as “diy” and “remodel” appear to be pertinent to the Complainant’s business as a one stop shop for those wishing to update home interiors. As such the Panel holds that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy.
B. Rights or Legitimate Interests
The Respondent has not filed a Response. It has no consent from the Complainant to use the “IKEA” name, has not used the Domain Names for a bona fide offering of goods and services, given the use of a famous trade mark in relation to adult sites of a commercial nature, as discussed below, and is not commonly known by the Domain Names. Nor is it making a legitimate or noncommercial fair use of the Domain Names. In the circumstances of this case, and in view of the Panel’s discussion below, the Panel finds that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
“by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
The Respondent has not provided any explanation why it would be entitled to register the Domain Names equivalent to the Complainant’s famous trade mark with only generic terms added which give the impression, at least initially, that the sites connected to the Domain Names are associated with the Complainant and attach these names to adult sites of a commercial nature. Internet users may be caused to wonder why the Complainant would allow its name to be used on the Internet for sites of this nature causing tarnishment. Internet users could be drawn to the Respondent’s sites by their initial interest confusion even if it is dispelled upon review of the site content. As such the Panel finds that the Domain Names have been used in a way likely to confuse people into believing that the Domain Names are registered to or connected to the Complainant, for commercial gain. In the absence of a Response from the Respondent, considering the fame of the Complainant’s IKEA mark and the adult nature of the material attached to the Domain Names the Panel is satisfied that the Complainant has shown that the Respondent registered the Domain Names in bad faith and has used the Domain Names to attract Internet traffic to its site for commercial gain by creating a likelihood of confusion that its web site is connected to the Complainant.
Further, it is a commonly held position established through previous decisions under the Policy that use of a famous mark in a domain name to point to adult content is an indication of bad faith.
As such the Panel finds that the Domain Names have been registered and used in bad faith satisfying the third limb 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 Domain Names <customforikea.com>,<customikeaparts.com>,<custom4ikea.com>,<diy-ikea.com>,<idea-ikea.com>, <ideaikea.com>,<ideas-ikea.com>,<ideasikea.com>,<ideas4ikea.com>,<ikea-aftermarket.com>, <ikeaaftermarketparts.com>,<ikeacustomization.com>,<ikea-customizations.com>, <ikeacustomizations.com>,<ikeacustomparts.com>,<ikeacustoms.com>,<ikeaftermarket.com>, <ikeaftermarketparts.com>,<ikeaidea.com>,<ikeaparts-aftermarket.com>,<ikeapartsaftermarket.com>, <ikea-rebuild.com>,<ikea-redesign.com>,<ikearemodel.com>, <ikea4ideas.com>, <pimpmy-ikea.com>, <rebuild-ikea.com>, <rebuildmyikea.com>, <redesign-ikea.com>, <redesignikea.com> and <remodelikea.com> be transferred to the Complainant.
Date: June 1, 2015