WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. Abhishek Goel
Case No. D2015-1731
1. The Parties
The Complainant is Inter IKEA Systems B.V. of Delft, Netherlands, represented by Fidus Law Chambers, India.
The Respondent is Abhishek Goel of Ludhiana, Punjab, India.
2. The Domain Names and Registrar
The disputed domain names <ikeaindustries.com> and <ikeaindustries.org> are 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 29, 2015. On September 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 30, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on October 12, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 2, 2015.
The Center appointed Adam Taylor as the sole panelist in this matter on November 12, 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.
On December 4, 2015, the Panel issued Procedural Order No. 1 requesting certain further information from the Complainant. The Complainant responded thereto on December 9, 2015.
4. Factual Background
The Complainant, incorporated in the Netherlands, franchises a retail system for the sale of furniture and home furnishings. The Complainant and its predecessors have traded under the name "IKEA" since the 1940s.
The Complainant's franchisees operate more than 360 IKEA stores in over 45 countries, attracting some 770 million visitors and with sales totalling some EUR 30.1 billion in the year to August 2014.
The Complainant's main website is at "www.ikea.com" and there are also approximately 50 regional websites, listing some 12,000 products.
The Complainant owns a worldwide portfolio of IKEA-related trade marks for including, by way of example, Indian trade mark no. 772408 for IKEA in class 2 dated September 3, 1997.
While the Complainant does not currently operate or franchise any retail outlets in India, its Indian operations constitute a major buying centre for the group, amounting to approximately USD 350 million in purchases from South Asia, some 70% of which is attributable to India. The Complainant works with some 50 suppliers in India involving almost 500,000 workers throughout the extended supply chain. The Complainant is one of 40 "superstar trading houses" in India, a special status accorded by the Indian government to companies with trading activities in India exceeding USD 140 million per year. The Complainant is also engaged in extensive charitable programs in India through The Ikea Foundation, its philanthropic arm.
The Complainant operates a website at "www.ikea.in" which promotes its business in India.
The disputed domain names were registered on May 7, 2014.
On an unspecified date before December 22, 2014, there was a website at www.ikeaindustries.com with an "IKEA" diamond-shaped logo. The home page, which was dominated by images of, and links to various kinds of vehicle spare parts stated:
"Welcome to Ikea Industries
Ikea Industries started with a dream in 2014 – the dream to be the leaders in Auto parts and No-Ferrous, Die castings components for the automotive industry. Ikea Industries therefore was, to the emerging automobile sector."
The contact name was given as "M/S Ikea Industries" with the same address shown in the WhoIs output for the disputed domain names. There following were listed as "Sister Concerns": "M/S KMI Store" and "M/S Shilpa Metal Industries".
The "about us" page claims that "[w]e are a leading manufacturer, stockist and suppliers for the last 40 years in India" and thereafter goes into some detail on the nature of its services, including the quality standards to which it adheres.
On or about December 19, 2014, the Complainant commenced legal proceedings in India for passing off and trade mark infringement against the Respondent's father, the Respondent, IKEA Industries and Shilpa Metal Industries. On December 22, 2014, the High Court granted an ex parte injunction which, amongst other things, prevented the defendants from operating the domain name <ikeaindustries.com>. The website at that disputed domain name was removed at some point thereafter.
5. Parties' Contentions
A summary of the Complainant's contentions is as follows:
UDRP panels have observed that the Complainant's mark is one of the world's most well-known and reputed trade marks and that it has a high level of distinctiveness. The Complainant has succeeded in numerous other UDRP cases involving domain names including the term "ikea".
The disputed domain names are confusingly similar to the Complainant's trade mark as they include the trade mark and the mere addition of the generic term "industries" does not detract from the overall impression.
The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent's sole purpose was to misappropriate the reputation associated with the Complainant's famous trade mark. The Complainant has not authorised the Respondent to use its trade mark.
The Complainant's trade mark is an invented term with no meaning other than in relation to the Complainant.
The Respondent is not commonly known by the name "IKEA".
The Respondent has not made any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain name <ikeaindustries.com> has been used to offer goods in violation of the Complainant's trade mark rights. The Respondent has used this domain name in relation to "Ikea Industries", which is using the disputed domain name to advertise its products under the IKEA mark, misleading consumers into believing that the disputed domain name is in some way affiliated to the Complainant.
The disputed domain names were registered in May 2014 by the Respondent, "who has registered and designed the website solely for use by the entity Ikea industries" with the aim of riding on the Complainant's goodwill. The question of being known by the disputed domain names does not arise in the first place.
The Respondent registered the disputed domain names for commercial gain.
The Respondent registered the disputed domain names for sole purpose of designing a website for "Ikea Industries". By doing so the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the disputed domain names by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain names.
Other UDRP cases have held that the Complainant acquired an extensive worldwide reputation for its trade mark. In this light, the Respondent ought to have been aware of this since a simple trade mark search at the time of registration of the disputed domain names would have likewise revealed the Complainant's trade marks. A simple search on the Internet would have revealed the Complainant's presence. Therefore, the Respondent could not reasonably have been unaware of the fame of the Complainant's trade marks at the time of registration of the disputed domain names.
The Respondent ought also to have been aware of the Complainant's rights as previous UDRP decisions involving the Complainant are available on the Internet.
Paragraph 2 of the Policy implicitly requires registrants to make good faith efforts to avoid registering and using domain names corresponding to trade marks in breach of the Policy. This is an integral part of the Policy.
There is great likelihood that visitors to the Respondent's website will be induced to believe that the Complainant has licenced or authorised the Respondent or that the Respondent has some connection with the Complainant.
Therefore, the disputed domain names have been registered and are being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A respondent's default does not automatically result in a decision in favour of the complainant. See paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). While a panel may draw appropriate inferences from a respondent's default (e.g., to regard factual allegations which are not inherently implausible as being true), the complainant must still support its assertions with actual evidence in order to succeed in a UDRP proceeding − subject to the principles described below with regard to the second UDRP element (see section 6C).
B. Identical or Confusingly Similar
The Complainant has demonstrated rights in the mark IKEA by virtue of its registered trade marks as well as unregistered trade mark rights deriving from extensive use of that name in trade.
Paragraph 1.2 of the WIPO Overview 2.0 makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the disputed domain name to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be somehow recognizable within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Paragraph 1.9 of the WIPO Overview 2.0 adds that, in itself, the addition of merely generic, descriptive, or geographical wording to a trade mark in a domain name is normally insufficient to avoid a finding of confusing similarity and that panels have usually found the incorporated trade mark to constitute the dominant or principal component of the domain name.
Here, the Complainant's distinctive trade mark is undoubtedly the dominant component of the disputed domain names and the addition of the descriptive term "industries" is insufficient to avert a finding of confusing similarity.
For the above reasons, the Panel concludes that the disputed domain names are confusingly similar to the Complainant's trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant."
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, there is no evidence that <ikeaindustries.org> has ever been used for a website. The other disputed domain name, <ikeaindustries.com>, was formerly used for a website offering vehicle spare parts for sale. Was such use bona fide?
On the one hand, the website relates to an entirely different industry to that of the Complainant and one with which the Complainant has claimed no connection. According to the Complainant's pleading before the Indian High Court, the Complainant's private investigator visited the Respondent's premises, where the Respondent informed him that he ran a spare parts business under the name of "Ikea Industries". The investigator noted that the premises bore a prominent sign bearing the term "ikea". And there is nothing in the website screenshot supplied by the Complainant which specifically indicates that the Respondent was out to capitalise on the Complainant's mark.
On the other hand, while it is theoretically possible that the Respondent conceived the name independently of the Complainant, given the Respondent's involvement in an entirely different industry to the Complainant and the lack of typical cybersquatting indicia, nonetheless, the Complainant is a famous worldwide group with a substantial presence in India, as explained in section 4 above, and the name "Ikea" is a somewhat unusual made-up term. In these circumstances, and bearing in mind the burden of production on the Respondent as explained above, it behoved the Respondent to come forward and explain itself. But it has not done so.
On balance therefore the Panel considers that the Respondent's use of the disputed domain name <ikeaindustries.com> cannot be said to be bona fide.
For the same reasons, the Panel considers that paragraph 4(c)(ii) does not assist the Respondent.
Paragraph 4(c)(iii) of the Policy does not apply as the <ikeaindustries.com> has plainly been used for commercial purposes.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
For the reasons explained above including the Complainant's substantial presence in India, the distinctive nature of the term "ikea" and the lack of any explanation from the Respondent as to its selection of the disputed domain names, the Panel concludes that, on balance, <ikeaindustries.com> was registered and used with knowledge of the Complainant's mark and for the purpose of benefitting its business by confusing customers into thinking that it was in some way associated with the Complainant, albeit that the Respondent operates in a different industry. This constitutes registration and use in bad faith.
While there is no indication that the other disputed domain name, <ikeaindustries.org>, has ever been used for a website, it is identical to <ikeaindustries.com>, apart from the domain suffix, and was registered on the same day. In the Panel's view, it constitutes a passive holding in bad faith in accordance with the principles set out in paragraph 3.2 of WIPO Overview 2.0 which states the following consensus view on this issue:
"…panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use…"
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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 names <ikeaindustries.com> and <ikeaindustries.org> be transferred to the Complainant.
Date: December 11, 2015