WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. Franklin Lavall?e / IkeaCuisine.net
Case No. D2015-2042
1. The Parties
The Complainant is Inter IKEA Systems B.V. of Delft LN, the Netherlands, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Franklin Lavall?e / IkeaCuisine.net of Paris, France.
2. The Domain Name and Registrar
The disputed domain name <ikeacuisine.net> is registered with BIGROCK SOLUTIONS LIMITED (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 10, 2015. On November 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 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 proceedings commenced on November 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 7, 2015.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on December 10, 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 the registered owner of more than 1500 trade mark registrations for the mark IKEA and variants in more than 80 countries and the European Union, in relation to goods and services in the International Classes: 2, 8, 9, 11, 16, 18, 20, 21, 24, 25, 27, 28, 29, 30, 31, 35, 36, 38, 39, 41, 42, and 43, among others. The Complainant provides evidence of such registrations by attachments to the Complaint.
The disputed domain name was registered on February 22, 2015.
5. Parties' Contentions
The Complainant asserts that its IKEA trade mark is one of the most famous in the world, having very substantial inherent and acquired distinctiveness. The Complainant operates a franchise furniture sales business under the IKEA mark in over 40 countries. The turnover of all the Complainant's stores in 2014 was 30.1 billion EUR, and the Complainant and its franchisors currently employ 164,000 people. In 2014 the Complainant's IKEA websites attracted 1.6 billion visits. The Complainant contends that the IKEA trade mark has the status of a TRIPS defined well-known mark so that its sphere of protection extends to unrelated goods or services, i.e. beyond furniture-related goods and services alone.
The Complainant contends that the disputed domain name is confusingly similar to the trade mark IKEA, which is a distinctive and invented term with no inherent meaning in English or French. The addition of the generic term "cuisine" meaning kitchen in French does not have any impact on the instantly recognizable dominant part of the name, the term "IKEA". Given that the term "cuisine" closely relates to the Complainant's business, the possibility of confusion amongst consumers is further enhanced by its inclusion, according to the Complainant. The Complainant asserts that there is a considerable risk that consumers will think that the disputed domain name is owned by the Complainant or that there is a commercial connection with the Complainant.
Further, the Complainant asserts that its searches have not revealed that the Respondent has any registered trademarks in the term IKEA or has acquired any rights in it by any use whatsoever. No license or authorization to use the trade mark IKEA has been granted to the Respondent, and the latter is not an authorized dealer or franchisee. According to the Complainant, it is untenable for the Respondent to maintain that it was unaware of the Complainant's rights in the trade mark IKEA, given the latter's fame. Given its status as a famous trade mark, any unauthorized use would amount to use in bad faith according to the Complainant.
The Respondent is, according to the Complainant, using the disputed domain name to generate click-through license fees by linking to the website "www.amazon.fr". Unrelated goods are available there and it is obvious according to the Complainant that the Respondent intends to sponge off the Complainant's IKEA trade mark's reputation. The Respondent in this case is not an authorized reseller and the relevant links relate to a wide variety of goods, so that the holding in Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903, is of no application according to the Complainant.
Further according to the Complainant, the goodwill of its IKEA trade mark is what caused the Respondent to register the disputed domain name. Given the distinctive and invented nature of the disputed domain name, no person would choose to incorporate it without intending to generate the impression of an association with the Complainant. It was the manifest intention of the Respondent to cause the false impression that there is a connection between the disputed domain name and the Complainant which does not in fact exist, and to benefit from this consumer confusion. Further, the cease and desist letters of the Complainant went without response, indicating bad faith, according to the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant's IKEA trade mark. However, it incorporates the distinctive IKEA mark as its initial and most striking part. The term IKEA is contrived and has no inherent meaning in English or French. It is exclusively associated with the Complainant. The additional inclusion of the generic term 'cuisine' does not detract from the impression that there is a connection between the disputed domain name and the Complainant which does not in fact exist. The confusing similarity between the disputed domain name and the Complainant's IKEA trade mark is in fact further enhanced by the inclusion of a term that relates to the furniture business of the Complainant which includes kitchens ('cuisine' in French').
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant's IKEA trade mark.
B. Rights or Legitimate Interests
The Respondent is not known by the disputed domain name, and nothing before the Panel indicates that the Respondent has any trade mark rights in the term IKEA or that it used that term as a legitimate business name. The Complainant has not authorized or licensed the Respondent to use the trade mark IKEA in any way, nor is the Respondent an authorized reseller or franchisee. In any case the goodwill attached to the trade mark IKEA is such that it would be unlikely that any party unrelated to the Complainant would be able autonomously to acquire any rights or legitimate interests in the disputed domain name. That is particularly the case where, such as here, the domain name also includes a generic term which is relevant to the goods and services for which the Complainant's trade mark is registered.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant's IKEA trade mark has very considerable inherent and acquired distinctiveness. It is used by the Complainant in relation to its furniture franchise business in many countries and is highly recognizable. It is unimaginable that the Respondent would have been unware of the Complainant's goodwill in the trade mark at the time of registration of the disputed domain name. This is further indicated by the inclusion of a generic term that is relevant to the furniture business of the Complainant, which covers kitchens ("cuisine"). The website to which the disputed domain name resolves is a click through site that directs to a website where many goods unrelated to the Complainant's business are available. It is manifest that the Respondent relies on the false impression of some legitimate connection with the Complainant's business that the disputed domain name generates amongst web users, to cause some financial advantage for itself.
Therefore the Panel holds that the disputed domain name was registered and used in bad faith.
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 be transferred to the Complainant.
William van Caenegem
Date: December 22, 2015