WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. Muhannad Mayyas
Case No. D2016-0067
1. The Parties
The Complainant is Inter IKEA Systems B.V. of Delft, the Netherlands, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Muhannad Mayyas of Amman, Jordan.
2. The Domain Name and Registrar
The disputed domain name <ikeajordan.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 January 13, 2016. On January 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 13, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 January 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2016. The Respondent submitted an email communication on February 7, 2016.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on February 15, 2016. 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 the concept for the sale of furniture and home furnishing products marketed under the trademark IKEA. It operates its business model through a franchise system whereby only approved and licensed retailers are authorised to distribute IKEA goods and make use of the IKEA trademark. The Complainant is the worldwide IKEA franchisor. All IKEA stores operate under franchise agreements with it, with the exception of the IKEA Delft store in the Netherlands. In 2014 there were 361 IKEA stores in over 40 countries operating under IKEA franchise agreements. This includes a store in Jordan.
The Complainant is owner of more than 1500 trademark registrations for the mark IKEA in more than 80 countries around the world. In particular:
(a) It owns trademark number 24676 registered on November 9, 1986 in class 24 for IKEA in Jordan; and
(b) It owns a Community trademark registration number 109652 for the word mark IKEA in classes 2, 8, 11, 16, 18, 20, 21, 24, 25, 27, 28, 29, 30, 31, 35, 36, 39, 41, and 42.
The Complainant is also the owner of more than 300 gTLD and ccTLD domain names worldwide including <ikea.com>.
The Complainant’s IKEA trademark and brand has been recognized by Interbrand as number 26 of the “best global brands” in the world for the year 2014.
The disputed domain name was registered on February 25, 2015.
The Complainant sent a cease and desist letter to the Respondent on August 27, 2015 requesting that the Respondent voluntarily transfer the disputed domain name to the Complainant. The Complainant offered to reimburse the Respondent’s out of pocket expenses for registration and transfer.
The Respondent responded on August 30, 2015 stating, “Domain names trading is legal. There is a clear difference between your domain and my domain. My domain is not and was not registered by you, it was free to register got my domain IKEAJORDAN.COM legally. I listed the above domain on Sedo for sale so feel free to make an offer. At the end of the day I am domains dealer”.
Following further correspondence in which the Complainant requested transfer of the disputed domain name, the Respondent wrote to the Complainant on September 9, 2015 stating that he had “listed my domain on Sedo legally. You can make offer or you can mail me an offer, you have the priority to buy.”
5. Parties’ Contentions
Identical or confusingly similar
The Complainant contends that the disputed domain name is confusingly similar to its trademark IKEA, which is an invented name having no other meaning other than as a trademark identifying IKEA as a source of origin. The addition of the geographically descriptive term “Jordan” does not have any impact on the overall impression of the dominant part of the name, IKEA. The Complainant refers to Inter Ikea Systems B.V. v. Luis Fernando Kosonoy Michel, WIPO Case No. D2011-1971 regarding the domain name <ikeamexico.com> where the panel found that the “mexico” expression does not add an element of distinction between the domain name in dispute, but rather can cause confusion regarding the geographical site in which IKEA products are marketed or distributed. In relation to this, the Complainant argues that the same conclusion should be reached here.
Furthermore, the Complainant contends that anyone who sees the disputed domain name is likely to mistake it for a name related to the Complainant. The Complainant contends that there is a considerable risk that the public will perceive the disputed domain name as either owned by the Complainant or associated with the Complainant. It states there is also a risk of its trademark being diluted by being connected to a website owned by a third party.
Rights or legitimate interests
As to whether the Respondent has rights or legitimate interests in the disputed domain name, the Complainant states that it has not found any evidence that the Respondent has been using “IKEA” in any way that would give legitimate rights to the name. The Complainant contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. It states that each time a user types in the URL for the disputed domain name, a different website is displayed. One of these websites features links to third party websites, some of which directly reference the Complainant and its business. The Complainant refers to a number of other UDRP decisions where use of a disputed domain name to redirect users to Internet websites unrelated to the Complainants’ marks has been found to not represent a bona fide offering of goods and/or services.
Another of the websites which the disputed domain name redirects to is “www.system-warning-message.com” which attempts to distribute malware to the users’ computer.
Further, the Complainant contends that it is highly unlikely that the Respondent would have been unaware of the Complainant’s rights in the name IKEA at the time of registering the disputed domain name given the fame of the mark. The Complainant has not licensed or authorised the Complainant to use the trademark and has never had a business relationship with the Respondent.
The Complainant also contends that the fact that the disputed domain name is being offered for sale in an amount that exceeds the Respondent’s out of pocket expenses in registering the disputed domain name is further evidence of the Respondent’s lack of rights and legitimate interests.
The Complainant states that the Respondent has not been able to provide any legitimate reason for having registered the disputed domain name, other than claiming “domain names trading is legal”. The Complainant contends that, while trading with domain names may be legitimate, registration, with commercial intent, of the Complainant’s well known and distinctive trademark does not constitute a legitimate domain name trading practice but is instead an attempt to exploit the Complainant’s rights for commercial gain.
As discussed above, on one occasion the disputed domain name redirected to a website at <system-warning-message.com> which locked the user’s browser and displayed a lengthy message reading, in part, “Suspicious Activity Detected. Your Browser might have been hijacked or hacked.” In this regard, the Complainant refers to Spoke Media Holdings, Inc. v. Audrey Volkov, WIPO Case No. D2010-1303 where the content at the Respondent’s website did not relate to the Complainant or trademark and prompted users to upgrade computer software. In doing so users could download malware or a virus to their computers. This was sufficient to hold that the domain name had been used and registered in bad faith.
The Complainant also refers to Inter Ikea Systems B.V. v. Domain Administrator email@example.com, WIPO Case No. D2011-1934, in which the panel stated “in the present case, Respondent used Complainant’s well-known trademark to attract users to a parking page displaying pay-per-click ads. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.” The Complainant contends that the same reasoning should be applied in this case as potential visitors viewing the disputed domain name could assume that it is operated and endorsed by the Complainant.
Further, the Complainant refers to Inter IKEA Systems B.V. v. Privacy Protection Service Inc/ Voronina Maryna, WIPO Case No. D2014-0408 in which the panel found:
“…it is inconceivable that the Respondents selected the Domain Names independently and without knowledge of the Complainant or the Ikea group or its products. The websites operated by the Respondents at the Domain Names comprise a series of ‘click through’ links to other third party websites. The Panel infers that some consumers, once at the Respondents’ websites will follow the provided links and ‘click through’ to other sites which offer products some of which may compete with those of the Complainant. The Respondents presumably can earn ‘click through’ linking revenue as a result. The Panel suspects the Respondents’ websites are probably automatically generated. This does not however matter. It is well established that where a domain name is used to generate revenue in respect of ‘click through’ traffic, and that traffic has been attracted because of the name’s association with the complainant, such use amounts to use in bad faith.”
The Complainant argues the same reasoning should be applied in this case.
The Complainant also contends that the fact that the Respondent is currently offering the disputed domain name for sale in excess of his out of pocket costs (even though an exact price is not specified) constitutes bad faith.
On February 7, 2016, the Respondent emailed the Center stating: “I created the domain name ikeajordan.com for my business which is different from the products of ikea furniture so I still insist to keep the domain name as long as I believe it is legal to have it as a property.” This was the Respondent’s only response to the Complaint.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:
(I) That the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(II) That the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(III) That the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has established trademark rights in its IKEA trademark registrations.
The Panel finds that the disputed domain name is confusingly similar to these trademarks in which the Complainant has rights. The addition of the geographical term “Jordan” in the disputed domain name does not lessen the confusing similarity between the Complainant’s marks and the disputed domain name. The Panel finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(I) That before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to a disputed domain name in connection with a bona fide offering of goods or services; or
(II) That the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or
(III) That the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.
The mere fact that the Respondent is offering the disputed domain name for sale does not of itself demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name on its own. However, the Complainant states, and the Panel accepts, that the Complainant has not licensed or authorised the Respondent to use the trademark IKEA and is not connected to the Complainant.
The Respondent states that he created the disputed domain name for his business, “which is different from the products of ikea furniture”. However, the Respondent has provided no supporting evidence for this claim showing that he operates a business under the name “ikeajordan”.
In the circumstances, the Panel finds that the Complainant has satisfied the burden of showing a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or
(ii) That the Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) That the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) That by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of 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 Respondent’s website or location.
The Panel is satisfied that the disputed domain name was registered and is being used in bad faith for the following reasons:
(a) The Panel finds that at the time of registration the Respondent must have been aware of the Complainant’s well-known trademark and registered the disputed domain name incorporating that well-known trademark in bad faith for the following reasons:
(i) The Complainant’s IKEA trademark is distinctive. At the time of registration of the disputed domain name on February 25, 2015 it was one of the world’s most well-known global brands. IKEA is not a term that anyone would likely use descriptively. It is inconceivable to the Panel that the Respondent could have coincidentally chosen the disputed domain name without knowledge of the Complainant’s marks as it encapsulates the distinctive mark IKEA.
(ii) Further, paragraph 2 of the UDRP puts a burden on registrants where it states “By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that … to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of a third party … it is your responsibility to determine whether your domain name infringes or violates someone else’s rights.” If (as he claims in his correspondence with the Complainant) the Respondent is a “domains dealer”, he will be familiar with these obligations. The most cursory search prior to the Respondent acquiring the disputed domain name would have instantly revealed the Complainant and its trademark, websites and stores. See in this regard paragraph 3.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
(iii) The Complainant’s correspondence with the Respondent prior to filing this complaint indicates that the Respondent registered the disputed domain name primarily for the purpose of selling it. He stated “domain names trading is legal” and that the domain name was listed for sale and the Complainant could make an offer. While the Complainant is right to acknowledge in its submissions that domain name trading is legal, the Panel finds that the inference that the Respondent knew of the Complainant’s rights when registering this domain name is irresistible due to the distinctiveness and repute of the Complainant’s trademark IKEA. The combination IKEA plus Jordan clearly indicates and denotes a branch or franchise of the well-known IKEA chain of stores.
(b) As to use in bad faith, the Complainant has provided evidence that the disputed domain name is used to redirect to a number of different websites. A diagram at the Complainant’s Annex 14 shows that the disputed domain name redirects to a number of other domains, one of which is <wealthy-millionaires.com>. The tables provided in Annex 14 show that <wealthy-millionaires.com> is the host of a website visible when a user goes to <ikeajordan.com> which encourages visitors to sign up and join the “millionaire club”. Other domain names that the disputed domain name redirects to advertise Apple iPhone products for sale for $1. Another page displayed at <ikeajordan.com> generates click-through advertisements, from which it can be assumed the Respondent would earn click-through revenue.
This evidence shows that by using the disputed domain name, the Respondent is attempting to attract, for commercial gain, Internet users to online locations, by creating a likelihood of confusion with the Complainant. In the case of the click-through advertisements, some users will click these links because of recognition of the well-known IKEA trademark and the Respondent’s unauthorised inclusion of the Complainant’s trademark in the disputed domain name. The Respondent will presumably earn click through revenue as a result.
In the case of the content displayed when the disputed domain name redirects users to other domains, the users may not realise that they have been redirected to third party websites and will be confused into thinking that the content and products displayed on those sites are associated with or originate from the Complainant. The Respondent will presumably be compensated for redirecting traffic to these third party sites.
(c) Again as to use in bad faith, another domain name that users are redirected to from the disputed domain name is <system-warning-message.com>, which states that the user’s system has been infected and his or her credit card details and banking information is “at RISK” and encourages the user to “call immediately for assistance”. The Panel adopts the conclusion that redirection of Internet users to a website with possible malware in and of itself shows Respondent’s bad faith under the Policy, paragraph 4(a)(iii).
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 <ikeajordan.com> be transferred to the Complainant.
Andrew Brown Q.C.
Date: February 25, 2016