WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems BV (IISBV) v. Armin Group
Case No. D2016-0761
1. The Parties
The Complainant is Inter IKEA Systems BV of Amsterdam, the Netherlands, represented by Saba & Co. IP, Lebanon.
The Respondent is Armin Group of Shiraz, Islamic Republic of Iran ("Iran").
2. The Domain Name and Registrar
The disputed domain name <ikeashz.com> is registered with Realtime Register B.V. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 18, 2016. On April 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2016, 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 April 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 17, 2016.
The Center appointed Steven A. Maier as the sole panelist in this matter on May 26, 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 a company incorporated in the Netherlands. It operates a worldwide franchise of stores selling furniture and related home products.
The Complainant is the owner of trade mark registrations including the following:
- Iranian trademark number 46938 for the word mark IKEA dated April 10, 1977
- Iranian trademark number 125527 for a figurative mark comprising the word IKEA in blue set on a yellow oval against a blue background ("the Device") dated October 18, 2005 and registered in Classes 11, 17 and 20.
The disputed domain name was registered on May 22, 2011.
According to evidence submitted by the Complainant, on April 6, 2016 the disputed domain name resolved to a website offering home products for sale online, including photographs of such products and of one of the Complainant's store frontages.
5. Parties' Contentions
The Complainant states that its franchising network comprises the world's largest furniture and retail chain, operating 361 stores in 45 countries. It claims that it has 821 million visitors per annum and produces evidence that its IKEA mark and brand are ranked at number 27 in the Interbrand list of the world's best known brands. The Complainant states that it has over 1,500 trademark registrations for IKEA and variations thereof in over 80 territories and that it operates 441 generic Top-Level Domains ("gTLD") and 294 country code Top-Level Domains ("ccTLD") incorporating the mark IKEA, including <ikea.com>.
The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. It states that the disputed domain name comprises its trademark IKEA together with the suffix "shz" which is an abbreviation for Shiraz, being the fifth largest city in Iran. The Complainant contends that the suffix does not differentiate the disputed domain name from the Complainant's trademark, but merely gives the impression that the Complainant does business in the geographical region represented by that suffix.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that the IKEA trademark is a distinctive, invented mark and that the Complainant has never authorized the Respondent to use the mark in any way. The Complainant further contends that the Respondent has not commonly been known by the disputed domain name, that it has neither used nor made demonstrable preparations to use the disputed domain name for any bona fide purpose, and that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name. The Complainant submits that, on the contrary, the Respondent has no reason to use the Complainant's famous trademark other than to trade off the Complainant's established goodwill in that mark. The Respondent's use of the disputed domain name falsely gives the impression that its website is the Complainant's authentic website for the Shiraz region and that the website is associated with or sponsored by the Complainant.
The Complainant contends that the disputed domain name has been registered and is being used in bad faith. The Complainant repeats the allegations referred to above and also submits that the Respondent's website uses a colour scheme which is identical to the Device and reproductions of photographs copied from the Complainant's own website in breach of its copyright. The Complainant states that, in addition to its website, the Respondent operates a bricks-and-mortar store in Shiraz, Iran which offers the Complainant's products and uses the Complainant's trademark on both its signboard and its receipts. The Complainant states that the Respondent has also used an Instagram page to refer to the disputed domain name and misleadingly to offer the Complainant's products for sale, which was removed after the Complainant contacted Instragram. The Complainant contends, therefore, that the Respondent has used the disputed domain name to attract business to its website by misleading customers about its relationship with the Complainant and as to the source of the products being offered. The Complainant also contends that it received no reply from a letter to the Respondent (in Farsi) dated December 23, 2015 demanding the transfer of the disputed domain name.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
Even in a case such as this where the Respondent has not contested the Complaint, it is still necessary for the Complainant to establish that all of the three above elements are present.
A. Identical or Confusingly Similar
The Complainant has established that it has registered trademark rights in the name and mark IKEA and has satisfied the Panel that its mark is widely known throughout the world in connection with the sale of furniture and home goods. The disputed domain name comprises the terms "ikea" and "shz" together with the gTLD ".com" which is typically to be disregarded by UDRP panels for the purpose of assessing confusing similarity. While the Panel does not consider that Internet users would necessarily understand the letters "shz" to refer to the Shiraz geographical region, the Panel finds that the addition of those letters is not effective to distinguish the disputed domain name from the Complainant's IKEA mark. In the circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
On the basis of the Complainant's submissions as set out above, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. While it was open to the Respondent to participate in these proceedings and to answer the Complainant's case, the Respondent has failed to do so. Furthermore, there is no other evidence before the Panel of any rights or legitimate interests on the Respondent's part. In certain circumstances, a reseller of a trademark owner's product, even if unauthorized, may legitimately use that trademark for the purposes of a domain name: see, e.g., paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). However the Respondent has put forward no such argument in this case and it does not appear to the Panel that the conditions for such legitimate use have been met. While it is not clear from the Complainant whether the Complainant accepts that the Respondent is selling the Complainant's genuine goods, it does not appear to the Panel that the Respondent has accurately and prominently disclosed its relationship (or lack of any relationship) with the Complainant. On the contrary, it appears to the Panel on the available evidence that the Respondent has used the Complainant's trademarks including the Device in a manner which is liable to mislead Internet users.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faithf
Based on the evidence of the Respondent's website submitted by the Complainant, it appears to the Panel that the Respondent registered and has used the disputed domain name in the knowledge of the Complainant's trademark IKEA and with the intention of making reference to that trademark. Further, the Panel infers that the Respondent adopted the disputed domain name with the intention of benefitting from the Complainant's substantial goodwill in its widely-known trademark. The Panel finds that the Respondent has operated a website that uses the Complainant's trademarks and copyrighted materials without authorization and is liable to mislead Internet users into believing that the site is operated or endorsed by the Complainant. In circumstances where the Respondent has failed to make out any case that the Complainant's trademark was used legitimately, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).
In the circumstances, the Panel finds that the disputed domain name has been registered and is being 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 <ikeashz.com> be transferred to the Complainant.
Steven A. Maier
Date: May 31, 2016