WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. Lee Jin Ho
Case No. D2017-1649
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 Lee Jin Ho of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <bigikea.com> is registered with Gabia, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 24, 2017. On August 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 2017, 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 transmitted an email in English and Korean to the Parties regarding the language of the proceeding on August 28, 2017. The Complainant confirmed its request that English be the language of the proceeding and the Respondent did not comment.
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 in both Korean and English, and the proceedings commenced on September 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 26, 2017.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on October 17, 2017. 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 a unique concept for the sale of furniture and home furnishing products marketed under the trademark IKEA (the "Trademark"). The Complainant has also registered the trademark IKEA in more than 300 gTLD and ccTLD domain names worldwide; among these is <ikea.com> as the primary domain name.
The Respondent registered the domain name <bigikea.com> (the "Disputed Domain Name") on March 24, 2017. There is no evidence that the Respondent has any right, license, or an interest otherwise legitimate to use the Trademark. While the Disputed Domain Name's website no longer appears to be live, screenshots of the Disputed Domain Name's website indicate that the website offers to sell products that allege to be from the Complainant.
5. Parties' Contentions
The Complainant argues that the Disputed Domain Name is confusingly similar to the Complainant's registered IKEA trademark, since mere addition of "big" does not detract from the similarity between the Disputed Domain Name and the Complainant's Trademark. The Complainant also argues that the Respondent is not sponsored by or affiliated with the Complainant in any way, nor has the Respondent been given permission to use the Complainant's trademarks in any manner, including in domain names. Furthermore, the Complainant states that the Disputed Domain Name was registered and is being used in bad faith, since the Disputed Domain Name is confusingly similar to the Complainant's Trademark (by merely adding a generic term "big"), and since the Disputed Domain Name is being used to offer the Complainant's goods or counterfeit goods without the Complainant's authorization or approval. Also, the Complainant alleges that the Respondent's use of the Disputed Domain Name creates a likelihood of confusion as to the affiliation of its website for the purpose of confusing consumers for commercial gain.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Language of the Proceeding
The Registrar confirmed that Korean was the language of the registration agreement. However, the Panel notes that the website at the Disputed Domain Name is in English, the Dispute Domain Name is comprised of the English Term "big", the Respondent did not object for English to be the language of the Language of the Proceeding. In view of all these circumstances, and in accordance with paragraph 11(a) of the Rules the Panel determines that English will be the language of the proceeding.
B. Identical or Confusingly Similar
The Disputed Domain Name is <bigikea.com>, which is read to be the term "big" added before the Complainant's Trademark. The term "IKEA" carries no meaning in the English or Korean language other than as a trademark, which is the Trademark owned by the Complainant. The addition of the non-distinctive and generic term "big" to the beginning of the Complainant's IKEA Trademark does not negate the confusing similarity between the Disputed Domain Name and the Complainant's IKEA Trademark, particularly bearing in mind that the Complainant's IKEA Trademark is recognizable by the public as a renowned trademark. See Inter IKEA Systems B.V. v. Lei Wang, WIPO Case No. D2014-0139 (finding that "the most prominent and distinctive part of the disputed domain name is the word 'ikea' which is identical to the Complainant's registered IKEA Trademark. Given the fame and notoriety of the Complainant's IKEA marks, the addition of the term 'new' does not provide sufficient distinction from the Complainant's trademark").
Given the above, it is reasonable to conclude that anyone who sees the Disputed Domain Name is bound to mistake it for a domain name related to the Complainant, including an obvious association with the Trademark of the Complainant. By using the IKEA Trademark as a dominant part of the Disputed Domain Name with a generic prefix added thereto, the Respondent has exploited the goodwill and the image of the Complainant's Trademark.
This warrants a finding that the Disputed Domain Name is confusingly similar to the Complainant's IKEA Trademark.
C. Rights or Legitimate Interests
There is no evidence that the Respondent has any right, license, or an interest otherwise legitimate to use the Disputed Domain Name. Since the Respondent is neither an authorized dealer of the Complainant's products nor has had a business relationship with the Complainant, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could be claimed by the Respondent. See Guerlain S.A. v. PeiKang, WIPO Case No. D2000-0055 (the Panel stated that "in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent").
In addition, the Respondent is not commonly known by the Disputed Domain Name, which evinces a lack of rights or legitimate interests. See Policy, paragraph 4(c)(ii). Also, where "the Whois information suggests that Respondent is known as an entity other than the trademark associated with Complainant, and Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant's…mark," a Panel should find that the Respondent is not commonly known by the Disputed Domain Name. See United Way of America v. Alex Zingaus, FA 1036202. In the instant case, the pertinent WhoIs information identifies the registrant as "Lee Jin Ho," which does not resemble the Disputed Domain Name in any manner. Thus, where no evidence suggests that the Respondent is commonly known by the Disputed Domain Name, then the Respondent cannot be regarded as having acquired rights to or legitimate interests in the Disputed Domain Name within the meaning of paragraph 4(c)(ii) of the Policy.
Thus, there is no legal ground or factual evidence to hold that the Respondent had rights or legitimate interests to use the Disputed Domain Name.
D. Registered and Used in Bad Faith
Furthermore, there is no evidence to find that the Respondent is using the Disputed Domain Name in connection with a bona fide offering of goods or services. To the contrary, the evidence submitted to this Panel suggests that the Respondent has intentionally chosen a domain name based on a famous trademark in order to generate traffic and income through a website that sells IKEA branded products (which may or may not be counterfeit). Given the foregoing, there is reasonable basis to conclude that the Respondent is attempting to divert consumers to the Respondent's website for commercial gain by selling either the Complainant's products or counterfeit products at that website and qualifies as bad faith registration and use under paragraph 4(b)(iv) of the Policy.
Also, the Respondent's use of the Disputed Domain Name constitutes a disruption of the Complainant's business and qualifies as bad faith registration and use under paragraph 4(b)(iii) of the Policy, as the Respondent's Disputed Domain Name is confusingly similar to the Complainant's Trademark and the website at the Disputed Domain Name is being used to offer the Complainant's goods or counterfeit goods without the Complainant's authorization or approval.
Therefore, the distinctive fame of the Complainant's IKEA Trademark and its close association with the Complainant supports a finding that the Respondent has registered and is using the Disputed Domain Name in bad faith with actual knowledge of the Complainant's prior rights in and to the IKEA Trademark.
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 <bigikea.com> be transferred to the Complainant.
Thomas P. Pinansky
Date: October 31, 2017