WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter Ikea Systems B.V. v. Robert Amirillas, Extreme Construction Inc.
Case No. D2018-0789
1. The Parties
The Complainant is Inter Ikea Systems B.V. of Delft, Netherlands, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America (“United States” or “US”).
The Respondent is Robert Amirillas, Extreme Construction Inc. of Mesa, Arizona, United States.
2. The Domain Name and Registrar
The disputed domain name <ikeaplace.com> (the “Domain Name”) 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 April 9, 2018. On April 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 10, 2018, 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 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2018.
On April 27, 2018, the Center received the Parties’ request to suspend the proceeding. On April 30, 2018, the Center confirmed to the Parties that the administrative proceeding is suspended until May 27, 2018 for purposes of settlement discussions concerning the Domain Name. On May 25, 2018, the Center received a request from the Complainant for extension of the suspension and consequently the suspension was extended until June 27, 2018. On June 26, 2018, the Center received the Complainant's request to reinstitute the proceeding, and notified the Parties of the reinstitution on June 27, 2018. The new Response due date was set for July 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Commencement of Panel Appointment Process on July 3, 2018.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on July 12, 2018. 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 in this administrative proceeding is Inter Ikea Systems B.V. (“Ikea”), the owner of the IKEA trademark in the United States and in numerous jurisdictions around the world.
Ikea is an international provider of furniture and home furnishings with more than 400 stores in almost 50 countries around the world. The Ikea stores serve over 780 million customers per year and employ over 180,000 people. Ikea had annual sales of more than EUR 34,1 billion in 2017. Among the many Ikea stores is one in Tempe, Arizona – less than 15 miles from where the Respondent is located.
The Complainant owns numerous US trademark registrations for the IKEA trademark, for example US trademark Reg. No. 1118706, registered on May 22, 1979, and Reg. No. 1418733, registered on November 25, 1986, as well as numerous trademark registrations around the world. A list containing examples of trademark registrations is annexed to the Complaint.
The Complainant has invested heavily in advertising and promoting the IKEA brand in catalogs, advertisements, brochures as well as on social media and networking websites. As an example, the Complainant released an app for mobile devices in 2017 under the name Ikea Place. The app offers users the possibility to virtually “place” IKEA products in your space. It has also a visual search function. The Ikea Place mobile app is available for both Apple and Android mobile devices and it has received significant press coverage.
Pursuant to the Registrar, the Domain Name was registered on May 26, 2017.
At the time of drafting this decision, the Domain Name redirects to a web page with the text “Website coming soon”.
5. Parties’ Contentions
The Complainant provides trademark registrations, and submits that the IKEA trademark has achieved widespread recognition and is famous. The Complainant has obtained several domain name decisions recognizing the fame of the IKEA trademark. The Complainant argues that the Domain Name is identical to the Complainant’s common law trademark IKEA PLACE. Further, the addition of “place” to the Complainant’s well-known IKEA trademark is not sufficient to distinguish the Domain Name from the IKEA trademark. The generic Top-Level Domain (“gTLD”), “.com”, should not be taken into consideration when adjudging confusing similarity.
The Complainant argues further that there is no evidence that the Respondent has rights or legitimate interests in the Domain Name. The Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the IKEA trademark. The Respondent is not using the Domain Name in connection with any bona fide offering of goods or services. In light of the Respondent’s knowledge of the Complainant’s prior rights in the IKEA mark and the fact that the Domain Name has essentially been unused by the Respondent since its registration, the Respondent has no rights or legitimate interests in the Domain Name.
As to bad faith, the Complainant argues that the Respondent must have been aware of the Complainant’s famous trademark at the time of the registration of the Domain Name. The IKEA mark is immediately recognizable and a well-known trademark that exclusively identifies the Complainant and its goods and services. The Respondent’s adoption and use of the IKEA mark shows the Respondent’s familiarity with the trademark and its fame.
The Respondent did not reply to the Complainant’s contentions, but sent the following email to the Center on April 13, 2018:
“I own the domain for ikeaplace.com and it’s under a disput. I really don’t know what to do at this point. I’ve been offered to sell it and since I declined there offer they put it under dispute. What is the next step? I install IKEA cabinets for a living and am playing to build my company around this domain. Thank you.”
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark IKEA. The test for confusing similarity involves the comparison between the trademark and the Domain Name. The addition of “place” to the Complainant’s well-known IKEA trademark does not prevent a finding of confusing similarity between the Domain Name and the trademark. As the Domain Name is clearly confusingly similar to the Complainant’s trademark IKEA, the Panel does not need to decide on the Complainant’s common law rights contention with respect to “Ikea Place”.
For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the gTLD “.com”.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has not granted any authorization to the Respondent to register a domain name containing its trademark or otherwise make use of its mark. Despite the Respondent in his email of April 13, 2018 claims that he plans to use the Domain Name for a webpage advertising his business of installing IKEA cabinets, there is no evidence of the Respondent actually servicing IKEA products. Furthermore, the Respondent’s website does not “accurately and prominently disclose the relationship with the trademark holder”, cf. section 2.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In fact, there is no evidence at all. In any event, the Panel finds that the Domain Name’s composition effectively impersonates or suggests sponsorship or endorsement by the Complainant which cannot constitute fair use. See section 2.5.1. of WIPO Overview 3.0.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
To the Panel it is clear that the Respondent was aware of the Complainant’s trademark and its business when it registered the Domain Name. It follows from the fame of the trademark and the Respondent’s email of April 13, 2018.
Even if the Respondent may have believed he had the right to register the Domain Name, the Panel finds that the Respondent prevents the owner of the trademark from reflecting the mark in a corresponding domain name. Furthermore, as previously noted the Domain Name effectively impersonates or suggests sponsorship or endorsement by the Complainant. The Panel also finds that the Respondent is disrupting the Complainant’s business.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the paragraph 4(a)(i) 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 Domain Name <ikeaplace.com> be transferred to the Complainant.
Date: July 20, 2018