WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Inter IKEA Systems B.V. v. 黄伟 (Huang Wei)

Case No. DCN2021-0006

1. The Parties

The Complainant is Inter IKEA Systems B.V., Netherlands, represented by Convey Srl, Italy.

The Respondent is 黄伟 (Huang Wei), China.

2. The Domain Names and Registrar

The disputed domain names <ikeafamily.cn> and <ikeafamily.com.cn> are registered with 阿里巴巴云计算

（北京）有限公司 (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2021. On March 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 5, 2021, 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 China ccTLD Dispute Resolution Policy (the “Policy”), the China ccTLD Dispute Resolution Policy Rules (the “Rules”), and the WIPO Supplemental Rules for China ccTLD Dispute Resolution Policy and China ccTLD Dispute Resolution Policy Rules (the “WIPO Supplemental Rules”).

In accordance with the Rules, Articles 5 and 6, and Articles 14 to 16, and the WIPO Supplemental Rules, Paragraph 4(d), the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on March 10, 2021. In accordance with the Rules, Articles 17 and 49, the due date for Response was March 30, 2021. On March 10, 2021, the Center received the Respondent’s communications by email. The Respondent did not submit any formal response. On March 31, 2021, the Center informed the Parties that it would proceed to panel appointment.

The Center appointed Sok Ling MOI as the sole panelist in this matter on April 9, 2021. 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, Article 29.

4. Factual Background

IKEA, an acronym named after the initials of its founder (Ingvar Kamprad), the farm on which he grew up (Elmtaryd) and the nearby village (Agunnaryd), was founded in 1943. IKEA is well known for its low-cost furniture and the concept of self-assembly and flat packing. The international expansion of the IKEA business began in 1963 (Norway) and 1969 (Denmark), followed by another round of expansion in the 1980s (United States of America (“USA”), United Kingdom, Italy and France). Today, the IKEA business has more than 400 stores and over 200,000 employees worldwide.

The Complainant is the worldwide IKEA franchisor and responsible for developing and supplying the global IKEA range. The Complainant launched the loyalty card “IKEA family” in the 1980s, and launched its official website “www.ikea.com” in 1997. The Complainant started its retail operations in mainland China in 1998 and currently operates a network of 20 stores, three distribution centers, seven delivery centers and an experience center in mainland China. In March 2020, the Complainant launched the IKEA virtual store on the Alibaba e-commerce platform Tmall.

The Complainant owns trade mark registrations for IKEA in more than 80 countries worldwide, including the following:

The Complainant also owns more than 400 domain names under generic Top-Level Domains (“gTLDs”) and almost 300 domain names under country code Top-Level Domains (“ccTLDs”), including <ikea.com>, <ikea.net>, <ikea.us>, <ikea.cn>, <ikea.de>, <ikea.it> and <ikea.co.uk>.

The disputed domain names <ikeafamily.cn> and <ikeafamily.com.cn> were registered on March 10, 2020. At the time of filing, they resolved to parking pages with offer to sell the disputed domain names. They are currently inactive.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to its IKEA trade mark, the Respondent has no rights or legitimate interests in respect to the disputed domain names or major part of them, and that the disputed domain names were registered and are being used in bad faith. The Complainant requests for the transfer of the disputed domain names.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. In his email communications of March 10, 2021 to the Center, he stated that “stop calling me”.

6. Discussion and Findings

6.1 Language of the Proceeding

Pursuant to Article 6 of the Policy and Article 8 of the Rules, unless otherwise agreed by the Parties, or determined by the Panel under exceptional circumstances, the language of the administrative proceeding shall be Chinese. The Panel may order that any documents submitted in languages other than Chinese be accompanied by a translation in whole or in part into Chinese.

From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding. The Complainant contends that the Respondent is familiar with English as the Respondent has replied to the Complainant’s cease-and-desist letter in English. The Complainant further contends that the disputed domain name are composed of Latin characters, and requiring it to translate the Complaint and supporting documents into Chinese will lead to undue delay and impose substantial cost burden on the Complainant.

The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain names are registered in Latin characters, rather than Chinese script; and

(b) the disputed domain names comprise the English word “family”; and

(c) the Respondent has replied to the Complainant’s cease-and-desist letter in English.

Additionally, the Panel notes that:

(a) the Center has notified the Respondent in both Chinese and English of the proceeding; and

(b) the Respondent has been given the opportunity to present his case in this proceeding and to respond to the issue of the language of the proceeding. The Respondent did not comment on the language of the proceeding; and

(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese. Except for the above-mentioned email communications from the Respondent, he has chosen not to file a formal Response.

Article 31 of the Rules requires the Panel, inter alia, to “ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case” and to “ensure that the proceedings take place with due expedition”.

Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case.

The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be translated into Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.

Having considered all the matters above, the Panel determines that it shall accept the Complaint and all supporting materials as filed in English and the Respondent’s communications in Chinese, that English shall be the language of the proceeding, and that the decision will be rendered in English.

6.2 Substantive Issues

Article 8 of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:

(a) the disputed domain name is identical with or confusingly similar to a name or mark in which the complainant has civil rights or interests;

(b) the respondent has no rights or legitimate interests in respect of the disputed domain name or major part of the disputed domain name; and

(c) the respondent has registered or has been using the disputed domain name in bad faith.

Article 7 of the Policy states that the complainant and the respondent shall bear the burden of proof for their own claims.

On the basis of the arguments and evidence introduced by the Complainant and the email communications from the Respondent, the Panel concludes as follows:

A. Identical or Confusingly Similar to the Complainant’s Name or Mark in which the Complainant has Civil Rights or Interests

The Panel accepts that the Complainant has rights in the IKEA trade mark by virtue of use and registration. The IKEA trade mark has been registered worldwide including in China, and enjoys a strong reputation as being associated with the Complainant.

The disputed domain names are both confusingly similar to the IKEA trade mark because they incorporate the IKEA trade mark in its entirety. The Panel finds that the inclusion of the ordinary English word “family” does not prevent a finding of confusing similarity, as the IKEA trade mark is recognizable in the disputed domain names. The addition of the “.com.cn” and “.cn” suffixes does not detract from the confusing similarity and is usually disregarded in the first element analysis.

Consequently, the Panel finds that both disputed domain names are confusingly similar to the IKEA trade mark in which the Complainant has civil rights or interests.

Accordingly, the Complainant has satisfied the condition under Article 8(a) of the Policy.

B. Rights or Legitimate Interests

Under Article 10 of the Policy, a respondent may establish its rights to and legitimate interests in the disputed domain name by demonstrating any of the following before receiving the complaint:

(a) the respondent uses of the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(b) the respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or

(c) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent of or commercial gain to misleadingly divert consumers.

The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the IKEA trade mark or to seek registration of any domain name incorporating the trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain names or that it has any rights or legitimate interests in the name “Ikea”.

According to the evidence submitted by the Complainant, the Respondent was using the disputed domain names for parking pages that offered the disputed domain names for sale. Such use cannot be considered bona fide, or a legitimate noncommercial or fair use of the disputed domain names.

The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production thus shifts to the Respondent to establish his rights or legitimate interests in the disputed domain names. Since the Respondent’s email communications have not responded to the Complainant’s contentions, the prima facie case has not been rebutted.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names or the major part of the disputed domain names.

Accordingly, the Complainant has satisfied the condition under Article 8(b) of the Policy.

C. Registered or Used in Bad Faith

Article 9 of the Policy provides certain examples of circumstances which, may be evidence of the registration or use of the disputed domain name in bad faith, namely:

(a) the purpose for registering or acquiring the disputed domain name is to sell, rent, or otherwise transfer the disputed domain name registration to the complainant who is the owner of the name or mark or to a competitor of that complainant, and to obtain unjustified benefits; or

(b) the respondent registers the disputed domain name in order to prevent owners of the names or marks from reflecting the names or marks in corresponding domain names; or

(c) the respondent has registered or acquired the disputed domain name for the purpose of damaging the complainant’s reputation, disrupting the complainant’s normal business or creating confusion with the complainant’s name or mark so as to mislead the public; or

(d) other circumstances which may prove the bad faith.

The Panel accepts that the Complainant enjoys a strong reputation worldwide and in China in its distinctive IKEA trade mark in connection with its furniture and furnishing products. Ikea is a distinctive term that has no ordinary English meaning. The mere registration of a domain name that is confusingly similar to a well-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith. In this case, the Panel finds that the Respondent was clearly aware of the Complainant and of its IKEA trade mark and “IKEA Family” loyalty card when he registered the disputed domain names.

According to the evidence submitted by the Complainant, the disputed domain names resolved to parking pages that offered the disputed domain names for sale. In responding to the Complainant’s cease and desist letter, the Respondent also offered to sell the disputed domain names for USD 5,000, an amount clearly to obtain unjustified benefits. Such profit-seeking conduct is consistent with the example of bad faith described in Article 9(a) of the Policy.

The Respondent has not denied the Complainant’s allegations of bad faith. In view of the Panel’s above finding that the Respondent lacks rights or legitimate interests in the disputed domain names or the major part of the disputed domain names, and taking into account all the circumstances, the Panel concludes that the Respondent has registered and is using the disputed domain names in bad faith.

Accordingly, the Complainant has satisfied the condition under Article 8(c) of the Policy.

7. Decision

For the foregoing reasons, in accordance with Articles 14 of the Policy and 40 of the Rules, the Panel orders that the disputed domain names <ikeafamily.cn> and <ikeafamily.com.cn> be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: April 24, 2021