WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems B.V. v. Miguel Angulo
Case No. DCO2018-0024
1. The Parties
The Complainant is Inter IKEA Systems B.V. of Delft, Netherlands, represented by Studio Barbero S.p.A, Italy.
The Respondent is Miguel Angulo of Bogotá, Colombia.
2. The Domain Name and Registrar
The disputed domain name <ikea.com.co> 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 July 18, 2018. On July 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 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 July 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 13, 2018.
The Center appointed Andrea Dawson as the sole panelist in this matter on August 21, 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, IKEA Systems company was founded in 1943. The Complainant, directly or through its subsidiary companies, is the owner of numerous trademark registrations for or comprising IKEA, including trademarks registered in Europe and Colombia. (See Annex 4.1.1 to 4.8.2).
The IKEA brand is an internationally known brand, at the end of 2017, there were 355 IKEA stores in 29 IKEA Group countries in Europe, North America, the Russian Federation, Asia, Australia, Middle East and the Caribbean. In 2017, there were 817 million store visits worldwide, with 460 million shopping center visits. The retail sales in 2017 reached more than 34 billion. IKEA official web sites were visited over 2.1 billion times during 2017 and in the same period there were 137 million visits to the catalogue and store apps.
The Complainant owns trademark registrations for IKEA such as the European Trade Mark No. 109652 registered on October 10, 1998, and the Colombian trademark No. 321017 registered on September 8, 2006, for, among others, housing and decoration products.
The IKEA trademark has always been associated with the Complainant's business since its inception in 1943 and has been continuously used and recognized in connection with the Complainant's products and items manufactured and distributed around the world, being also used on the Complainant's business materials and means of promotion. Thanks to the franchise system, products bearing the IKEA trademark have been brought to hundreds of millions of people all over the world.
In order to increase the protection of the trademark IKEA on the Internet, the Complainant registered the term IKEA as a domain name in around 1000 gTLDs and ccTLDs, including <ikea.com>, which was registered on July 29, 1995, and <ikea.co>, which was registered on April 23, 2010, as shown in Annex 5.6.1. A list of the Complainant's domain names is attached herewith as Annex 5.6.2. The Complainant operates its official website "www.ikea.com"– which is translated in various languages, including Spanish – as its primary presence on the Internet for global promotion (see Annex 5.7).
The disputed domain name was registered on March 5, 2010.
Per the evidence provided by the Complainant the disputed domain name pointed to the website "www.golf.co", an online store of golf accessories, as per printout enclosed as Annex 6.1. Historical screenshots (dating back to 2014 and 2016) are also enclosed in Annexes 6.2 and 6.3.
The Complainant sent a Cease & Desist letter to the Respondent on May 11, 2018, requesting him to cease any use of the Domain Name and transfer it to the Complainant (Annexes 7.1.1 and 7.1.2). The Respondent replied, by email dated June 5, 2018, on the merits in Spanish (see Annex 7.3) arguing that he had been the owner of the Domain Name since more than eight years and that, when he registered the Domain Name, the Complainant had no interest in Colombia.
The Respondent further indicated that the IKEA would be the acronym of "International Know Escrucería Angulo". Nevertheless, he indicated to be prone to amicably solve the matter requesting USD 3,850 for the transfer of the domain name.
On June 11, 2018, the Complainant further replied by email to the Respondent reiterating the previous claims and requests, underlying that IKEA Systems owned prior rights over the trademark IKEA in Colombia. It was also highlighted that, since the Domain Name had been (always) redirected to the website "www.golf.co" where there was no mention of the existence of the alleged business named "International Know Escrucería Angulo" or of the acronym IKEA, the purported legitimate interest claimed by the Respondent was merely fabricated on purpose.
On June 14, 2018, the Respondent sent a final email in Spanish (see Annex 7.5) arguing that the Complainant could try any path to recover the domain name <ikea.com.co> and stating that he did not agree with any of Complainant's arguments.
5. Parties' Contentions
The Complainant asserts that the Domain Name registered by the Respondent is identical to the trademark in which the Complainant has rights.
The Complainant further asserts that the Domain Name in fact incorporates the Complainant's IKEA trademark in its entirety, without any alteration which might distinguish the Respondent's Domain Name from the earlier mark. The country code top level domain ".com.co" is merely instrumental to the use of the Internet and, therefore, the Domain Name remains identical to the trademark despite its inclusion, the addition of the combined country code Top-Level Domain ("ccTLD") elements <.com.co> is not sufficient to exclude the likelihood of confusion resulting from such incorporation.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts in this regard that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has no website to advertise any goods or services of his own. The Respondent has not been commonly known by the disputed domain name and has not acquired any trademark rights related to the disputed domain name.
Moreover, the Complainant indicates that the Respondent is not a licensee, authorized agent of the Complainant or in any other way authorized to use the Complainant's trademarks. Specifically, the Respondent has not been authorized to register and use the Domain Name.
The Complainant further adds that after additional searches it is not in possession of, nor aware of, the existence of any evidence demonstrating that the Respondent might be commonly known by a name corresponding to the disputed Domain Name as an individual, business, or other organization. The mere allegations provided by the Respondent without any piece of concrete and credible evidence is indeed not sufficient to prove such a circumstance.
The Complainant in addition adds that, the Respondent, apart from the questionable explanation sent, has not provided the Complainant with any evidence of use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services under the name IKEA before any notice of the dispute herein nor indicated a credible and legitimate intent which does not capitalize on the reputation and goodwill inherent in the Complainant's trademark.
The Complainant also contends that the disputed domain name was registered and used in bad faith. The Complainant indicates that it is the owner of trademark registrations for IKEA which predate the registration of the Domain Name of several years, including trademark registrations valid in Colombia, where the Respondent is based according to the WhoIs records. The trademark IKEA has been extensively used since as early 1940s in connection with the Complainant's advertising and sales of IKEA products worldwide and has been widely publicized globally and constantly featured throughout the Internet.
In light of the above, according to the Complainant, the intensive use of the trademark and the well-known character of IKEA worldwide, the Respondent could not have possibly ignored the existence of the trademark registration identical to the Domain Name when it was registered.
The Complainant alleges that it is inconceivable that the Respondent was not well aware of the Complainant's trademark rights - which moreover were public and easily accessible, being the trademark also registered before the Colombian Trademark Office - at the time of the registration of the Domain Name.
The Complainant further indicates that the Respondent's purpose in registering the Domain Name, which incorporates IKEA mark in its entirety, was mainly to capitalize on the reputation of the Complainant's trademark by diverting Internet users seeking information about this distinctive sign to his own website, where golf-related products are sold.
The Complainant finally asserts, that in light of the above, it is apparent that the Respondent has been attempting to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site and of the activity promoted therein.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established rights to the IKEA trademarks. The addition of the combined country code Top-Level Domain ("ccTLD") elements ".com.co" is not sufficient to exclude the likelihood of confusion resulting from such mention.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the trademark IKEA in which the Complainant has rights. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name.
Prior UDRP panels have established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a domain name, the burden of production shifts to the respondent to come forward with evidence to support a finding that he does have rights or legitimate interests in the domain name.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name considering: a) the lack of authorization from the Complainant for the Respondent to use its IKEA trademarks, or to register any domain name incorporating said marks; b) the lack of evidence that the Respondent has made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; and c) that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Moreover, the Respondent has not come forward to assert any rights or legitimate interests he may have in the disputed domain name, and the record is devoid of any indication of such rights or legitimate interests. Even though certain communications existed between the parties prior to this proceeding, the Respondent failed to provide a Response within this dispute though he was officially notified and given a fair chance to demonstrate any rights, he did not make use of such instance.
Furthermore, the evidence provided by the Complainant regarding the use that the Respondent has given to the disputed domain name, is proof that the Respondent has been attempting to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his website and of the activity promoted therein.
Consequently, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of both registration and use of the disputed domain name in bad faith.
The Panel finds that the Complainant has submitted arguments, unchallenged by the Respondent, that the Respondent has registered the disputed domain name with knowledge of the Complainant's rights in the Complainant's trademarks and that the Respondent's bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant's trademarks at the time of the registration of the disputed domain name. The arguments provided to the Complainant by the Respondent prior to this dispute justifying the acronym used are vague and inconclusive, and do not allow to come to a conclusion of good faith use or registration.
Furthermore, the Panel finds that it is reasonable to conclude that the Respondent had knowledge of the Complainant's existence and the services it provided. Consequently, it is fair to conclude that the Respondent must have had the Complainant's trademarks in mind when registering the disputed domain name, especially taking into consideration that the Complainant's trademark IKEA is widely known.
Moreover, noting the assertions and documents provided by the Complainant, the Panel considers, on the balance of probabilities, that the Respondent's real intention was to try to give the impression of being associated with the Complainant and to take advantage of the reputation and goodwill associated with the Complainant's IKEA trademark.
For the above-cited reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <ikea.com.co> be transferred to the Complainant.
Date: September 3, 2018