WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems BV (IISBV) v. Abolfazl Hosseini Zeydabadi
Case No. DIR2016-0008
1. The Parties
The Complainant is Inter IKEA Systems BV (IISBV) of Amsterdam, the Netherlands, represented by Saba & Co. IP, Lebanon.
The Respondent is Abolfazl Hosseini Zeydabadi of Sirjan, the Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <ikeashop.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 8, 2016. On March 8, 2016, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On March 9, 2016, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on March 11, 2016.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the "Policy" or "irDRP"), the Rules for .ir Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 17, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2016. The Respondent did not submit any Response. Accordingly the Center notified the parties of the Respondent's default on April 7, 2016.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on April 11, 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 owns the following trademark registrations in the Islamic Republic of Iran, in classes 11, 17, and 20: the trademark IRANIKEA number 131437 dated January 5, 2006; the trademark IKEA (and device) number 125527 dated October 18, 2005; and the trademark IKEA (and device) in Persian characters number 125525 dated October 18, 2005.
The disputed domain name, registered May 4, 2015 in the name of the Respondent, is used in connection with a website where furniture and other household items are being sold.
5. Parties' Contentions
The Complainant contends to own the trademark and concept IKEA which it has franchised to retailers in 45 countries. The concept is for ready-to-assemble furniture, which is sold by franchisee retailers of the Complainant.
The Complainant contends that its trademark is amongst the most well-known trademarks in the world and that it has been recognized as such. The Complainant contends to own more than 1,500 trademark registrations of IKEA and its variants as well as a significant number of domain names incorporating the trademark IKEA.
The Complainant contends that the disputed domain name is confusingly similar and identical to its trademark as the word "shop" does not distinguish the disputed domain name from the trademark owned by the Complainant. In fact, the Complainant argues, in reliance on a previous domain name decision, that using the word "shop" as part of the disputed domain name gives the impression that the Respondent is an authorized shop for the sale of IKEA branded products.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name as the Respondent's name bears no similarity to the trademark of the Complainant or the disputed domain name nor is the Respondent commonly known by the disputed domain name. Furthermore, the trademark IKEA is an invented trademark which is formed of the first letters of various names relating purely to the Complainant's founder. The Complainant contends that it has not authorized the Respondent to use the trademark IKEA. It further contends that because IKEA is a famous trademark, its use by the Respondent is done only in bad faith and with the aim of benefitting from the goodwill the trademark has built over the years.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name and started selling products online as well as in its shop while also using the trademark of the Complainant on its website as well as photos of IKEA products for the purpose of confusing consumers and attracting them to its products for commercial gain. Furthermore, the Respondent did not respond to a cease and desist letter sent by the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has submitted a number of trademark registration certificates for the trademark IKEA including in the Islamic Republic of Iran. The Panel is satisfied that the Complainant has established its ownership of the trademark IKEA.
The Respondent is using the trademark IKEA in the disputed domain name combined with the word "shop". The use of the word "shop" does not serve as a differentiator. The combination "ikeashop" does not create a term that is different and not confusingly similar to the trademark IKEA as the word "shop" is a dictionary word and especially considering that the association of the word "shop" with any trademark would give the impression that the website is indeed an online platform for the sale of the goods bearing the relevant trademark.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant, and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Complainant has indicated that it has never authorized the use of its trademark by the Respondent. The Panel notes that there are no indications that the Respondent is commonly known by the disputed domain name and the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to a right to or legitimate interest in the disputed domain name.
The Respondent did not submit a response and in the absence of such response, the Panel believes that the Complainant meets the requirement of prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. See Investissement Marius Saradar S.A.L. (Holding Company) and Banque Saradar S.A.L. v. John Naffah and Z Publishing Inc, WIPO Case No. D2000-0853.1
Therefore, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered or Used in Bad Faith
The element of bad faith is clearly established by the fact that the trademark IKEA is one of the most well-known trademarks in the world for furniture and household items. The disputed domain name is used in connection with the offering of furniture, decoration and other household items. Furthermore, the trademark IKEA is an invented word. Hence its use by the Respondent was intentional. The Respondent knew of the existence of the trademark IKEA at the time of registering the disputed domain name (See, The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113) and has used it with the aim of attracting consumers to its own products sold online. The Respondent has registered the disputed domain name and is using it in bad faith in an attempt to confuse consumers and attract them through capitalizing and free-riding on the reputation of the Complainant's trademark.
Therefore, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
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 <ikeashop.ir> be transferred to the Complainant.
Date: April 15, 2016
1 Given the similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (UDRP), the Panel finds UDRP precedent relevant to this case and will refer to UDRP decisions throughout.