WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter IKEA Systems BV (IISBV) v. Abbas Ghaffarian
Case No. DIR2016-0011
1. The Parties
The Complainant is Inter IKEA Systems BV (IISBV) of Amsterdam, the Netherlands, represented by Saba & Co. IP, Lebanon.
The Respondent is Abbas Ghaffarian of Shiraz, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <ikeashiraz.ir> (the “Domain Name”) is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2016. On April 12, 2016, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Name. On April 13, 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 April 19, 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 April 20, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2016. No Response was submitted. Accordingly, on May 23, 2016, the Center notified the Respondent’s default.
The Center appointed Nicholas Smith as the sole panelist in this matter on May 26, 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 is the owner of the concept for the sale of furniture and home furnishing products marketed under the trademark IKEA. It operates its business model through a franchise system whereby franchisees are authorized to distribute IKEA goods and make use of the IKEA trademark. The Complainant’s franchisees operate 361 IKEA stores in 45 countries.
The Complainant is owner of more than 1,500 trademark registrations for the word “ikea” (the “IKEA Mark”) and variants in over 80 countries around the world. The Complainant is the owner of the IKEA Mark in the Islamic Republic of Iran, where the Respondent is based, and has held that mark since 1977. The Complainant is also the owner in the Islamic Republic of Iran of a device mark featuring the term “IKEA” in blue surrounded by a yellow circular background surrounded by a blue rectangle (the “IKEA Device Mark”).
The Domain Name, <ikeashiraz.ir>, was registered on December 16, 2012. It currently resolves to an Internet site located at “www.ikiashz.com” (“Respondent’s Current Website”) which appears to sell furniture in direct competition with the Complainant. Prior to the commencement of proceedings, the Respondent operated a website at the Domain Name (“Respondent’s Former Website”) that appeared to sell IKEA furniture in direct competition with the Complainant and featured the IKEA Device Mark. According to the Complainant, the Respondent operates a store in Shiraz, a large Iranian city, that purports to sell IKEA products without the permission of the Complainant and prominently displays the IKEA Mark and the IKEA Device Mark on its storefront and on its customer receipts.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s IKEA Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered or is being used in bad faith.
The Complainant is the owner of the IKEA Mark having registered the IKEA Mark and related marks throughout the world and in the Islamic Republic of Iran in particular.
The Domain Name consists of the IKEA Mark in its entirety with the addition of city name “shiraz” which is the name of the fifth largest city in the Islamic Republic of Iran. The Domain Name is confusingly similar to the Complainant’s IKEA Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name, nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is using the Domain Name for a website that creates the impression that he is operating a legitimate IKEA store in Shiraz. This is not the case. The only possible use of the Domain Name by the Respondent is to trade off the established goodwill of the IKEA Mark. This use of the Domain Name does not constitute a bona fide offering of goods or services. This constitutes prima facie evidence of no rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. The Domain Name was registered with the Complainant in mind as part of a business operated by the Respondent to offer IKEA products for sale in the Islamic Republic of Iran through an unauthorised store bearing the IKEA Mark and the IKEA Device Mark. The Respondent’s Former Website contains unauthorised photos of IKEA products that were taken from the Complainant’s website. The Respondent has continued his conduct despite being warned that such conduct constitutes trademark and copyright infringement. The Respondent’s conduct amounts to registration and use of the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the IKEA Mark, having registrations for the IKEA Mark as a trade mark in Islamic Republic of Iran.
“where a domain name is composed of a trade mark juxtaposed with a place name, a reader will naturally split them in that way, and the absence of a space, or the insertion of a dash, underscores, or hyphen does not prevent that approach. Accordingly, the Panel is of the view that each of the domain names in dispute comprises a portion identical to a mark (ATT) in which the Complainant has rights, together with a portion comprising a geographic qualifier, which is insufficient to prevent the composite domain name from being confusingly similar to Complainant’s mark ATT or Complainant’s Marks.”
The Panel adopts that reasoning. The Domain Name is confusingly similar to the Complainant’s IKEA Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the IKEA Mark or a mark similar to the IKEA Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate
The Respondent uses the Domain Name to operate a website to sell products, which in the Complaint are stated to be the Complainant’s products.
If the products sold by the Respondent via the Respondent’s Former Website or the Respondent’s Current Website are not genuine IKEA products, the Respondent’s use of the Domain Name does not grant it rights or legitimate interests since it is using the Complainant’s IKEA Mark for a site selling furniture products in direct competition with the Complainant.
If the Respondent is offering genuine IKEA products from the Respondent’s Former Website or the Respondent’s Current Website, such use does not automatically grant it rights or legitimate interests. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of Uniform Domain Name Dispute Resolution Policy (“UDRP”) decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) summarizes the consensus views of UDRP panels in response to the question about whether a reseller/distributor of trademarked goods or services has rights or legitimate interests in a domain name which contains such a trademark in the following manner:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the sites accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to ‘corner the market’ in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles.
Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.”
In this case, neither the Respondent’s Current Website nor the Respondent’s Former Website appears to accurately or prominently disclose the Respondent’s relationship with the Complainant, in particular that it is not an authorized dealer or has any particular connection with the Complainant. Rather, the prominent display of the IKEA Mark, the IKEA Design Mark and the use of what appear to be photos of IKEA products sourced from the Complainant’s website on the Respondent’s Former Website provide the impression that the Respondent’s Former Website is an official website of the Complainant or an official website of a franchisee of the Complainant in Shiraz. Members of the public who are interested in the Complainant’s products have visited or may visit the Respondent’s Former Website/Respondent’s Current Website on the assumption that the Respondent is the Complainant itself or an authorized franchisee. This is not the case. In the event that the Respondent is reselling genuine IKEA products, its use of its website in its present or past forms does not, on the face of it, grant it rights or legitimate interests in the Domain Name.
The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct demonstrates a right or legitimate interest in the Domain Name under the Policy. In the absence of such a response the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered or Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b)).
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the IKEA Mark at the time the Domain Name was registered. The Domain Name has resolved to a website that reproduces the IKEA and IKEA Design Marks and the Respondent appears to operate an offline store in Shiraz that purports to sell IKEA products and reproduces the IKEA Design Mark.
The Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights and legitimate interests of its own amounts to registration in bad faith.
The Respondent is using or has used the Domain Name for the purposes of operating a website and advertising a related store that sells goods that compete directly with the Complainant’s products. The Respondent is using the Domain Name, which is confusingly similar to the IKEA Mark, to sell products, be they legitimate or otherwise, in competition with the Complainant and without the Complainant’s approval. Furthermore neither the Respondent’s Former Website nor the Respondent’s Current Website discloses the relationship or lack thereof between the Respondent and the Complainant. Such use, in the absence of any explanation by the Respondent, is prima facie misleading and creates a likelihood of confusion with the Complainant. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant’s IKEA Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Former Website and/or the Respondent’s Current Website.
The Panel, while noting that the Policy only requires that a complainant show that a respondent registered or subsequently used the domain name at issue in bad faith, finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) 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, <ikeashiraz.ir>, be transferred to the Complainant.
Date: May 30, 2016
1 While the Complaint is brought under the Policy, and not the Uniform Domain Name Dispute Resolution Policy (UDRP), given the similarities between the two, the Panel considers UDRP precedent and secondary UDRP materials such as the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) relevant to the current proceedings, and will refer to them throughout.