WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

IKEA Systems B.V. v. James Acosta

Case No. D2013-2245

1. The Parties

Complainant is IKEA Systems B.V. of Delft, Netherlands, represented by Studio Barbero, Italy.

Respondent is James Acosta of Miami, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <ikeacouponsprintable.com> 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 December 27, 2013. On December 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 27, 2013, 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2014. Notice of Respondent default was erroneously sent on January 23, 2014. Respondent did not submit any response or any communication for the duration of these proceedings. Upon review of the procedural steps taken in this case, and the lack of any participation of the Respondent at any stage of these proceedings despite receiving notice in accordance with paragraph 2 of the Rules, the Panel ordered the Center to notify the Respondent’s default on February 10, 2014.

The Center appointed David Perkins as the sole panelist in this matter on January 29, 2014. 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

4.1. Complainant

4.1.1. The Complainant was founded in the early 1940’s by the Swedish entrepreneur, Ingvar Kamprad. The first IKEA store was opened in Sweden in 1958. Today there are 316 IKEA stores in 42 countries in Europe, North America, the Middle East, Asia Pacific and the Caribbean. The stores offer a broad range of well-designed, functional home furnishing products at affordable prices. Over 775 million visitors shopped at IKEA stores in 2013. Annual sales in 2013 were in excess of USD $37.38 billion. The IKEA website had more than 1.2 billion visitors in 2013.

4.1.2. Complainant is the proprietor of more than 1,400 international and national trade mark registrations worldwide, including the following:

4.1.3. Complainant’s IKEA trademark has been ranked amongst the world’s best known marks. For example:

- Interbrand 2010 Best Global Brands: ranked 28

- Interbrand 2013 Best Global Brands: ranked 26

- Interbrand 2013 Best Global Brands by Sector: IKEA was the only brand listed in the Home Furnishings sector

Interbrand estimated the value of the IKEA trade mark in 2013 as USD $13.80 billion.

4.1.4. Complainant is the proprietor of the domain name <ikea.com> and is also the registrant of more than 200 generic Top Level Domains (“gTLDs”) and country code Top Level Domains (“ccTLDs”) incorporating the term “ikea” at the second level.

4.2 Respondent

4.2.1. In the absence of a Response, what is known of Respondent is that which is set out in the Complaint.

4.2.2. The disputed domain was registered on December 28, 2010.

4.2.3. The disputed domain name resolves to a website where alleged IKEA printable coupons are offered. That website also contains additional business and sponsored links including the website “www.onesexaday.com”, which publishes adult content. A printout of the main website to which the disputed domain resolves is exhibited to the Complaint. This depicts a large retail outlet prominently featuring the name IKEA offering coupons “to spend at IKEA!”

4.2.4. Complainant’s legal counsel sent a Cease & Desist letter to Respondent dated November 26, 2013 with follow up emails dated December 9, 2013 and December 20, 2013. No reply or acknowledgement to those communications was received from Respondent.

5. Parties’ Contentions

5. A. Complainant

5. A.1. Identical or Confusingly Similar

5. A.1.1. Complainant’s case is that where the disputed domain name incorporates Complaint’s trade mark in its entirety with the addition of a generic or descriptive term, that is sufficient to satisfy the requirement of paragraph 4(a)(i) of the Policy. In that respect, Complainant cites Inter Ikea Systems B.V. v Ikea Property Management, WIPO Case No. D2011-1966 (where the disputed domain name was <ikeapropertymgmt.com>); Inter Ikea Systems B.V. v Charles Stapleton, WIPO Case No. D2011-1963 (where the disputed domain name was <ikeaonlinecatalogue.com>); and F. Hoffmann-La Roche AG v. Sysadmin admin, balata.com Ltd., WIPO Case No. D2008-0954.

5. A.1.2. The Complainant also cites cases where domain names incorporating a generic or descriptive term suggests a connection with the trade mark owner’s business, namely Inter Ikea Systems B.V. v. Yootana Tunmaneekool, WIPO Case No. D2011-1964 (where disputed domain name was <ikeasofa.net>); Inter Ikea Systems B.V. v. Daniel Woodson, WIPO Case No. D2011-1933 (disputed domain name <ikeacoupon.net>); Hertz System Inc. v. Home, Khoung Mai Ngoc, WIPO Case No. D2012-1946 (disputed domain name <hertzcouponcode.net>); and Hickory Farms, Inc. v Registration Private / Mihnea Constantin, WIPO Case No. D2011-2178 (disputed domain name <hickoryfarmscouponcodes.info>).

5. A.2. Rights or Legitimate Interests

5. A.2.1. Complainant’s case is that there is no evidence that Respondent could bring himself within any of the circumstances set out in paragraph 4(c) of the Policy. Further, Complainant asserts that Respondent’s misuse of the disputed domain name – which is described in paragraph 4.2.3 above – is a clear misuse of the IKEA trade mark designed to divert users to Respondent’s website. Such use, Complainant says, is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name. In support of its case, Complainant cites the decisions in Hickory Farms, supra, and Hartsfield Area Transportation Management Association, Inc. v. Max Davidovich, WIPO Case No. D2006-0743.

5. A.2.2. Complainant states that Respondent’s website to which the disputed domain name resolves contains a disclaimer on the bottom of the page stating “IKEA Coupons is not affiliated with IKEA”. That disclaimer is located at the extreme bottom of the page and is only apparent to Internet users after having scrolled the corresponding page and possibly having clicked on some of the links to third party websites. Consequently, the disclaimer is not immediately apparent to Internet users who have been attracted or diverted to the website by reason of the similarity of the disputed domain name to Complainant’s well known IKEA trade mark.

5. A.2.3. Complainant cites decisions under the Policy where disclaimers in similar fact situations have been held ineffective to establish bona fide or legitimate noncommercial or fair use of a domain name. For example, Estee Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869, and The Napoleon Hill Foundation v. Thinkandgrowrich.com, WIPO Case No. D2002-0228.

5. A.2.4. Complainant also cites decisions under the Policy where a respondent’s failure to respond and challenge Cease & Desist letters is indicative of a lack of rights or legitimate interests in a domain name. For example, The Great Eastern Life Assurance Company Limited v. Unasi Inc., WIPO Case No. D2005-1218, and Stanworth Development Limited v Mike Morgan (290436), WIPO Case No. D2006-0230.

5. A.3. Registered and Used in Bad Faith

5. A.3.1. Complainant’s case is that, considering the IKEA trade mark’s unique and distinct characteristics, it is inconceivable that Respondent was unaware of the existence of that mark at the time of registration (December 28, 2010) of the disputed domain name.

5. A.3.2. Complainant further asserts that the well-known character of the IKEA trade mark with which the disputed domain name is confusingly similar is, in itself, evidence of bad faith registration. Complaint cites in that respect Société des Produits Nestlé SA v. Kayvan Sadeghi, WIPO Case No. DIR2007-0002 (concerning <nestle.ir>).

5. A.3.3. As further evidence of Respondent’s knowledge of Complainant’s trademark, Complainant points to the illustration of an IKEA plant and use of the IKEA mark on the home page of the website to which the disputed domain name resolves: see paragraph 4.2.3 above. Complainant cites in this respect Herbalife International, Inc. v Surinder S. Farmaha, WIPO Case No. D2005-0765.

5. A.3.4. As to bad faith use of the disputed domain name, Complainant asserts that use of the term “coupons” is evidence in itself of Respondent’s intention to attract Internet users by creating a likelihood of confusion with the IKEA trademark under paragraph 4(b)(iv) of the Policy.

5. A.3.5. Another aspect of bad faith use arises, Complainant says, from the click-through revenue Respondent obtains when confused Internet users click on one of the sponsored links to third party websites. Complainant cites numerous decisions under the Policy where such conduct has been held to constitute bad faith use. For example, The Procter & Gamble Company v. Names2000.com, WIPO Case No. D2010-0357.

5. A.3.6. Additionally, Complainant cites decisions under the Policy where – as in this administrative proceeding – use of a domain name to divert consumers to a pornographic website have been held to be evidence of bad faith registration and use. For example, Angus Sholto-Douglas, Kwandwe Private Game Reserve v. Sergey Fedorov, WIPO Case No. D2006-1184 and the Hartsfield decision, spura.

5. A.3.7. Finally, Complainant cites decisions under the Policy where failure to respond to a Cease & Desist letter – again, as in the present case – can amount to evidence of bad faith. For example, Red Bull GmbH v. Fundacion Private Whois, WIPO Case No. D2012-0842 and The Great Eastern Case, supra.

5.B. Respondent

As noted, no Response has been filed to the Complaint.

6. Discussion and Findings

6.1. The Policy paragraph 4(a) provides that Complainant must prove each of the following in order to succeed in an administrative proceeding:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

6.2. The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate Respondent's rights or legitimate interests in the disputed domain name.

6.3. The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4. As stated, the circumstances set out in paragraphs 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

6.5. Identical or Confusingly Similar

6.5.1. Without doubt, Complainant has rights to the IKEA trade mark, which is a very well-known mark internationally including in the United States of America where Respondent is located.

6.5.2. Use of that trade mark in the disputed domain name with addition of the descriptive term “couponsprintable” is clearly confusingly similar. In that respect, the decisions cited in paragraph 5.A.1.1 are in point. See also in this respect the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9.

6.5.3. In the circumstances, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy.

6.6. Rights or Legitimate Interests

6.6.1. In the absence of a Response and on the basis of Complainant’s case summarized in paragraph 5.A.2 above, there is no evidence that Respondent could bring himself within any of the circumstances set out in paragraph 4(c) of the Policy.

6.6.2. As to the disclaimer, that cannot of itself cure bad faith or provide a right or legitimate interest, when bad faith has been established by other factors. The facts in each case must be considered. Here, there is clearly the probability of Internet user “initial interest confusion” given the confusing similarity of the disputed domain name with Complainant’s well-known IKEA mark. The existence of the disclaimer is also evidence of Respondent’s awareness of that trade mark and consequent bad faith at the time of registration of the disputed domain name. Finally, the nature of the disclaimer, which is described in paragraph 5.A.2.2. above, is also compelling evidence of the ineffectiveness of the disclaimer to establish bona fide or legitimate noncommercial or fair use of Complainant’s IKEA trade mark. See, in that respect, The Napoleon Hill Foundation decision, supra.

6.6.3. In the circumstances, the Complaint clearly satisfies the requirement of paragraph 4(a)(ii) of the Policy.

6.7. Registered and Used in Bad Faith

In the light of the facts and matters summarized in paragraph 5.A.3. above, the Panel is satisfied that Complainant has established the circumstances set out in paragraph 4(b)(iv) of the Policy, namely that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s IKEA trademark.

7. Decision

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 <ikeacouponsprintable.com> be transferred to the Complainant.

David Perkins
Sole Panelist
Date: February 20, 2014