WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter-IKEA v Polanski
Case No. D 2000-1614
1. The Parties
The Complainant:
Inter-IKEA Systems B.V., Olof Palmestraat 1, NL-2616, The Netherlands.
Representatives: Fross Zelnick Lehrman & Zissu, P.C., attn: Angela Kim, 866 United Nations Plaza, New York, NY 10017, USA.
The Respondent:
Polanski, U1. Dietla 13/2, Krakow, 31-031, Poland.
2. The Domain Name and Registrar
The Domain Name at issue is . The Registrar is BulkR, Inc,
7 East Redwood Street, Third Floor, Baltimore, MD 21202, USA.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) by e-mail on November 21, 2000, and a hardcopy was received by the Center on November 22, 2000. The Center acknowledged the receipt of the Complaint on November 24, 2000.
On November 28, 2000, the Center sent to BulkR, Inc. a request for verification of registration data. BulkR, Inc confirmed to be the Registrar, and that Polanski is the Registrant of the domain name and informed that the current status of the domain name is Registrar LOCK.
The Center verified that the Complaint satisfied the Rules and the Supplemental Rules and that payment was properly made. The Panel is satisfied that this is the case.
On December 1, 2000, the Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the administrative proceedings commenced. Since no communication was received from the Respondent within the time limit set, on December 27, 2000, the Center sent a default notification to the Complainant.
On January 15, 2001, the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
No further submissions were received by the Center or the Panel, the date scheduled for issuance of the Panel�s decision was therefore January 28, 2001.
4. Factual Background
A. Complainant
The Complainant is an internationally active company in the field of home furnishing and household wares. The founder of the company started to use the trademark IKEA in 1950 and published the first IKEA catalogue in 1951. Since then the business has grown and today the Complainant has 155 furnishing stores in 29 countries, including Poland and the United States. In Poland the first IKEA store was opened in 1990 and today 8 outlets, including one in Krakow, exist in the country. In the USA, the first outlet was opened in 1985 and in 1990 a success story article about IKEA in "Money" mentions that since then 6 outlets were opened all over the country. As can be seen from other articles submitted by the Complainant, its IKEA business is well implemented in the US market. In 1999 Complainant's sales of IKEA furnishings and accessories totaled over US $ 8 billion.
The Complainant is the owner of over 1200 trademark registrations for the wordmark IKEA and a design mark combing the word IKEA with graphical elements, in more than 70 countries, including Poland (the oldest dating back to 1983) and the United States (since 1986), and covering a wide range of products and services. Exhibit C to the complaint provides a data bank printout providing a partial listing of Complainant's IKEA trademarks worldwide and Exhibit D provides for copies of the registration certificates of the Patent Office in Poland. The trademark is principally being used for furnishing and accessories and related services.
These facts are evidenced by the attachments to the Complaint and, in the absence of any submission of the Respondent to the contrary, the Panelist is satisfied that the documents submitted by the Complainant truthfully reflect the factual circumstances of the case.
The Complainant administers a sophisticated and informative website under the general domain name (providing a link to the countries where the Complainant operates) and a website, specifically directed to US-customers under the domain name . On Complainant's websites the trademark "IKEA" is shown prominently.
On November 10, 2000, the Complainant, through its agents, issued a cease and desist letter to the Respondent and to Respondent's listed administrative/technical contact Victor Lashenko (and to Ron Benitzhak, the administrative contact of the domain name CASSAVA.NET, owned by Cassava Enterprises Ltd.; see below "Respondent"). No response was received from the Respondent.
B. Respondent
On September 2, 2000, the Respondent registered, the domain name . with BulkR, Inc. This domain name was, at least until November 6, instantly connecting its user to the Casino on Net virtual gambling site, operated by a company called Cassava Enterprises Limited. The Complainant has submitted, as exhibit K, attached to its complaint, a print-out of the on-line gambling website that the domain name resolved to.
At least since November 15, 2000, the domain resolves to an error page. Consequently, the domain name has been locked following Complainant's cease and desist letter.
5. Parties� Contentions
A. Complainant
Complainant submits that (1) the domain name is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.
B. Respondent
The Respondent has failed to submit any statement. He has therefore not contested the allegations of the Complaint.
6. Discussion and findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant or cancelled:
1) The domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
1) Confusing similarity with a mark in which the Complainant has rights
Complainant's trademark IKEA is, at least in the main commercial languages, an invented word with no meaning and therefore inherently distinctive. Complainant's trademark registrations of the word IKEA in Poland and in the USA evidence that he has exclusive rights in that word in these countries, as in many others. To the knowledge of the Complainant no other person has registered trademark rights in the word IKEA for whatever goods or services.
Furthermore, IKEA is a well-known trademark in many countries of the world, including the USA. Not only is the Panel personally convinced that IKEA is a well-known trademark, the Complainant has also submitted extensive evidence to prove the wide reputation of the mark. The Respondent has not contested this evidence. It has also been recognized in earlier panel decisions that the trademark IKEA is well-known (see Inter-IKEA-Systems B.V. v. McLaughlin Mobility, case No. D2000-0499; Inter-IKEA-Systems B.V. v Technology Education Centre, case No. D2000-0522; Inter-IKEA-Systems B.V. v Hoon Huh, case No. D2000-0438; Inter-IKEA-Systems B.V. v Evezon Co.Ltd, case No. D2000-0437). Furthermore, in a landmark decision dated June 20, 2000 (submitted by the Complainant as exhibit B to his Complaint), the Beijing Intermediate People's Court recognized for China that IKEA is a well-known mark and ordered the cancellation of the domain name , registered by a Chinese company.
The domain name "ikeausa" is not identical to trademarks of the Complainant, but integrates in its entirety the wordmark IKEA followed by the letters "usa", which are generally being understood as an abbreviation for the United States of America. In this domain name the generic tld indicator "com" is added, which cannot be taken into consideration when judging confusing similarity. The combination of a trademark with a geographical name is common practice for many domain names and does not exclude confusing similarity (see e.g. Wal-Mart Stores Inc v. Walmarket Canada, D2000-0150 relating to the domain name ).
Obviously, the Complainant is not active in gambling activities. However, when judging confusing similarity, even under traditional trademark law standards, the difference between the activities of the Complainant and the use of the domain name which the Respondent made, would not exclude confusion in view of the fact that the Complainant's mark is so well-known. Confusing similarity is even more evident, when considering the particular circumstances of use on the Internet. People in the USA, who are searching for the Complainant�s IKEA business related website, may expect to find it under its principal identifier "IKEA" combined with some geographical indicator, such as "usa". They may therefore type the sequence "ikeausa" and will be led to the Respondent. Furthermore, it must be taken into consideration that the Complainant is running a website in the USA under the domain name . A person intending to access the Complainant's website under that domain name, needs only to inadvertently omit the hyphen "-", in order to be misdirected to the gambling website of Cassava Enterprises (which normally may be accessed by using the domain name ). At present, when attempting to find the Complainant in the USA and misspelling its domain name into the actual or potential client will be informed that there is no website existing under that term. He may become discouraged and not search any further for Complainant's website.
In conclusion, the Panel is satisfied that the domain name is confusingly similar to trademarks in which the Complainant has rights in many countries, including Poland and the USA.
In view of these findings, the Panel sees no need to decide whether the principles of the US Anti-Cybersquatting Consumer Protection Act and jurisdiction of US-courts under this act should be applied in this case.
2) Legitimate rights or interests in respect of the domain name
As said before, the Respondent's domain name is not a descriptive word, in which the Respondent might have an interest. The Complainant has not consented to the Respondent's use of the domain name. Simple stocking of the domain name by the Respondent, as this is the case at present, does not create any right or legitimate interest in the domain name.
Furthermore, none of the circumstances listed under 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The Respondent has never used the domain name in connection with a bona fide offering of goods or services, and he has not demonstrated any preparations for such use. The prior use of the domain name as a link to a website for gambling activities cannot be considered to be a bona fide use, since the Respondent did not use himself his domain for a website relating to any - gambling - activities, rather used the domain name as a link to misdirect potential users of the IKEA website to the website of Cassava Enterprises. Such use cannot be considered to be a fair non-commercial use either. No doubt, the Respondent is not known at all under the name , since he never became active under that name.
Therefore, in the absence of any submission of the Respondent, the Panel concludes that the Respondent has no rights or legitimate interests vis-a-vis the Complainant in the domain name .
3) Registration and use in bad faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith. Even if the Respondent has not responded to the Complaint, the Complainant has to prove under the Policy that the Respondent has registered and is using the domain name in bad faith.
The Respondent has not attempted to sell the domain name to the Complainant and, at present does not actively use it.
It should be considered therefore, whether the present non-use, registration and former use of the domain name, as evidenced in Exhibit K of the Complaint, be regarded as registration and use in bad faith, taking into account all circumstances of the case
The Complainant, in his Complaint, has put forward a number of arguments speaking in favor of bad faith.
Given the fame of the IKEA mark and also the activities of the Complainant in Poland, including a furnishing outlet in Krakow, it is inconceivable that the Respondent was unaware of the Complainant before registering . Furthermore, it can be considered to be common knowledge of Internet users that the abbreviation "USA" stands for "The United States of America". It can therefore reasonably be excluded beyond any doubt that the Respondent created a fantasy name, which happened to consist of the word "ikea" and the letters "usa".
The Respondent did and does not exercise any activity of his own under the domain name . Instead he was employing that domain name to intentionally divert and attract consumers seeking Complainant's US-website to a virtual casino gambling site. In the absence of any submission of the Respondent to the contrary this must be considered to be for commercial gain. Thus the Respondent was pursuing an activity which falls under item 4b) iv) of the Policy, i.e. he attracted internet users to an on-line location, by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of that website or location. This leads the Panel to the conclusion that the Respondent registered and was using the domain name in bad faith.
Since, following the Complainant's intervention the Respondent ceased using the domain name, it must furthermore be proven that Respondent continues using the domain name in bad faith.
In that context, it has been convincingly argued in Telstra Corporation Limited v. Nuclear Marshmallows (case No. D2000-0003), that inaction of the Respondent is within the concept of 4a(iii) of the Policy. In this context it is important that the Respondent failed to respond to the cease and desist letter of the Complainant, informing him of the rights of the Complainant in his mark IKEA and stating that Respondent�s use and registration of the domain name violated his rights in that mark. Furthermore the Respondent failed to respond to the Complaint in this proceeding.
However, the Respondent has shown in the past a clear intention to make a bad faith use of this domain name. Therefore the Respondent has not contented himself in simply registering (stocking) the domain name .
The Panel agrees with the Complainant's argument, that there is no reason to believe that the Respondent intends to permanently cease using the domain name . It is indeed likely that the Respondent's server is only temporarily down or the link temporarily cut, pending the outcome of the present dispute.
Furthermore, even if in the future the Respondent were passively holding the domain name , this behavior would, under the circumstances of the case, amount to bad faith use.
The Respondent has incorporated in its entirety the Complainant's well-known mark in his domain name, just adding the letter sequence "usa". Additionally, this domain name is very similar to the domain name which the Complainant has registered before the Respondent and is using as a website addressed to the US-market.
Consequently, the Respondent is aware that inattentive use of his domain name by customers of the Complainant in the USA may cause detraction from the Complainant.
The Respondent failed to submit any argument or evidence in favor of good faith registration or good faith plans to use the domain name . It is difficult to imagine any plausible future active use of the domain name by the Respondent that would not be illegitimate, such as being infringement of Complainant's well-known mark or an infringement of unfair competition and consumer protection legislation.
Finally, in breach of sections 4.1 and 4.2 of its Registration Agreement with Bulkr, the Respondent did not provide its full name, e-mail address or telephone number, nor did it promptly update the information provided for its administrative/technical contacts. Actually, it was not possible for DHL to deliver the Complaint since the administrative/technical contact was unknown under the address and telephone number indicated (exhibit M to the Complaint).
Taking into account these particular circumstances the Panel concludes that the Respondent's former use of the domain name followed by the present passive holding of the domain name satisfies the requirements of paragraph 4(a)(iii) of the Policy that the domain name has been registered an is being used in bad faith.
Comparable cases, where in absence of any response of the Respondent the Panel, based on the circumstances of the case, has concluded that the (not identical but) confusingly similar domain name was registered and used in bad faith are e.g. "Deutsche Bank AG v. E-business International (case No. D2000-0504), "Wright & Lato, Inc. v. Michael L. Epstein (case No. D2000-0621), Metabolife International v. Robert Williams (case No. D2000-0630), L v. Stephen Ward (case No. D2000-0680) and Pharmacia & Upjohn AB v. Dario H. Romero (case No. D2000-1273).
7. Decision
The Panel decides that the Complainant has proven each of the three elements of paragraph 4(a) of the Policy.
The Panel requires that the registration of the domain name be transferred to the Complainant.
Dr. Gerd F. Kunze
Sole Panelist
Date: January 22, 2001
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