Complainant is Inter IKEA Systems B.V. of Delft, Netherlands, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
Respondents are Targetclix and Anh Vo of Littleton, Colorado, United States of America and Lakewood, Colorado, United States of America, respectively 2. The Domain Names and Registrar
The disputed domain names and (collectively the “Domain Names”) are registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2011. On June 28, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Names. On June 28, 2011, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact for the Domain Names.
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 July 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 26, 2011.
The Center appointed Yijun Tian as the sole panelist in this matter on August 10, 2011. 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 A. Complainant
Complainant, Inter IKEA Systems B.V., is a company incorporated in Netherlands. It is a world leading Furniture Company. To present, there are 316 IKEA stores in 38 countries, including at least 35 stores in the United States.
Complainant is the registered owner of numerous trademarks consisting or including the word “Ikea” throughout the world. Complainant owns more than 1,400 trademark registrations for IKEA and IKEA variants in more than 70 countries. (See Exhibits the Complaint L -- non -United States (“U.S.”) registered IKEA trademark and Exhibit M – U.S. registrations for IKEA mark). It also owns the domain name and multiple other domain names incorporating the IKEA mark. B. Respondent
The Domain Name was registered on or around December 28, 2010 and the Domain Name was registered on or around December 23, 2010, long after the IKEA mark became internationally famous. (See Exhibits to the Complaint A-1, A-2, and R). 5. Parties’ Contentions A. Complainant
(i) The Domain Names are Identical or Confusingly Similar to Complainant’s Mark
The Domain Names and are identical and/or confusingly similar to Complainant’s famous IKEA mark, as they incorporate the mark IKEA exactly and in its entirety.
The mere additions of the generic words “connection” and “in Colorado” fail to alleviate confusion, particularly in view of the fame of the IKEA mark.
The addition of “in Colorado” fails to alleviate confusion – and actually increases consumer confusion -- because it has been widely announced that an IKEA store will be opening in Colorado in 2011.
Use of the IKEA mark at the beginning of the Domain Names, as the eye-catching feature of the Domain Names, emphasizes Complainant’s mark and suggests to Internet users that the Domain Names are related to Complainant and its IKEA products and services.
(ii) Respondents Have No Rights or Legitimate Interests In The Domain Names
The Domain Names were registered long after Complainant had established rights in its IKEA mark through extensive use and registration.
Respondents cannot demonstrate or establish any such rights or legitimate interests in respect of the Domain Names.
There is no relationship between Complainant and either Respondent that gives rise to any license, permission, or other right by which Respondents could own or use any domain name incorporating Complainant’s IKEA mark.
Respondents are neither using the Domain Names in connection with a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Domain Names.
That Respondents have registered and are using the Domain Names for commercial gain, to generate revenue from third-party advertisements at the expense of Complainant and the goodwill it has built in its IKEA mark.
Respondents clearly are trading on Complainant’s goodwill to attract Internet users to websites located at the Domain Names with third-party advertisements that provide revenue for Respondents.
Respondents’ use of the IKEA mark in the Domain Names is for the financial benefit, is without authorization, and is with the intent to divert consumers to the websites at the Domain Names, which provide ad revenue for Respondents and even links to Complainant’s competitors.
Respondents are free-riding on the goodwill associated with Complainant’s IKEA mark for commercial gain.
(iii) Respondents Registered and are Using The Domain Names In Bad Faith
The Domain Names incorporate completely and in its entirety Complainant’s IKEA mark, and were acquired by Respondents long after the IKEA mark became famous.
Respondents have the intent to capitalize on the hard-earned and valuable goodwill associated with Complainant’s mark.
Respondents have actual knowledge of Complainant and its IKEA name and mark.
Respondents are using the Domain Names for personal or commercial gain – leveraging the notoriety of the IKEA mark to attract users to websites at the Domain Names that display revenue-generating advertisements and provides numerous links to web sites offering information about Complainant’s competitors or products offered by Complainant’s competitors.
Respondents have intentionally attempted to attract, for commercial gain, Internet users to Respondents’ websites by using two domain names that incorporate the IKEA mark to drive traffic to the site, and this use of the Domain Names and create a likelihood of confusion with Complainant’s IKEA mark as to the source, affiliation, or endorsement of the Domain Names.
That Respondents have posted a disclaimer on the website at the Domain Names is of no import and does not lessen the initial confusion that is likely experienced by Internet users seeking a web site operated by Complainant. (See Exhibit T to the Complaint).
Respondents’ registration and use of more than one domain name based on Complainant’s IKEA mark further demonstrates their knowledge of the IKEA marks and their bad faith registration and use of the Domain Names. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that the Domain Names should be transferred:
(i) the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the IKEA trademarks (the “Trade Marks”) acquired through registration. The Trade Marks have been registered worldwide including in United States (See Exhibits to the Complaint L for non-U.S. trademark registrations; and Exhibit M for U.S. trademark registrations) and it has a widespread reputation in home furnishing industry, specializing in “well designed, functional home furnishing products”.
The Domain Names and comprise the Trade Mark in its entirety. The Domain Name only differs from the Trade Mark by the addition of the word “connection.” The Domain Name only differs from the Trade Mark by the addition of the words “in Colorado”. The Panel finds that this does not eliminate the similarity between the Complainants’ registered and well-known trademarks and the Domain Names.
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
Generally a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; and PCCW-HKT DataCom Services Limited v. Yingke, HKIAC NAF Claim No. 0500065). Moreover, in a previous case involving Complainant in respect of the domain name , the panel found that “there is confusing similarity where the entire mark in question is incorporated into the disputed domain name and where only a generic word has been added” (Inter IKEA Systems B.V. v. InterikEA.com, Inc.,WIPO Case No. D2006-1379).
Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the Domain Names and the Trade Marks in which Complainant has rights.
The Panel therefore holds that Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the Domain Names:
(i) use of, or preparations to use, the Domain Names in connection with a bona fide offering of goods or services;
(ii) the fact that the Respondent has commonly been known by the Domain Names; or
(iii) legitimate noncommercial or fair use of the Domain Names.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; see also, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") paragraph 2.1 and cases cited therein).
Complainant has rights in the IKEA Trade Marks worldwide. Complainant owns more than 1,400 trademark registrations for IKEA and IKEA variants in more than 70 countries (e.g. registration in the United Kingdom of Great Britain and Northern Ireland since 1969, in China since 1993, and in the United States since 1986 - see Exhibitions L and M to the Complaint). Complainant has also registered and uses the domain name (registered in 1995), as well as many other domain names that include the IKEA mark, such as and those used for country-specific web sites such as, by way of example, (See Exhibit O to the Complaint).
According to Complainant it is a home furniture company established in Sweden in 1958. IKEA stores are located worldwide. To date, there are 316 IKEA stores in 38 countries, including at least 35 stores in the United States. Moreover, according to Complainant, Respondents are not authorized dealers of IKEA-branded products. Complainant has therefore established a prima facie case that Respondents have no rights or legitimate interests in the Domain Names and thereby shifted the burden to Respondents to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondents have no rights or legitimate interests in the Domain Names:
(a) There has been no evidence adduced to show that Respondents are using the disputed Domain Names in connection with a bona fide offering of goods or services. Respondents have not provided evidence of legitimate use of the Domain Names or reasons to justify the choice of the word “IKEA” in its business operations. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondents to use the Trade Marks or to apply for or use any domain name incorporating the Trade Marks;
(b) There has been no evidence adduced to show that Respondents have been commonly known by the Domain Names. There has been no evidence adduced to show that Respondents have any registered trademark rights with respect to the Domain Names. The Domain Name was registered on December 28, 2010 and the Domain Name was registered on December 23, 2010. The Domain Names are identical or confusingly similar to Complainant’s Trade Marks.
(c) There has been no evidence adduced to show that Respondents are making a legitimate noncommercial or fair use of the Domain Names.
The Panel finds that Respondents have failed to produce any evidence to establish rights or legitimate interests in the Domain Names. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the Domain Names in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Names; or
(ii) Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondents have registered and used the Domain Name in bad faith. a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the Trade Marks with regard to its products and business model. Complainant has registered its IKEA trademarks worldwide, including registration in U.S. since 1986. It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the Domain Names (in December 2010). The Panel therefore finds that the Domain Names are not one that one could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith. (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).” Thus, the Panel concludes that the Domain Names were registered in bad faith with the intent to create an impression of an association with Complainant’s IKEA branded products and business model. b) Used in Bad Faith
Complainant has adduced evidence to prove that by using a confusingly similar Domain Names, Respondents have “intentionally attempted to attract, for commercial gain, Internet users to Respondents’ websites” offering the Complainant’s IKEA products and Complainant’s competitors’ products. Complainant claimed that Respondents are using the Domain Names for personal or commercial gain – leveraging the notoriety of the IKEA mark to attract internet users to the websites at the Domain Names that displays revenue - generating advertisements and provides numerous links to web sites offering information about Complainant’s competitors or products offered by Complainant’s competitors (see also Exhibits B-1, B-2 to the Complaint).
To establish an “intention for commercial gain”, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).
Given the widespread reputation of the Trade Marks, the Panel finds that the public is likely to be confused into thinking that the Domain Names have a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed Domain Names are resolved (see Exhibits B-1, B-2 to the Complaint). In other words, Respondents have through the use of a confusingly similar domain name created a likelihood of confusion with the Trade Mark. Noting also that apparently no clarification as to Respondents’ relationship to Complainant is made on the homepage of the Domain Names, potential partners and end users are led to believe that the Domain Names and are either Complainant’s sites or the sites of official authorized partners of Complainant, which they are not. Moreover, Respondents did not respond formally to the Complaint. The Panel therefore concludes that the Domain Names were used by Respondents in bad faith.
In summary, Respondents, by choosing to register and use Domain Names, which are confusingly similar to Complainant’s well-known trademarks, intended to ride on the goodwill of Complainant’s trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondents, the choice of the Domain Names and the conduct of Respondents as far as the websites on to which the Domain Names resolve are indicative of registration and use of the Domain Names in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names and be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: August 24, 2011
Full & Egal Universal Law Academy