The Complainant is Inter Ikea Systems B.V. of Delft, Netherlands, represented by Crowell & Moring, LLP, Belgium.
The Respondent is Ellen Feldman of Thailand. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2011. On November 9, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On November 9, 2011, GoD, Inc. 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 the Respondent of the Complaint, and the proceedings commenced on November 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2011.
The Center appointed Sebastian M.W. Hughes, as the sole panelist in this matter on December 12, 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
The Complainant, Ikea Systems B.V., is a company incorporated in the Netherlands.
The Complainant is the owner of several national and international registrations for the trade mark IKEA (the “Trade Mark”). B. Respondent
The Respondent is an individual apparently with an address in Thailand1.
The disputed domain name was registered on November 29, 2010. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant was founded in Sweden in 1943 and is the owner of a unique concept for the sale of furniture and home furnishing products marketed under the Trade Mark. Since then, the Complainant has grown into a global retail company with stores in 38 countries generating annual sales of more than EUR 23.8 billion. In 2010, the total number of the Complainant’s stores was 316. With over 699 million store visits in 2010 and almost 200 million copies of IKEA catalogues distributed annually, the Trade Mark is very well known all over the world.
The disputed domain name is confusingly similar to the Trade Mark. It comprises the Trade Mark in its entirety together with the generic words “store locator”.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The website to which the disputed domain name has been resolved features a short blog with information regarding the Complainant and its stores, and sponsored links to websites offering goods and services from competitors of the Complainant (the “Website”).
The disputed domain name has been registered and is being used in bad faith, in order to attract users, for commercial gain, to the Website, and otherwise for the purpose of primarily disrupting the business of the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate by many decades the date of registration of the disputed domain name.
UDRP panels have consistently held that a domain name is identical or confusingly similar to a trade mark for the 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).
It is also established that the addition of generic terms to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
The disputed domain name comprises the Trade Mark in its entirety, together with the non-distinctive words “store locator”, which do not serve to distinguish the disputed domain name from the Trade Mark in any way.
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark, and holds that the Complaint fulfills the first element 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 the Respondent has rights or legitimate interests in the disputed domain name:
“(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 organisation) have been commonly known by the domain name even if you have acquired no trade mark 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 trade mark or service mark at issue.”
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by decades. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel notes that use of a domain name in respect of a website offering sponsored commercial links can, in certain circumstances, particularly where the trade mark in question is not well-known or otherwise comprises generic or commonly used words or phrases, amount to a bona fide offering of goods or services. However, in all the circumstances of this case, and given also the Panel’s findings below in respect of bad faith, the Respondent would need to provide compelling reasons as to why such use is in all the circumstances justified. This is particularly so where the disputed domain name contains a well-known trade mark, as is the case in this proceeding.
The Respondent has chosen not to file a Response and there is no evidence that the Respondent has established a legitimate business of registering domain names comprising arguably generic, or in any event, less well-known, words in order to set up websites containing sponsored links. To the contrary, the evidence suggests the Respondent has registered the disputed domain name comprising the Complainant’s well-known Trade Mark in order to profit by using it to attract consumers to the Website for commercial gain. In all the circumstances the Panel concludes that such conduct does not amount to a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel concludes that, in all the circumstances, the Respondent has registered and uses the disputed domain name comprising the Trade Mark, without the authorisation or approval of the Complainant, in order to profit by attracting users to the Website. The Panel finds such registration and use of the Trade Mark is clear evidence of bad faith.
The Panel therefore finds, in all the circumstances, the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
Having found in favour of the Complainant under paragraph 4(b)(iv) of the Policy, it is not necessary for the Panel to make any findings in respect of the Complainant’s assertions that the disputed domain name has been registered primarily to disrupt the business of the Complainant. The Panel would however simply note that, on the evidence, it appears unlikely that the Complainant has provided a compelling argument to satisfy this additional ground of bad faith.
As at the date of this decision, it appears the sponsored links have been removed from the Website. In all the circumstances, the Panel finds this constitutes further evidence of bad faith.
Given the circumstances of this case, the Panel also considers the failure of the Respondent to file a Response to the Complaint further evidence of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third element of paragraph 4(a) of the Policy has been fulfilled. 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 be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: December 20, 2011
1 The Panel notes that the exact location of the Respondent is unclear as, according to the verification by the concerned Registrar, GoD, Inc. and the public WhoIs database, the Respondent’s address in respect of the disputed domain name lists a city in Alaska, the state of New York and the country, Thailand.
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