Complainant is Inter IKEA Systems B.V., of Delft, Netherlands, represented by Crowell & Moring, LLP, Belgium.
Respondent is Telos Chamir, of Hong Kong, China. 2. The Domain Name(s) and Registrar(s)
The disputed domain name is registered with Key-Systems GmbH dba (“Key-Systems GmbH”). 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 Key-Systems GmbH a request for registrar verification in connection with the disputed domain name. On November 9, 2011, Key-Systems GmbH transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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”).
On November 16, 2011, the Center submitted to the parties a Language of Proceedings Notice indicating that the Language of the Registration Agreement as confirmed by the Registrar was German, whereas the Complaint had been filed in English. On November 18, 2011, the Center received an answer from Complainant concerning the Language of the Proceedings. Respondent did not submit any Response to the Language of Proceedings Notice. Accordingly, the Center decided to proceed in both English and German.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint in English and in German, and the proceedings commenced on November 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for the Response was December 12, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default in English and German on December 21, 2011.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on January 12, 2012. 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
Complainant is the owner of a franchise system for manufacturing and selling furniture and home furnishing products under the trademark IKEA through approved retailers. Since the foundation of the “IKEA” business model by Ingvar Kamprad in Sweden in 1943, the “IKEA” enterprise has grown into a global retail brand with 316 “IKEA” stores in 38 countries worldwide, generating annual sales in 2010 of more than € 23.8 billion.
Complainant owns registered trademarks relating to the designation “IKEA” in numerous countries worldwide, including China, the United States of America and the European Union, inter alia:
- International word/design mark IKEA, World Intellectual Property Organization (WIPO) Registration Number: 926155; Registration Date: April 24, 2007; Status: Active.
- United States word/design mark IKEA, USPTO Registration Number: 1,118,706; Registration Date: May 22, 1979; First Use Date in Commerce: January 24, 1966; Status: Active.
- United States word mark IKEA, USPTO Registration Number: 1,443,893; Registration Date: June 23, 1987; First Use Date in Commerce: January 24, 1966; Status: Active.
- Czech word mark IKEA, Industrial Property Office of the Czech Republic (IPO-CZ) Registration Number: 165417; Registration Date: July 13, 1983; Status: Active.
- European Community word mark IKEA, OHIM Registration Number: 000705343; Registration Date: May 4, 2006; Status: Active.
The IKEA brand also has a strong presence on the Internet and Complainant owns numerous domain names incorporating the IKEA trademark, such as , , and .
The disputed domain name was registered by Respondent on April 19, 2011. It currently redirects to a website at “www.” which is a typical parking site composed of hyperlinks to numerous third parties not specifically tailored to Complainant, and which offers the disputed domain name for sale. On April 13, 2011, Complainant had sent a cease and desist letter to the former owner of the disputed domain name, a Mr. P. Manasek apparently with a domicile in the Czech Republic. Complainant did not receive a reply; instead, the disputed domain name was transferred to Respondent.
Complainant requests the disputed domain name to be transferred to Complainant. 5. Parties’ Contentions A. Complainant
Complainant alleges that the IKEA trademark is very well known all over the world, including Hong Kong and China through the presence and activities of numerous local “IKEA” retailers.
Complainant contends that the disputed domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant emphasizes that the disputed domain name contains the entire IKEA trademark with the mere addition of a generic word or a geographic term, respectively, namely “cz” being the abbreviation of “Czechia”.
Complainant further argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant alleges that Respondent is not commonly known by the disputed domain name, but rather is a private person “complete[ly] unknown”. Complainant points to the fact that he has not authorized Respondent to use its IKEA trademark and that Respondent apparently has not acquired any trademark rights in the said designation. Complainant states that Respondent is using Complainant’s trademark and reputation to make money through commercial advertising for third parties.
Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith.
Complainant argues that Respondent must have known of Complainant and its trademark by the time of the registration of the disputed domain name; given the distinctive character of Complainant’s trademark, it is not conceivable that Respondent would have come up with the name “IKEA” himself, without being aware of Complainant.
Furthermore, with regard to the fact that the disputed domain name resolves to a parking page, it is obvious to Complainant that Respondent intentionally attempted to attract, for commercial gain, Internet users to its website at “www.ikea-cz-info”.
Finally, Complainant stresses that given the strong reputation and widely known character of the IKEA trademark, it is difficult to imagine any plausible future use of the disputed domain name by Respondent that would be legitimate and not infringing upon Complainant’s trademark rights. Complainant points to the fact that the disputed domain name is offered for sale which as well is a clear indication that it was primarily registered by Respondent for the purpose of selling, renting or otherwise transferring the disputed domain name to Complainant in excess of the documented out-of-pocket costs. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(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.
The Panel takes the view that Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint.
As far as Complainant’s request for English to be the language of the proceeding is concerned, paragraph 11(a) of the Rules provides that the Panel has authority to determine a language other than the language of the Registration Agreement (which in the case at hand is German) “having regard to the circumstances of the administrative proceeding”. Respondent apparently is located in Hong Kong, China where English is recognized as an official language. Furthermore, Respondent has been formally notified by the Center of the Complaint as well as has been served with all other relevant communication such as Complainant’s language request in both English and German. Respondent, however, did not file a Response nor did he answer to the Center in any other way. This Panel, therefore, takes the view that not only there is sufficient reason to believe that Respondent is capable of speaking and understanding the English language (including the presence of English-language links on the website), but that he had been invited to participate in this proceeding in both English and German and thus had been given a fair opportunity to present his case as provided for by paragraph 10(b) of the Rules, yet voluntarily denied to do so. As a consequence, this Panel decides to accept Complainant’s language request and to continue this proceeding in the English language. A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the trademark IKEA in which Complainant has shown to have rights.
The disputed domain name not only incorporates the IKEA trademark in its entirety. Moreover, it has been held in numerous UDRP decisions and has meanwhile become a consensus view (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9) that the addition of a nearly generic, descriptive or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. In the case at hand, it is apparent that the two letters “cz” relate to the Czech Republic apparently where the former owner of the disputed domain name Mr. P. Manasek was located. Therefore, the mere adding of the two letters “cz” to Complainant’s trademark IKEA in order to “compose” the disputed domain name does not keep the Panel from holding that the disputed domain name is still confusingly similar to Complainant’s IKEA trademark.
Therefore, the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled. B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent made a legitimate noncommercial or fair use without intent for commercial gain.
Respondent obviously has not been authorized to use Complainant’s IKEA trademark, neither as a domain name nor on Respondent’s website or in any other way.
Moreover, Complainant has produced sufficient evidence that (1) the IKEA trademark has been in use and has consistently been advertised and promoted for many decades worldwide and that (2) Interbrand has consistently recognized the IKEA trademark as belonging to the top 50 of the world’s most valuable brands. For years, numerous UDRP Panels, therefore, have considered IKEA for the purposes of their UDRP proceedings as “one of the world’s most well-known and reputed trademarks” and/or as a trademark with “a high level of original distinctiveness” (e.g., Inter IKEA Systems B.V. v. Charles Stapleton, WIPO Case No. D2011-1963; Inter IKEA Systems B.V. v. N/A Belly Scott, WIPO Case No. D2011-0910; Inter IKEA Systems B.V. v. WhoisGuard Protected /NA, Jerry Wray, WIPO Case No. D2010-1919).
The disputed domain name resolves to a typical parking site at “www.” with hyperlinks which redirect Internet users to numerous third parties’ websites which are not at all specifically tailored to Complainant and the IKEA trademark, but rather include a wide variety of commercial Internet offers. Moreover, this parking site, which offers the disputed domain name for sale, was acquired by Respondent only on April 19, 2011, thus likely in a direct context with Complainant’s sending of a cease and desist letter on April 13, 2011. Given the strong reputation of the IKEA trademark on the one hand, and the absence of any other evident (legitimate) reason for Respondent to use the term “IKEA” on the other hand, in the eyes of the Panel, it is quite evident that Respondent has set up the website “www.” with the clear intent to divert Internet users, who were actually interested in the well-known IKEA brand, and, thus, to generate so-called “Click-through-commissions” or “Pay-per-clicks” (PPC) from the diverted Internet traffic. Such use of the disputed domain name, however, does not of itself confer any rights or legitimate interest arising from a “bona fide offering of goods or services” or from a “legitimate noncommercial or fair use” as provided by the Policy, paragraph 4(c)(i) and (iii) (for further references, see WIPO Overview 2.0, paragraph 2.6).
Given that the term “IKEA” is neither a (dictionary) word nor a common personal or a nick name as such, but rather a composition of letters originating from the initials of Complainant’s founder Ingvar Kamprad, there is also no reason to believe that Respondent is commonly known by the domain name as set forth by paragraph 4(c)(ii) of the Policy.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on November 22, 2011.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy. C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
As pointed out earlier, for the purposes of this proceeding IKEA may be considered as a well-known and highly reputed trademark (e.g., Inter IKEA Systems B.V. v. Charles Stapleton, WIPO Case No. D2011-1963; Inter IKEA Systems B.V. v. N/A Belly Scott, WIPO Case No. D2011-0910; Inter IKEA Systems B.V. v. WhoisGuard Protected /NA, Jerry Wray, WIPO Case No. D2010-1919). Moreover, the “IKEA” business apparently disposes of numerous local retailers even in Hong Kong at Respondent’s residence. Consequently, it is highly unlikely that Respondent did not have knowledge of Complainant’s IKEA trademark at the time of the registration of the disputed domain name. Consequently, it must be found that Respondent, by using the disputed domain name to run a typical PPC site, intentionally attempted to attract, for commercial gain, Internet users to his own website, by creating a likelihood of confusion with Complainant’s well-known IKEA trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or a product thereon. Such circumstances, however, shall be evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In connection with this finding, it carries weight in the eyes of the Panel that Respondent (1) apparently acquired the disputed domain name only on April 19, 2011, thus in a direct context with Complainant’s sending of a cease and desist letter on April 13, 2011; and that (2) a number of UDRP proceedings all relating to domain names under the TLD have been brought forward against Respondent very recently, in none of which a Response was filed and in all of which the disputed domains names were ordered to be transferred upon the respective complainants (e.g. Roche Products Limited v. Telos Chamir, WIPO Case No. D2011-1804; InfoSpace, Inc. v. Telos Chamir,WIPO Case No. D2011-1256; Vanguard Trademark Holdings USA LLC v. Telos Chamir, NAF Claim No. 1398967; Ashley Furniture Industries v. Telos Chamir, NAF Claim No. 1398288). Such circumstances – as a whole – draw a consistent picture of Respondent’s business and may not be qualified other than a further indication of Respondent acting in bad faith.
Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled.
Accordingly, the Panel finds that Complainant has satisfied all of the three requirements 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 disputed domain name be transferred to Complainant.
Stephanie G. Hartung
Sole Panelist
Dated: January 18, 2012
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