The Complainant is Inter IKEA Systems B.V. of Delft, the Netherlands, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Domains By Proxy LLC of Scottsdale, Arizona, United States of America (“US”)/ Getme Ikea of Seatoun, Wellington, New Zealand. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2012. On November 26, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 4, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 4, 2012.
The Center verified that the Complaint together with the amendment to 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 December 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2012.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on January 14, 2013. 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
According to GoD WhoIs database, the disputed domain name was registered on February 29, 2012. It was registered via Domains By Proxy, LLC, a privacy shield service provider. After the filing of the Complaint, the Complainant amended it to take the person behind the registration into account. The Respondent is known as Getme Ikea, localized in the city of Wellington, New Zealand. Before the filing of the Complaint, the disputed domain name was registered via a privacy shield service.
The disputed domain name currently resolves to a parking page displaying pay-per-click ads. The website was still active at the time the Panel rendered its decision.
The Complainant, Inter IKEA Systems B.V., owns over 1500 trademarks for IKEA and IKEA variants, registered in more than 80 countries around the world including in New Zealand.
According to Interbrand, IKEA is the 35th of the 100 “Best Global Brands 2012”, the company owns one of the best known brands in the world. Its products are sold in 338 stores through 38 different countries. In 2012 the Complainant’s sales of IKEA furnishings and accessories was over € 27.5 billion for 776 million visitors from September 2011 to August 2012. 5. Parties’ Contentions A. The Complainant
First, the Complainant asserts that the disputed domain name is confusingly similar to its world famous trademark IKEA. The Complainant further argues that the addition of the terms “get” and “me” are not relevant and do not prevent a finding of confusing similarity.
Second, the Complainant alleges that the Respondent has no right or legitimate interest in the disputed domain name. The Complainant claims that it has not found any registered trademark or trade name corresponding to the disputed domain name. The Complainant further claims that no license or any authorization has been given to the Respondent to use the well-known trademark IKEA in the disputed domain name. It also claims that the inclusion of a well-known trademark in the domain name is evidence that the Respondent has no rights or legitimate interest in .
Third, the Complainant contends that the disputed domain name was registered and is used in bad faith due to the worldwide reputation of the trademark IKEA. The Complainant claims that the Respondent could not have ignored the trademark IKEA when registering . Furthermore, the Complainant asserts that the Respondent used the disputed domain name in bad faith by creating a likelihood of confusion with the Complainant’s trademark, in order to attract Internet users for commercial gain. B. The Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name. A. Identical or Confusingly Similar
The first element under the paragraph 4(a) (i) of the Policy requires the Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark in which it has rights.
The Panel finds that the Complainant has clearly established its rights in the registered trademark IKEA as evidenced by the trademark registrations submitted with the Complaint. Previous UDRP decisions also held that IKEA is a well known trademark with an international reputation (Inter-IKEA Systems B.V. v. Technology Education Center,WIPO Case No. D2000-0522, Inter-IKEA Systems B.V. v. Polanski,WIPO Case No. D2000-1614, and Inter Ikea Systems B.V. v. Ikea International Co. Ltd.WIPO Case No. D2003-0965).
The Panel finds that the domain name is not identical to the Complainant’s trademark IKEA, however there is no doubt that it is confusingly similar. The disputed domain name incorporates the mark IKEA in its entirety: previous UDRP decisions have held that a domain name is confusingly similar to a trademark when it comprises a well-known mark in its entirety.
Furthermore, the addition of the generic terms “get” and “me” is not sufficient to exclude similarity, especially with a world famous trademark such as IKEA (Pepsico Inc. v. Johan De Broyer WIPO Case No. D2007-1021; L’OREAL v. Lewis Cheng,WIPO Case No. D2008-0437; L’oreal v. Domain Park Limited,WIPO Case No. D2008-0072).
Finally, when it comes to the adjunction of gTLD “.com”, it is now well established that the generic top-level domain is typically not taken into account when evaluating the identity or similarity between the disputed domain name and the Complainant’s trademark (F. Hoffman-La Roche AG v. Steven Pratt,WIPO Case No. D2009-0589 and Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd.,WIPO Case No. D2009-0828).
The Complainant has therefore made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, the Respondent may demonstrate its rights and interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use or demonstrable preparations to use, the disputed domain name or name corresponding to disputed domain name in connection with a bona fide offering of goods or services before any notice to them of the dispute, or
(ii) it (as individual, a business, or other organizations) has been commonly known by the disputed domain name, even if it acquired no trademark or service mark rights, or
(iii) it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert Internet users or to tarnish the trademark or service mark at issue.
Once the Complainant has made a prima facie case that the Respondent lacks legitimate interest or right, the burden shifts to the Respondent to prove its right or legitimate interest in the disputed domain name (F. Hoffman-La Roche AG v. Steven Pratt, Supra and Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd., Supra).
Due to the worldwide reputation of the brand, the Complainant’s business model is presented as a franchise system in which only approved and licensed retailers are authorized to participate in the exclusive distribution system and make use of the IKEA trademark. The Panel concludes that no license or authorization of any kind has been given to the Respondent, and that he never had a business relationship with the Complainant. Had the Respondent had a legitimate reason to register the disputed domain name, it would have vigorously defended its rights by replying to the Complaint.
Considering the Complainant’s IKEA trademark’s notoriety, as also established in previous UDRP decisions, the Panel considers that any use which the Respondent would make of any domain name, as in , that incorporated the Complainant’s trademark IKEA, or confusingly similar, thereto, would violate the exclusive trademark rights which the Complainant has long held in its mark (Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc.WIPO Case No. 2001-1314).
Furthermore, the Panel considers that the fact that the disputed domain name directs towards a parking page displaying sponsored links does not constitute a bona fide offering of goods. Therefore, it is an indication that the Respondent lacks of rights or legitimate interests (National Bedding Company L.L.C. v. Back To Bed, Inc.,WIPO Case No. D2010-0106 and LEGO Juris A/S v. J.h.Ryu,WIPO Case No. D2010-1156).
Finally, there is no evidence that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.
Taking all of these elements into consideration, the Panel finds that the Respondent has registered and used the Complainant’s trademark with the sole intention of exploiting the reputation of the Complainant’s IKEA trademark. Therefore, the Respondent is deriving advantage from Internet users’ confusion. The Panel accepts that such behaviour does not provide a right or legitimate interest for the purposes of the Policy, in accordance with previous UDRP panel decisions such as Mpire Corporation v. Michael FreyWIPO Case No. D2009-0258.
Following the sending of the Complaint, the registrar revealed the person behind the privacy shield service: Getme Ikea, a company localized in New Zealand. The Complaint was later sent to that company but someone responded that they had never heard of a company Getme Ikea at the address provided by the registrar. It seems therefore that both the name Getme Ikea and the address are false and that, at this stage of the UDRP procedure, the true identity and contact details of the registrant are still unknown. This is certainly not in favor of legitimate interest.
In the present case, the Panel finds that the Complainant has made a prima facie showing of the Respondents’ lack of rights or legitimate interests with respect to the disputed domain name, which has remained unrebutted by the Respondent.
Consequently, the Panel considers that the condition set out by paragraph 4(a)(ii) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which if found shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 the web site or location.
It should be noted that the circumstances of bad faith are not limited to the above. a) Registered in bad faith.
As it has been held in previous UDRP decisions, the Panel confirms that IKEA is a well-known trademark with an international reputation (Inter-IKEA Systems B.V. v. Technology Education Center,WIPO Case No. D2000-0522, Inter-IKEA v. Polanski,WIPO Case No. D2000-1614, and Inter Ikea Systems B.V. v. Ikea International Co. Ltd.,WIPO Case No. D2003-0965).
Considering IKEA’s trademark notoriety and its international establishment, with 338 IKEA stores in 38 different countries, the Panel believes that the Respondent knew of the existence of the Complainant at the time of the registration of the disputed domain name. (See Credit Industriel et Commercial S.A v. Maison Tropicale SA WIPO Case No. D2007-0955; Volvo Trademark Holding AB v. Unasi, Inc.WIPO Case No. D2005-0556).
In previous UDRP decisions, panels have considered that in certain circumstances when the Complainant’s trademark is well known, such as IKEA, the Respondent’s bad faith could be inferred (AT&T Corp. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1088: “Bad faith can be presumed based on the fame of the Complainant’s marks, such that the Respondent was aware or should have been aware of the Complainant’s well-known marks and claims of rights thereto”).
Moreover, a trademark search would have revealed the existence of the Complainant’s prior trademark rights. The Respondents failure to do such a search is a contributory factor to its bad faith (Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling,WIPO Case No. D2008-0226).
Finally, the Complainant’s trademark is based on an invented word which has no meaning in any language. The Panel concludes that it is actually likely that the fame of the trademark IKEA was the reason that decided the Respondent to register the disputed domain name. Had said mark been unknown, it would have been far less appealing.
These findings lead the Panel to conclude that the disputed domain name has been registered in bad faith by the Respondent.
In order to meet the requirement of paragraph 4(a)(iii) of the Policy, it is not sufficient to prove that the disputed domain name is registered in bad faith, it is also necessary to prove that the disputed domain name is being used in bad faith. b) Used in bad faith.
As previously indicated, the Respondent is likely aware of the existence of the Complainant’s trademark IKEA. In light of this knowledge, the Respondent used the disputed domain name as a “parking page displaying pay-per-click ads” which should be considered as use in bad faith. In previous UDRP decisions, it was recognized that “the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use.” (Mpire Corporation v. Michael FreyWIPO Case No. D2009-0258).
The Panel finds that the Respondent is using the disputed domain name to intentionally attempt to attract Internet users to the website associated with the disputed domain name by creating a likelihood of confusion with the Complainant’s renowned trademark as to the source, sponsorship, affiliation, or endorsement of its website for commercial gain and earning.
For all of these reasons, the Panel finds that the disputed domain name has been registered and is being used in bad faith. Therefore, the Panel considers that the condition set out by paragraph 4(a)(iii) of the Policy has been met by the Complainant. 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.
Nathalie Dreyfus
Sole Panelist
Date: January 25, 2013
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