Complainant is Inter IKEA Systems B.V. of Delft, the Netherlands, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Domain Admin of Australia and Elena Buraya of Minsk, Belarus. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2012. On December 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 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 named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 18, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on December 19, 2013.
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 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 11, 2013.
The Center appointed Paul E. Mason as the sole panelist in this matter on January 21, 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
Complainant informs that it is the principal franchisor worldwide for stores carrying economically-priced home furnishing products with the IKEA trademark. The Complaint declares that the IKEA trademark is very well-known around the world and the company has invested in the mark and related marketing activities, yielding a 2012 annual turnover of some EUR 27.5 billion for its group of 338 stores in 38 countries. According to the Complaint, this trademark is quite distinctive as the letters “IKEA” represent an acronym for the company founder’s initials, farm and home parish where he grew up.
According to the Complaint, Complainant has some 1500 registrations of the trademark IKEA and variations thereof in more than 80 countries, covering a wide range of goods and services in International Classes 2, 8, 9, 11, 16, 18, 20, 21, 24, 25, 27, 28, 29, 30, 31, 35, 36, 38, 39, 41, 42 and 43.
Unfortunately the Panel was not able to find in the Complaint or Annexes any reference to the dates of registration of these trademarks. However, from the fact that the IKEA trademark was involved in a WIPO domain case in 2004, see InterIKEA Systems B.V. v. Michael Huang,WIPO Case No. D2004-0908, it can be deduced that the IKEA trademark was registered before that time. The disputed domain name was registered much later, on February 19, 2012, according to the Complaint. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is substantially similar to its registered IKEA trademark, as the disputed domain name incorporates the IKEA mark as its core. The addition of the generic prefix “minsk” and generic top-level domain (gLTD) “.org” do not change this fact.
On the issue of rights or legitimate interests of Respondent in the disputed domain name, Complainant asserts that it has granted no license or other authorization to Respondent to use the mark as part of the disputed domain name.
On the questions of bad faith registration and use of the disputed domain name, Complainant argues that the registration of a domain name centered around a trademark so distinctive and well-known as IKEA means that the registration must have been made in bad faith. According to the Complaint, bad faith use of the disputed domain name is proven by the fact that it resolves to a website advertising home delivery of IKEA products when in fact Respondent has no relationship with Complainant or its franchisees on which to base the offering of these services. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Many UDRP panels have found that the use of a generic prefix in a domain name incorporating a protected trademark will not make that domain name dissimilar to the trademark. The prefix “minsk” in the disputed domain name is a generic geographic indicator of the capital of the country Belarus. Likewise the use of a different type of extension, in this case gTLD , will not exempt the disputed domain name from the similarity test. For these reasons, this Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark IKEA. B. Rights or Legitimate Interests
On the matter of any possible rights or legitimate interests which Respondent may have in the disputed domain name, Complainant has strongly asserted that it has granted no license or other authorization to Respondent to use its trademark. Therefore under well-developed UDRP case doctrine, the burden falls on Respondent to prove it does have rights or legitimate interests to use the trademark. As Respondent has failed to reply to Complainant’s contentions, this Panel accepts them and finds that Respondent has no such rights or legitimate interests. C. Registered and Used in Bad Faith
Regarding the question of bad faith registration of the disputed domain name, since Respondent has failed to respond to the Complaint, this Panel will agree with Complainant’s deduction that the only reason to register a domain name like this one would be to take a free ride on the goodwill developed in its trademark. Therefore, the Panel finds that the disputed domain name was registered in bad faith.
Regarding the issue of bad faith use of the disputed domain name, Complainant contends that the disputed domain name resolves to a website where Respondent offers home delivery services of products sold by Complainant’s franchisees. The Panel visited the website generated by the disputed domain name on January 21, 2013. The site is in the Russian language and offers a wide range of IKEA products, services, brochures, etc., and not only home delivery. These include links at the top of the home page for IKEA catalogs, delivery, ordering, prices and contacts. There is no disclaimer that this site is not affiliated with Complainant. This Panel also notes that the home page contains telephone numbers to call in Belarus, providing the marketing motive for Respondent to include the word “minsk” (capital of Belarus) in the disputed domain name. All this clearly shows bad faith use of the disputed domain name. 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
Paul E. Mason
Sole Panelist
Date: January 21, 2013
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