The Complainant is Inter IKEA Systems B.V. of Delft LN, the Netherlands, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is First name Last name of Mumbai, India. 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 June 10, 2013. On June 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact. The Complainant filed an amendment to the Complaint on June 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 with the amendment to the Complaint, and the proceedings commenced on June 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2013.
The Center appointed Antony Gold as the sole panelist in this matter on July 23, 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.
On July 26, 2013, the Respondent sent an email communication to the Center stating that “I am ready to sent the domain to concern IKEA party... so please send the domain transfer details...”.
On August 6, 2013, the Panel suspended these proceedings for 10 days at the request of the Complainant in order to see if the dispute between the parties could be resolved. This did not prove possible and, on August 19, 2013, the suspension was lifted and the administrative proceedings reinstituted. 4. Factual Background
The Complainant is a retailer and franchisor operating in a number of jurisdictions internationally. As set out in greater detail below, it has trade mark protection in a number of classes for the IKEA mark. It also has an extensive portfolio of domain names which incorporate the term “ikea”.
The Respondent registered the disputed domain name on July 28, 2012. As at June 10 and 21, 2013, at least (these being the dates of the screen prints on the record), the website operated by the Respondent contained a number of pages providing information about “Ikea Closet Systems”.
As at June 10, 2013, the website was much more sparsely populated with information. There were only two web pages but seven sponsored links.
The screenprints of the website as at June 21, 2013 purported to provide considerable detail about the advantages of Ikea Closet Systems which were described as “a line of organizers that allow you to have an organized closet without having to lose your belongings so as to create space”. The website explained how Ikea Closet Systems can help alleviate mess. It claimed that “Ikea closet organizers assist their customers in selecting the one which meets their needs without compromising on their budget” and said that “Ikea closet organizers is among the best closets you could ever run into. These closet systems of IKEA makers are most versatile and efficient”. The web pages are illustrated with various photographs of organizers for closets. The overall tone of the pages is uniformly laudatory about “Ikea Closet Systems”.
The website contained what appeared to be two links to external websites which may have been commercial in character although this is not clear. 5. Parties’ Contentions A Complainant
The Complainant asserts that:
(i) The disputed domain name is identical or similar to a trade mark in which it has rights.
The Complainant says that the name “ikea” is an invented word, being an acronym comprising the initials of the founder’s name, the farm where he grew up and his home parish.
In support of its claim to have rights in IKEA, the Complainant says it has more than 1,500 trade mark registrations covering more than 80 countries and 21 International Classes of goods and services for the trade mark IKEA and for variants which incorporate IKEA. The Complainant has provided a series of trade marks it has registered in India. The Complainant says that, in the 12 month period commencing September 1, 2011, 776 million visitors “embarked on the IKEA shopping experience”. It says that 200 million copies of its IKEA catalogue are printed every year in 62 editions and 29 languages.
The Complainant has also registered over 300 domain names which incorporate the term “ikea”, including . It says that its websites had over 1.1 billion visitors in 2012 and that the brand IKEA features in lists of very well-known and reputable brands. As a result of all of the above, the Complainant says it has extensive trade mark rights which give it a broad scope of protection against misuse of its brand.
The Complainant says that the disputed domain name is confusingly similar to its trade marks for IKEA. It says that the addition of the generic Top-Level Domain “.org”, should be disregarded for the purposes of determining the confusing similarity between the trade mark and the disputed domain name. It also says that persons seeing the disputed domain name, even without being aware of the content, are likely to think that the disputed domain name is owned by the Complainant or is in some way connected with it. Lastly, it says that the addition of “closet” and “systems” to its IKEA mark are not relevant and do not detract from the overall impression of association with the Complainant. Indeed, it says that as “closets” is a product category offered by the Complainant, the addition of this word will strengthen the impression of association with the Complainant.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant says that the Respondent does not have any trade marks or trade names corresponding to the disputed domain name, nor is there any other indication that the Respondent has been using the term “ikea” in such a way as to give the Respondent any right or legitimate interest in the disputed domain name. It says that no license or other authorisation has been given by the Complainant to the Respondent to use any of its IKEA trade marks. It explains that the Respondent has never had a business relationship with the Complainant and contends that there is no other known indication that the Respondent uses the name “ikea” as a company name or has any other legal right to the name “ikea”.
The Complainant says that its reputation in the IKEA marks is such that it is highly unlikely that the Respondent would not have known of the Complainant’s rights in the name “ikea” as at the time of registration of the disputed domain name and that the Respondent registered the disputed domain name because it was aware of the fame of the Complainant’s trade mark.
The Complainant says that the use by the Respondent of the disputed domain name is not in connection with a bona fide offering of goods and services but “in order to generate traffic and income through sponsored links on a blog”. It says that by doing this the Respondent is using the IKEA trade mark and misleading Internet users as a consequence of which the Respondent is tarnishing its IKEA trade mark. In this respect, the Complainant cites a number of cases including Drexel University v. David Brouda,WIPO Case No. D2001-0067, where the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. A second cited case is Inter Ikea Systems B.V. v Domain Administrator 2@,WIPO Case No. D2011-1934, in which the panel held that a website comprising parking pages offering goods and services of the complainant’s competitors did not constitute a bona fide offering of goods and services. The Complainant says that the same point arises in this case.
(iii) The disputed domain name was registered and is being used in bad faith.
The Complainant asserts that IKEA is a well-known trade mark with a substantial and widespread reputation globally. It says that IKEA is a purely invented word mark and is not a word which traders would legitimately choose unless they were seeking to create an impression of an association with the Complainant.
The Complainant says that the Respondent’s use of the disputed domain name is for the purpose of a blog containing sponsored links and that the Respondent is accordingly using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. The Complainant cites a number of other similar cases in which it has been involved successfully, including Inter Ikea Systems B.V. v Domain Administrator 2@, supra. In that case the panel found that the use of a third party’s trade mark in a domain name which pointed to a website comprising a parking page containing pay-per-click advertisements was evidence of bad faith use of the type described above. The Complainant says that the same reasoning should be applied in this case.
The Complainant cites a number of earlier cases in which its trade mark rights have been recognized in and also refers to cases where the registration and use of domain names incorporating the complainant’s trade mark for the purpose of a parking page displaying pay-per-click advertisements has been found to be bad faith registration and use. One of the cited cases is Inter Ikea Systems B.V. v. Daniel Woodson,WIPO Case No. D2011-1933, in which the panel found that customers would be attracted to the respondent’s website by the confusing similarity between the disputed domain name and the complainant’s trade mark and that, as some of them were then likely to click on the sponsored links shown on the website, such conduct constituted bad faith registration and use of the domain name.
The Complainant says that it never had any response to a letter sent by it to the Respondent prior to the commencement of these proceedings seeking a voluntary transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions although it sent an email following the Panel’s appointment stating that it was willing to transfer the disputed domain name to the Complainant. 6. Discussion and Findings
Paragraph 14(b) of the Rules provides that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint;
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant appended to its Complaint details of a series of trade marks for IKEA which are registered in India. These suffice to give the Complainant rights in the name “ikea” for the purpose of this element of the Policy.
When assessing confusing similarity, it is material to have regard to both the inherently distinctive character of the IKEA mark and its repute. The greater the repute and the distinctive character of the IKEA mark, the more weight is attached to the “ikea” element of the disputed domain name and the less significance is attached to the added descriptive words “closet” and “systems”. This is particularly the case as these words do not serve to distinguish the disputed domain name in any way from the business of the Complainant because “closets” are a product category offered by the Complainant and “systems” in this context is a generic word.
A determination of whether a domain name is confusingly similar to a trade mark or service mark considers whether the mark and domain name are visually and/or aurally similar and a number of additional factors. In this respect, adding additional words to a mark which comprises the first element of a domain name does not necessarily render the domain name and mark dissimilar even if the words are such as to render the mark, quantitatively, only a small part of the domain name. This is because it is also necessary to take into account whether the added words are purely descriptive (as they are in this case), whether the words serve to distinguish the domain name from the complainant (which, on these facts, they do not) and whether the repute and nature of a complainant’s mark is such as to render the mark the dominant part of the disputed domain name from a qualitative, if not quantitative, perspective. The Complainant has established that it has considerable repute in the name “ikea” and that the name is inherently distinctive. The Complainant’s mark comprises, qualitatively, the distinctive component of the disputed domain name. Having regard to all of the above, the Panel finds that the disputed domain name is confusingly similar to IKEA, being a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
It is possible that a respondent might have interests sufficiently esoteric to establish a tribute site extolling the virtues of the Complainant’s closet organizers and to provide for the website to be accessed through a domain name which reflected the nature of the website. However, the Panel finds that the content of the Registrant’s website does not fall within this category but is more likely to have been created to make it difficult for the Complainant to recover the disputed domain name.
The more nascent version of the website on June 10, 2013 contained almost no information about “Ikea Closet Systems” but a number of sponsored links. Even when the content of the website was expanded later in June 2013, there was little or no genuine information offered about the Complainant’s closet organizers or about how they compared with each other or with competitor products. Moreover, some of the content is repeated, either substantively or on occasions literally, most likely in order to give the impression of the website providing more information than it does.
The nature of the links on the website as at June 21, 2013 is not fully clear. However, those which appear on the website on June 10, 2013 are plainly commercial in character.
Against this background, the Panel accepts the Complainant’s assertion that the Respondent does not appear to have any trade marks or other rights corresponding to the disputed domain name. The Panel also accepts, for the same reason, the Complainant’s claim that it has not granted a license or given any other authorization to the Respondent in respect of its IKEA trade mark and that it is neither an authorized dealer in the Complainant’s products nor has ever had a business relationship with the Complainant.
Contrary to the Complainant’s submissions, the Respondent’s website does not comprise a blog containing sponsored links, having more in common with a tribute or fan site. However, the principles to be adopted in considering the extent to which the Respondent might have a legitimate interest in using a domain name which incorporates a trade mark of the Complainant are broadly similar and the decisions to which the Complainant has referred are applicable to these facts.
There is an abundance of UDRP decisions which establish that where there is a significant commercial content to a so-called tribute website which includes the Complainant’s trade mark, such a website does not comprise a bona fide offering of goods and services such as to give the Respondent a legitimate interest in the disputed domain name. See, for example, The Jennifer Lopez Foundation v. Jermiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC,WIPO Case No. D2009-0057 and paragraph 2.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
As there is nothing in the Complaint which would tend to suggest any right or legitimate interest on the part of the Respondent which might justify the registration of a domain name incorporating the mark IKEA and the Respondent has not sought to challenge the Complainant’s case, the Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
One of the grounds on which bad faith use can be founded is paragraph 4(b)(iv) of the Policy which provides that there is evidence of bad faith registration and use where the Respondent has intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
It is unlikely that anyone visiting the website at the disputed domain name would think it was owned or operated by the Complainant. Even if the visitor to the website thought that the praise directed towards the Complainant was sincere, it would still appreciate that the website was not that of the Complainant. But the incorporation of a well-known mark into a domain name in these circumstances is nonetheless bad faith registration and use. The likelihood of confusion is caused by the choice of a domain name which correlates closely to a mark of the Complainant and not by the website content. Once at the website, at least some visitors are likely to click on links which generate income for the Respondent. In this respect, the Panel agrees with the reasoning and approach of the panel in Inter Ikea Systems B.V. v. Daniel Woodson, supra.
The fact that the disputed domain name was put to a bad faith use very shortly after registration strongly suggests that it was registered with that purpose in mind. Indeed, the difference between the form of the Respondent’s website as at June 10 and 21, 2013 suggests that the website at the disputed domain name started life as a very obviously commercial enterprise and the Respondent subsequently chose to make the underlying commercial objective less apparent.
The Panel accordingly finds that the disputed domain name was registered and is being used in bad faith. 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.
Antony Gold
Sole Panelist
Date: August 23, 2013
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