The Complainant is Inter IKEA Systems B.V. of Delft, the Netherlands, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Djordje Milic of Novi Sad, Serbia. 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 January 13, 2014. On January 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 2014, the Registrar 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 January 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2014. The Response was received by the Center on February 6, 2014. With its Response, the Respondent agreed to transfer the disputed domain name to the Complainant, and requested the suspension of the proceedings. On February 6, 2014, the Complainant agreed to the suspension of the proceeding until March 6, 2014. On March 3, 2014, the Complainant informed the Center that disputed domain name had not been transferred to the Complainant and requested the reinstitution of the proceeding. On March 5, 2014, the Center reinstituted the proceeding.
The Center appointed Assen Alexiev as the sole panelist in this matter on March 11, 2014. 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
The Complainant has developed a concept for the sale of furniture and home furnishing products marketed under the IKEA trademark. The Complainant’s business model represents 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 Complainant is the worldwide IKEA franchisor and all IKEA stores operate under franchise agreements, with the exception of the IKEA Delft store in the Netherlands, which is owned and operated by the Complainant itself. In 2013, there were 345 IKEA stores in 42 countries, which were visited by 775 million visitors, and the IKEA websites had over 1.2 billion visitors. The annual turnover in 2013 for all IKEA stores reached EUR 29.2 billion. The IKEA trademark was included by Interbrand in their publication “Best Global Brands 2012”, while the Reputation Institute has ranked the IKEA brand as number 35 on their list of the world’s most reputable companies.
The Complainant is the owner of numerous trademarks containing the word element IKEA, including the following registrations (the “IKEA trademarks”):
- the word trademark IKEA with registration No.000109652, registered as a Community trademark on October 1, 1998 for goods and services in International Classes 2, 8, 11, 16, 18, 20, 21, 24, 25, 27, 28, 29, 30, 31, 35, 36, 39, 41 and 42; and
- the figurative trademark IKEA with registration No.000109637, registered as a Community trademark on April 24, 2002 for goods and services in International Classes 2, 8, 11, 16, 18, 20, 21, 24, 25, 27, 28, 29, 30, 31, 35, 36, 39, 41 and 42.
The disputed domain name was registered on November 11, 2013. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the IKEA trademarks, because it includes the invented word “ikea”. IKEA is an acronym comprising the initials of the name of the Complainant’s founder (Ingvar Kamprad), the farm where he grew up (Elmtaryd), and his home parish (Agunnaryd). According to the Complainant, the element “novisad” is a geographical name and does not alter the overall impression of the disputed domain name.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. It has no registered trademarks or trade names corresponding to it, and the Complainant has not licensed or authorized the Respondent to use the IKEA trademarks. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. The disputed domain name was registered by the Respondent long after the Complainant registered the IKEA trademarks in the European Union, and it is unlikely that the Respondent would not have known of the Complainant’s legal rights in the name IKEA at the time of registration. More likely, the Respondent was motivated to register the disputed domain name by the popularity of the IKEA trademark, and would not have chosen such a name unless he was seeking to create an impression of an association with the Complainant.
According to the Complainant, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Respondent is using the disputed domain name in an attempt to generate traffic to his own website offering products for sale including products made by parties unrelated to the Complainant, and by redirecting visitors to other websites. By doing this, Respondent is misleading Internet users, who are likely to be confused that the Respondent’s website is owned or sponsored by the Complainant.
The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith. The Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s IKEA trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Complainant points out that it has carried its business activities under the name IKEA for several decades and is widely known under this trademark and business name. It is therefore unlikely that the Respondent registered the disputed domain name, which fully incorporates the IKEA trademarks, without knowledge of the Complainant's rights in these trademarks. The disputed domain name is connected to a website offering products for sale via the Respondent’s reseller website and by redirecting to third party websites, and the offered products are produced and promoted by parties unrelated to the Complainant. The design of the website at the disputed domain name does not eliminate that confusion.
On December 19, 2013, the Complainant sent a cease and desist letter by email to the Respondent. The Complainant advised the Respondent that the unauthorized use of the IKEA trademarks in the disputed domain name violated the Complainant’s rights in these trademarks. The Complainant requested a voluntary transfer of the disputed domain name and offered compensation for the registration expenses and transfer fees, but the Respondent never responded. B. Respondent
The Respondent alleges to have cancelled the registration of the disputed domain name upon receipt of the notification by the Center for the commencement of the administrative proceeding, and requests the suspension of the proceeding. The Respondent submits that it was allowed by the Registrar to register the disputed domain name and maintains that it has not committed any abuse. The disputed domain name was allegedly used only to provide information about products sold by the Complainant in Hungary to people who do not speak the Hungarian language. 6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith. A. Identical or Confusingly Similar
The Complainant has provided information about its registrations of the IKEA trademarks, registered for the territory of the European Union, and has thus established its exclusive rights in these trademarks.
It is a common practice under the Policy to disregard in appropriate circumstances the generic Top Level Domain (“gTLD”), such as “.com”, for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the disputed domain name here is the sequence “ikeanovisad”. This sequence contains two easily distinguishable parts – “ikea” and “novisad”. The “ikea” element is identical to the Complainant’s IKEA trademarks, and the “novisad” coincides with the name of the city of Novi Sad in Serbia. Given the popularity of the IKEA trademarks, it is more likely than not that Internet users would regard this combination of elements as denoting an IKEA store in the city of Novi Sad and would presume that the disputed domain name is associated to or endorsed by the Complainant. Therefore, the Panel is satisfied that the disputed domain name is confusingly similar to the IKEA trademarks in which the Complainant has rights, and finds that the Complainant has established the first element of the test under Policy, paragraph 4(a). B. Rights or Legitimate Interests
The Consensus view of UDRP panels is that the Policy requires the Complainant to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent is not connected to the Complainant and has not been licensed by it to use the disputed domain name or to offer products under the IKEA trademarks. According to the Complainant, the Respondent is not engaged in any bona fide activity that could give rise to rights or legitimate interests in the disputed domain name, but rather attempts to exploit the reputation of the Complainant’s IKEA trademarks for its own commercial gain by misleading and diverting Internet users from the Complainant to third parties. Thus, the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not expressly denied any of the contentions of the Complainant and has not brought to the Panel’s attention any circumstances that could give rise to rights or legitimate interests in the disputed domain name. The only defense raised by the Respondent is that it allegedly has used the disputed domain name only to provide information about products sold by the Complainant in Hungary to people who do not speak the Hungarian language.
Having reviewed the website at the disputed domain name, the Panel finds that the front page of this website informs Internet users that they can order from the Respondent the delivery of the goods listed on the websites linked to its website. These goods include not only products of the Complainant, but also products of third parties - Lego and Media Markt. This clearly shows that the Respondent is operating a commercial website at the disputed domain name. Therefore, the allegation of the Respondent that is has used the disputed domain name for a noncommercial purpose contradicts the content of its own website, and the Panel cannot accept it. Rather, it appears more likely that the Respondent is using for its own commercial purposes a domain name that is confusingly similar to the Complainant’s IKEA trademarks in an attempt to attract more visitors to its website. In the absence of any evidence to the contrary and in light of the popularity of the Complainant and its IKEA trademarks, the Panel cannot regard the Respondent’s actions as a legitimate activity that gives rise to rights and legitimate interests of the Respondent in the disputed domain name. Therefore, the Panel finds that the Respondent has not established any rights or legitimate interests in the disputed domain name, and has not rebutted the prima facie case made by the Complainant under the second element of the test under Policy, paragraph 4(a). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 website or location or of a product or service on your website or location.”
In the present case, the Complainant has established that the disputed domain name is confusingly similar to its IKEA trademarks and that the Respondent has no rights or legitimate interests in it. The Respondent uses the disputed domain name for a website which offers Internet users an opportunity to order certain goods from the Respondent. These goods include goods manufactured by the Complainant, but also products of third parties. The only explanation offered by the Respondent for its actions is that it was only providing information, without a commercial purpose, about the goods offered by the Complainant in Hungary. As discussed above, this allegation is contradicted by the evidence, and the Panel does not accept it.
Taking the above into consideration, and in the lack of any evidence to the contrary, the Panel is prepared to accept that the Respondent has registered a domain name that is confusingly similar to the Complainant’s IKEA trademarks with knowledge of these trademarks and of their established goodwill, and that the Respondent has used the disputed domain name for a commercial website in an attempt to attract visitors by exploiting the popularity of the Complainant’s IKEA trademarks. In the Panel’s view, by these actions the Respondent has engaged in the conduct described in the paragraph 4(b)(iv) of the Policy, and has registered and used the disputed domain name 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.
Assen Alexiev
Sole Panelist
Date: March 27, 2014
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