The Complainant is Inter IKEA Systems B.V. of Delft, the Netherlands, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Lei Wang of Zhoukou, Henan, China. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2014. On January 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 12, 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.
On February 12, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding by email to the Center. The Respondent did not submit any comments on the language of the proceeding within the specified due date.
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 in both English and Chinese, and the proceedings commenced on February 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2014.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on March 20, 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, Inter IKEA Systems B.V., is the owner of the registered trademark IKEA. It owns over 1,500 trademark registrations for IKEA and variants of IKEA in more than 80 countries around the world, covering goods and services in the 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, among others. The Complainant also has several trademark registrations valid in China. There are currently 345 IKEA stores worldwide, of which 16 are located in China which is the country where the Respondent appears to reside.
The Complainant is the owner of a unique concept for the sale of furniture and home furnishing products marketed under the trademark IKEA. The Complainant’s business model is developed through 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 the franchise agreements, with the exception of the IKEA Delft store in the Netherlands (which is owned and operated by the Complainant). Today, there are 345 IKEA stores in 42 countries operating under IKEA franchise agreements. An estimated total of 775 million visitors embarked on the IKEA shopping experience by the end of the business year 2013. Annual turnover in 2013 for all IKEA stores reached EUR 29.2 billion.
The Complainant has also registered the trademark IKEA incorporated in more than 300 generic Top-Level Domains (“gTLD”) and country code Top-Level Domains (“ccTLD”) worldwide, among these: and . The awareness of the trademark IKEA is considered in the whole Community to be significant, including in the online world. In fact, in 2013, IKEA websites had over 1.2 billion visitors.
The disputed domain name was registered on November 9, 2013. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights on the following grounds:
1. The disputed domain name comprises the word “ikea”, which is identical to the registered trademark IKEA, which has been registered by the Complainant as trademarks and domain names in numerous countries all over the world, including in China.
2. The disputed domain name is confusingly similar to the Complainant’s world famous trademark IKEA.
3. The mark IKEA is an invented name. It is an acronym comprising the initials of the founder’s name (Ingvar Kamprad), the farm where he grew up (Elmtaryd), and his home parish (Agunnaryd) and it has no meaning in any language other than as a trademark identifying IKEA as a source of origin.
4. The addition of the term “new” will not have any impact on the overall impression of the dominant part of the name, IKEA, instantly recognizable as a world famous trademark.
5. The addition of the gTLD “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity between the trademark and the disputed domain name.
6. The likelihood of confusion includes an obvious association with the trademark of the Complainant. With reference to the reputation of the trademark, IKEA, there is a considerable risk that the public will perceive the disputed domain name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant. The trademark also risks being tarnished by being connected to a website owned by a third party. By using the trademark as a dominant part of the disputed domain name, the Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant’s trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds:
1. The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. Nor has the Complainant found anything that would suggest that the Respondent has been using IKEA in any other way that would give them any legitimate rights in the name. Consequently, the Respondent may not claim any rights established by common usage.
2. It is also clear, that no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark IKEA. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.
3. It is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the name “Ikea” at the time of registration. It is rather obvious that it is the fame of the trademark that has motivated the Respondent to register the disputed domain name. That is, the Respondent cannot claim to have been using IKEA, without being aware of the Complainant’s rights to it. This, among other facts, proves that the Respondent’s interests cannot have been legitimate. IKEA is a famous trademark worldwide and it was established in prior cases that any use of such a trademark in a domain name would violate the rights of the trademark owner.
4. The disputed domain name was registered by the Respondent decades after the Complainant registered the IKEA trademark in the United States of America and China. The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the disputed domain name.
5. The Respondent is today not using the disputed domain name in connection with a bona fide offering of goods or services. Instead the disputed domain name is currently connected to a website containing an online shop of backpacks/carriers. By doing this, the Respondent is misleading Internet users to a commercial website. It is highly likely that visitors would be confused into falsely thinking that this is a website owned, or sponsored, by the Complainant. No evidence has been found that the Respondent uses the name as a company name or has any other legal rights in the name “Ikea”.
The Complainant contends that the disputed domain name was registered and is being used in bad faith on the following grounds:
1. The trademark IKEA belonging to the Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world.
2. The awareness of the trademark IKEA is considered, in the whole Community in general, to be significant and substantial. The considerable value and goodwill of the mark IKEA is most likely, a large contribution to this and also what made the Respondent register the disputed domain name at issue here.
3. Further, the trademark IKEA is a purely invented word mark and the use of the word is not one that traders would legitimately choose unless they were seeking to create an impression of an association with the Complainant.
4. On December 19, 2013 the Complainant sent a cease and desist letter by email to the Respondent. In the letter the Complainant advised the Respondent that the unauthorized use of the IKEA trademark within the disputed domain name violated the Complainant’s rights in said trademark. The Complainant requested a voluntary transfer of the disputed domain name and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). Despite a reminder sent, no response was ever received. Since the efforts of trying to solve this matter amicably were unsuccessful, the Complainant chose to file a complaint according to the UDRP process. It has been mentioned in earlier UDRP disputes that the failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith.
5. The disputed domain name is currently connected to a website containing an online shop of backpacks/carriers. Consequently, the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its websites. Whether or not the Respondent has influenced what links should be included on the website is irrelevant for the finding of bad faith in this case. It is also without relevance whether or not the Respondent is actually getting revenue from the page himself.
7. The incorporation of a well-known mark into a domain name in order to attract visitors to a commercial website and boost traffic and thereby income can amount to bad faith use of this type. The likelihood of confusion is caused by the choice of a domain name which correlates closely to a mark of the Complainant, rather than by the website content. 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.
8. The essence of bad faith in cases such as this lies, not only in the initial interest confusion, but also in the capacity to tarnish the IKEA mark. Considering the well-known and distinctive character of the IKEA trademark, the same conclusion must apply in this case. The Respondent has not provided any reason for having registered the disputed domain name and, in the absence of such a reason, the Complainant argues that the registration of the disputed domain name was an intentional effort to gain Internet traffic from consumers who are, at least initially, confused into believing that the website will resolve to an official IKEA site.
9. The IKEA is a famous trademark. There is no doubt that the Respondent was aware of the rights the Complainant has in the trademark IKEA and the value of the said trademark, at the point of the registration of the disputed domain name. There is no connection between the Respondent and the Complainant. By using the disputed domain name the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for his own commercial gain. Consequently, by referring to the above-mentioned, the Respondent should be considered to have registered and to be using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
6.1. Language of the Proceeding
According to the information received by the Center from the Registrar, the language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. Complying with the instructions from the Center, the Complainant has submitted a request that the proceeding should be in English, to which the Respondent has not objected.
After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel’s discretion under the Policy
Paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Thus, the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The circumstances of this proceeding
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. In particular, the Panel notes that the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; and (b) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. The Panel is of the view that if the Respondent had experienced difficulty with the English language, it could have communicated this to the Center and the Panel would have ruled accordingly. However, the Respondent has chosen not to respond to the Complainant’s allegations. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English.
6.2. Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
(i). the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii). the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii). the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall 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 applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the IKEA marks in connection with a unique concept for the sale of furniture and home furnishing products in many countries in the world. Furthermore, the Panel finds that the Complainant has registered trademark rights in the IKEA marks in China, the country in which the Respondent appears to reside. The Panel finds that the Complainant’s IKEA trademark is well-known in connection with a unique concept for the sale of furniture and home furnishing products offered by the Complainant in many countries as well as in China.
In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s trademark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet users seeking to purchase or download information about the Complainant’s products.
The disputed domain name consists of the Complainant’s IKEA trademark in its entirety with the addition of the term “new” and the gTLD suffix “.com”. The Panel is of the view that the most prominent and distinctive part of the disputed domain name is the word “ikea” which is identical to the Complainant’s registered trademark IKEA. Given the fame and notoriety of the Complainant’s IKEA marks, the addition of the term “new” does not provide sufficient distinction from the Complainant’s trademark. Furthermore, it is also an accepted principle that the addition of suffixes such as “.com” being the gTLD is not typically a distinguishing factor.
Bearing in mind the following factors, in particular the distinctive character of the Complainant’s IKEA trademark and the dominant component of the disputed domain name, the Panel therefore finds that the disputed domain name is confusingly similar to the IKEA trademark in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test. B. Rights or Legitimate Interests
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
1. The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “newikea” in its business operations;
2. There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the IKEA trademark;
3. There is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services;
4. On the contrary, the disputed domain name is currently connected to a website containing an online shop of backpacks/carriers. The Panel finds that the Respondent therefore does not have the right to use IKEA marks in the disputed domain name. Such a behaviour on the part of the Respondent clearly shows that it is not using the disputed domain name in connection with a bona fide offering of goods or services and that the Respondent has no rights or legitimate interests in the disputed domain name.
5. The Complainant and its IKEA trademark enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in connection with a unique concept for the sale of furniture and home furnishing products and is a registered trademark in many countries all over the world, including China. Consequently, in the absence of contrary evidence from the Respondent, the IKEA trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. (See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.). Based on the above reasons, the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden of production to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against it. In particular, the Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests in the disputed domain name.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent has not adduced evidence of any rights or legitimate interests in the disputed domain name.
The Panel finds for the Complainant on the second part of the test. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that a respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) 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) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The above circumstances are indicative of registration and use of the disputed domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the Panel can also constitute registration and use of the disputed domain name in bad faith by a respondent in appropriate cases.
One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks often transcend national borders. Taking into account the worldwide reputation of the Complainant and its IKEA trademark, as well as the market presence of the Complainant in numerous countries including China, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name.
Furthermore, the Complainant has established a substantial presence on the Internet. The Complainant has registered more than 300 gTLDs and ccTLDs worldwide which incorporate the trademark IKEA, amongst them are and . A simple search on the Internet would reveal the presence of the Complainant’s trademark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with the Complainant and its products.
Where the Respondent has chosen to register a disputed domain name that is identical or confusingly similar to the Complainant’s trademark and where the trademark in question has through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one. There is no evidence that the Respondent has used or intends to use to the disputed domain name for purposes of bona fide offering of goods and services over the Internet. On the contrary, the Respondent is using the disputed domain name to connect to a website containing an online shop of backpacks/carriers without the consent of the Complainant. The Panel finds that the Respondent therefore does not have the right to use IKEA marks in the disputed domain name. Such behaviour on the part of the Respondent is indicative of bad faith registration and use. The Respondent could have explained its choice of the disputed domain and its subsequent conduct. However, the Respondent did not do so and the Panel was not provided with any plausible explanation.
The Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website in accordance with paragraph 4(b)(iv) of the Policy. The Panel finds that given the widespread fame of the Complainant’s IKEA trademark and a lack of plausible explanation for the choice of incorporating the Complainant’s well-known trademark in the disputed domain name, the conduct of the Respondent in using the disputed domain name to connect to a website containing an online shop of backpacks/carriers and in using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its websites, are certainly relevant factors indicating bad faith registration and use.
Thus, the Panel finds for the Complainant on the third part of the test. 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.
Susanna H.S. Leong
Sole Panelist
Date: April 10, 2014
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