The Complainant is Inter IKEA Systems B.V. of Delft, the Netherlands, represented by Studio Barbero, Italy.
The Respondent is Marc Gray, Flatpackfurniture Delivery and Assembly of Upper Marlboro, Maryland, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2014. On February 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 28, 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 March 6, 2014. The Complaint was duly served upon the Respondent by email, and the records provided by the Center confirm that the Written Notice of the Complaint sent by courier was received and signed for at the Respondent’s address as verified in its contact details. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2014.
The Center appointed Nick J. Gardner as the sole panelist in this matter on April 9, 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 relevant facts are straightforward and can be summarized as follows.
The history of the IKEA brand commences with a company formed in Sweden founded in the early 1940s by the Swedish entrepreneur Ingvar Kamprad. The Complaint refers to this company as the “IKEA Systems company” but its exact full legal name has not been provided to the Panel. Mr. Kamprad selected the term IKEA as the predominant part of this name to represent the company and establish its identity: the word IKEA was made up and consisted of the founder’s initials (I and K), followed by the first initial of Mr. Kamprad’s farm, Elmtaryd (E), and then, finally, his village, Agunnaryd (A). The original company has since its formation developed into what is today a world famous manufacturer and retailer of furniture and associated products. The first IKEA Systems advertisement was published in Swedish newspapers in 1945 and the first IKEA Systems catalog was distributed to consumers in 1951. The first IKEA Systems store opened in Sweden in 1958. The IKEA brand has since then exploded globally in popularity and success. Today there are 345 IKEA Systems stores in 42 countries in Europe, North America, Middle East, Asia Pacific and Caribbean. Over 775 million visitors shopped at IKEA Systems stores. IKEA stores specialise in offering for sale good value high quality furniture. Much of this furniture is purchased directly from the IKEA stores by customers who then need to take it home themselves, or arrange for a third party to do so for them.
The Complainant is a Dutch company. It has not provided the Panel with details of the IKEA group’s corporate structure, nor explained precisely how the Complainant itself fits within that structure. Instead it refers to the “IKEA brand” and describes what it refers to as “IKEA Systems stores”. The Panel assumes that the IKEA group must operate under a group structure with, most probably, operating companies in each country in which the group trades and at least one overall holding company, and possibly various intermediate holding companies. The Panel assumes that the Complainant is either one of the holding companies within the IKEA group, or a company within the group which holds the group’s trademark rights.
The Panel also notes that previous UDRP decisions which the Complainant has cited in this case refer to the Complainant operating a franchise system and licensing the use of the IKEA brand to retailers that enter into a franchise agreement with the Complainant – see for example Inter Ikea Systems B.V. v. Ikea Property Management,WIPO Case No. D2011-1966. No details of any such franchise systems have been provided in the present Complaint.
The filed evidence establishes that the Complainant is the holder of very large numbers of registered trademarks (over 1,400) which are for the word IKEA or include that word. One example is National Trademark Registration for United States of America No. 1661360 of October 22, 1991, in classes 2, 18, 25, 29, 30, 31, 35, 36, 39 and 41. The Complainant also holds a very large number of domain names which are or include the word IKEA – it has over 200 such names in generic or country code Top-Level Domain.
The Panel notes that the Respondent is a Mr. Marc Gray who adopts the trading name or style of “Flatpackfurniture Delivery and Assembly” in respect of his business. According to the available record, “Flatpackfurniture Delivery and Assembly” does not have any separate legal personality and hence the Panel finds that there is a single Respondent to this Complaint.
The Domain Name was registered on November 5, 2012. Apart from a brief period when it was inactive it has since then been used to point to a web site which offers delivery and assembly services for furniture in the Washington D.C. area of the United States. These services refer to delivery and assembly of furniture purchased from IKEA stores as well as from other retailers. The web site also offers more general delivery services. Various cease and desist letters have been sent to the Respondent but have not been replied to. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions are lengthy but can be summarized as follows.
The Domain Name incorporates and is similar to its trademark IKEA in which it clearly has rights.
The Respondent has no rights or legitimate interests in the term “IKEA”. There is no other meaning associated with that term other than in relation to the Complainant. The Respondent registered the Domain Name in bad faith to profit from the reputation of the Complainant.
It is well established that the addition of generic or descriptive terms such as here “delivery” and “options” to a trademark used in a domain name is insufficient in itself to negate the confusing similarity between a trademark and a domain name.
The Respondent has no rights in the IKEA name. The Respondent is not a licensee or authorized agent of the Complainant nor has it been authorized by the Complainant to use the trademark IKEA in the Domain Name.
The Domain Name was registered and is being used in bad faith. The registered trademark IKEA has been used extensively and exclusively by IKEA Systems since 1943. As observed in Inter IKEA Systems B.V. v. Telos Chamir,WIPO Case No. D2011-1961, numerous UDRP panels over the years “have considered IKEA for the purposes of their UDRP proceedings as ‘one of the world’s most well-known and reputed trademarks’ and/or as a trademark with ‘a high level of original distinctiveness’”.
In the present case, the Domain Name and the contents published at the corresponding web site are themselves evidence of the Respondent’s awareness as to the existence of the trademark IKEA and of the products connected to it. Indeed, on the homepage of the web site “www.” the trademark IKEA is featured, and the following promotional sentence is published “If you are at IKEA or any other of our frequently served locations call us and our next available delivery slot will be yours!!”. Moreover, a specific section of the web site is dedicated to a service of order, purchase and delivery of IKEA products.
The bad faith in the use of the Domain Name is also highlighted by the fact that the Respondent has been using the Domain Name to intentionally attract for commercial gain Internet users to the web site “www.”, where the Respondent promotes the business of the company “Flatpackfurniture Delivery and Assembly”, consisting in the provision of services of transport and delivery of packages.
By using a domain name incorporating a well-known trademark, it is likely that Internet users assume that some kind of legal or economic affiliation exists between the Respondent and the Complainant. Since the Respondent was well aware of the Complainant’s trademark at the time of registration and use of the Domain Name and considering the obvious similarity of the Domain Name with the trademark IKEA, the Respondent, by using the Domain Name, indisputably intended to create confusion with the Complainant and to take advantage of such confusion in order to attract, for commercial gain, Internet users to its web site. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) The 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 Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trademark IKEA. Although the Complaint is less than clear on the details of the IKEA group structure and how exactly the Complainant fits into that structure, it is nevertheless clear that the Complainant is the holder of numerous registrations for trademarks in respect of the term “IKEA” throughout the world. The filed evidence also establishes that since the IKEA brand was developed in the 1940s it has grown to be very famous indeed and is used in respect of the IKEA business (in whatever corporate structure is employed) which is carried on internationally under the name IKEA and which is licensed to use the trademarks owned by the Complainant in this respect.
The Domain Name is confusingly similar to the IKEA trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). The only differences in the present case are the inclusion of the generic and descriptive words “delivery” and “options”. These do not suffice to negate the similarity between the Domain Name and the Complainant’s IKEA trademark.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
IKEA is in substance the Complainant’s name and brand and is a term which has no other meaning save in relation to the Complainant or other members of the IKEA group and their products, or those of any authorised licensees or franchisees. The Respondent is not a licensee or franchisee of the Complainant or of any other IKEA group company.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Domain Name or to use the IKEA trademark. The Complainant has prior rights in the IKEA trademark which precede the Respondent’s registration of the Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Domain Name (see for example Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the IKEA trademark, and the evidence as to the extent of the reputation the Complainant or other companies in the IKEA group enjoy in the IKEA trademark, and the confusingly similar nature of the Domain Name to the IKEA trademark, and the lack of any explanation from the Respondent as to why it registered the Domain Name lead the Panel to conclude the registration and use was in bad faith.
In the present case, the Panel concludes that it is inconceivable that the Respondent selected the Domain Name independently and without knowledge of the Complainant or the IKEA group or its products. In the Panel’s assessment, the Domain Name was clearly chosen to promote a service, namely the delivery of store bought furniture including that bought from IKEA branded stores, in a manner which suggests a connection between the Complainant and the Respondent’s services, and which suggests the Respondent is approved or authorised to use the IKEA brand. The use to which the Domain Name has been put, namely promoting a service for the delivery and assembly of furniture bought from IKEA (and other) stores is squarely within the type of use identified in paragraph 4(b)(iv) of the Policy as evidence of registration and use in bad faith: “(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [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 [the Respondent’s] web site or location or of a product or service on your [the Respondent’s] web site or location”.
Further, the Panel notes the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of legitimate use that it might have. The Panel infers that none exists.
As a result, and applying the principles in the above noted decisions, the Panel finds that the Domain Name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 Domain Name be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Date: April 23, 2014
Full & Egal Universal Law Academy