The Complainant is Inter IKEA Systems B.V. of Delft, Netherlands, represented by CSC Digital Brand Services AB, Sweden.
The Respondents are Privacy Protection Service Inc of Nobby Beach, Queensland, Australia/Voronina Maryna of Donetsk Oblast, Ukraine. 2. The Domain Names and Registrar
The disputed domain names , and are registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). They are referred to below collectively as the "Domain Names" or individually as a "Domain Name". 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 14, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 15, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 19, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 22, 2014
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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on March 26, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 15, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on April 16, 2014.
The Center appointed Nick J. Gardner as the sole panelist in this matter on April 23, 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 paragraph 7 of the Rules. 4. Factual Background
The relevant facts are straightforward and can be summarized as follows.
The Complainant is a Dutch company. The Complainant has developed a concept for the sale of furniture and home furnishing products marketed under the trade mark 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 trade mark. 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. 775 million visitors had shopped at an Ikea store by the end of the business year 2013. Annual turnover in 2013 for all Ikea stores reached EUR 29.2 billion. The 2013 edition of the Ikea catalogue app was downloaded almost 10 million times.
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 Trade mark Registration for United States of America No. 1661360 of October 22, 1991, in classes 2, 18, 25, 29, 30, 31, 35, 35, 36, 39 and 41. The Complainant also hold a very large number of domain names which are or include the word "ikea" – it has over 200 such domain names in generic or country level top level domain spaces.
The name Ikea derives from a company formed in Sweden founded in the early 1940s by the Swedish entrepreneur Ingvar Kamprad. 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 business originally started by Mr. Kamprad has evolved into the Complainant and its franchise system as described above. The name Ikea has no other meaning.
The Domain Names were registered by the Respondents on January 19, 2014. Since registered they have been used to host websites which contain automatically generated "pay per click" hyperlinks. These links include links to websites operated by competitors of the Complainant. 5. Parties' Contentions A. Complainant
The Complainant's contentions are lengthy but can be summarized as follows.
The Domain Names incorporate and are similar to its trade mark IKEA in which it clearly has rights.
The Respondents have 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 Respondents registered the Domain Names 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 "dom" to a trade mark used in a domain name is insufficient in itself to negate the confusing similarity between a trade mark and a domain name.
The Respondents are neither licensees nor franchisees nor authorized agents of the Complainant nor have they been authorized by the Complainant to use the trade mark IKEA in the Domain Names.
The Domain Names were registered and are being used in bad faith. The registered trade mark 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 trade marks' and/or as a trade mark with 'a high level of original distinctiveness'".
In Inter Ikea Systems B.V. v. Domain Administrator2@,WIPO Case No. D2011-1934, the domain name was connected to a parked pay per click site. In that case the panel held; "At the time the Complaint was filed, the Disputed Domain Name directed Internet users to parking pages offering goods and services of Complainant's competitors. The Panel finds that this is not a bona fide offering of goods and services". The same discussion applies in the current case.
By using a domain name incorporating a well-known trade mark, it is likely that Internet users assume that some kind of legal or economic affiliation exists between the Respondents and the Complainant. Since the Respondents were well aware of the Complainant's trade mark at the time of registration and use of the Domain Names and considering the obvious similarity of the Domain Names with the trade mark IKEA, the Respondents, by using the Domain Names, 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 their websites. B. Respondents
The Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings
As a preliminary issue the Panel notes this is a case where one of the Respondents (Privacy Protection Service Inc) appears to be a privacy or proxy registration service while the other Respondent (Voronina Maryna) appears to be the substantive Respondent. The Panel in this case adopts the approach of most UDRP panels, as outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"),paragraph 4.9, as follows "Most panels in cases involving privacy or proxy services in which such disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant". Accordingly this decision refers to both Respondents. It is not in practical terms necessary to distinguish which Respondent was responsible for specific acts although it appears likely it was Voronina Maryna.
The Panel also notes that in the present case it is not clear whether either of the Respondents has actually received the Complaint in electronic format or the Written Notice in hard copy as sent to them by the Center. No acknowledgment has been received from either Respondent and no specific proof of delivery appears to exist. However given this material was sent to the relevant addresses disclosed by the Registrar then the Panel again adopts the approach set out in the WIPO Overview 2.0, paragraph 4.9 namely, "once the WIPO Center has notified the complaint to the WhoIs-listed contact information (especially where confirmed by the registrar) for the domain name registrant, this would normally satisfy the requirement in paragraph 2(a) of the UDRP Rules to employ reasonably available means calculated to achieve actual notice". Accordingly the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondents failure to file any Response.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of each of the Domain Names that:
(i) the Domain Names are identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondents have no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trade mark IKEA. It is clear that the Complainant is the holder of numerous registrations for trade marks 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 which is carried on internationally by numerous authorised franchisees of the Complainant under the name IKEA all of which are licensed to use the trademarks owned by the Complainant in this respect.
The Domain Names are each confusingly similar to the IKEA trade mark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark 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 suffix "dom". "Dom" is not a word which has any common meaning so far is the Panel is aware (it has some rather obscure meanings in relation to certain members of the Roman Catholic church and in connection with Portuguese royalty but these are not relevant here). The letters "dom" are however commonly used in English as a suffix forming nouns that refer to a domain (e.g. "kingdom"), or a collection of persons (e.g. "officialdom"), or a rank or station (e.g. "earldom"), or a general condition (e.g. "freedom"). The same principle has been adopted in the present case, by adding this suffix to the word "ikea" thereby forming a word which still relates to the term Ikea and which does not have any separate independent meaning. This addition does not suffice to negate the similarity between each of the Domain Names and the Complainant's IKEA trade mark.
Accordingly the Panel finds that each of the Domain Names is confusingly similar to the Complainant's trade mark 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 and its authorised licensees or franchisees. The Respondents are not licensees or franchisees of the Complainant.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondents have rights or legitimate interests in the Domain Names:
(i) before any notice to the Respondents of the dispute, use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) the Respondents have been commonly known by the Domain Names, even if the Respondents have acquired no trade mark or service mark rights; or
(iii) the Respondents are making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondents to register or use the Domain Names or to use the IKEA trade mark. The Complainant has prior rights in the IKEA trade mark which precede the Respondents' registration of the Domain Names. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Domain Names and thereby the burden of production shifts to the Respondents to produce evidence demonstrating rights or legitimate interests in respect of the Domain Names (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 Respondents have failed to produce any evidence to establish any rights or legitimate interests in each of the Domain Names. Accordingly the Panel finds that the Respondents have no rights or legitimate interests in each of the Domain Names 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 trade mark, and the evidence as to the extent of the reputation the Complainant and other companies in the Ikea group enjoy in the IKEA trade mark, and the confusingly similar nature of each of the Domain Names to the IKEA trade mark, and the lack of any explanation from the Respondents as to why they registered the Domain Names 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 Respondents selected the Domain Names independently and without knowledge of the Complainant or the Ikea group or its products. The websites operated by the Respondents at the Domain Names comprise a series of "click through" links to other third party websites. The Panel infers that some consumers, once at the Respondents' websites will follow the provided links and "click through" to other sites which offer products some of which may compete with those of the Complainant. The Respondents presumably earn "click through" linking revenue as a result. The Panel suspects the Respondents' websites are probably automatically generated. This does not however matter. It is well established that where a domain name is used to generate revenue in respect of "click through" traffic, and that traffic has been attracted because of the name's association with the complainant, such use amounts to use in bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald's Corporation v. ZusCom,WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky,WIPO Case No. D2008-0396.
Further the Panel notes the Respondents have not filed a Response and hence have not availed themselves of the opportunity to present any case of legitimate use that they might have. The Panel infers that none exists.
As a result, and applying the principles in the above noted decisions, the Panel finds that each of the Domain Names has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled in respect of each 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 Domain Names , and be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Date: May 7, 2014
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