The Complainant is Inter IKEA Systems B.V. of Delft LN, the Netherlands, represented by CSC Digital Brand Services, Sweden.
The Respondent is Kevin Falls of South Carolina, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2014. On April 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 2, 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 May 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2014.
The Center appointed Linda Chang as the sole panelist in this matter on June 19, 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.
Following notification from the Panel of circumstances requiring an extension of the date for decision in this matter, the Center notified the parties that the due date for a decision would be extended until July 10, 2014. 4. Factual Background
The Complainant owns over 1,500 trademark registrations for IKEA and IKEA variants 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, 39, 41, 42 and 43, among others. The Complainant has several trademark registrations valid in the United States with the oldest one registered on May 22, 1979.
The Complainant is the worldwide IKEA franchisor. According to the facts stated by the Complainant, there are 345 IKEA stores in 42 countries operating under IKEA franchise agreements. In the United States, there are currently 38 stores operating under IKEA franchise agreements. 775 million visitors embarked on the IKEA shopping experience by the end of the business year 2013.
The Complainant has also registered the trademark IKEA incorporated in more than 300 generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”) worldwide, among these, . In 2013, IKEA websites had over 1.2 billion visitors.
The Domain Name was registered on January 24, 2014 and was directed to a website offering handyman services as of the decision date. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name comprises the word “IKEA” identical to the registered trademark IKEA, which has been registered by the Complainant as a trademark and domain name in numerous countries all over the world, including in the United States. The suffix “kitchen” does not detract from the overall impression and the Domain Name must therefore be considered to be confusingly similar with the Complainant’s trademark.
The Complainant submits that the Respondent does not have any rights or legitimate interests in respect of the Domain Name. The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name. No license or authorization has been given by the Complainant to the Respondent to use the trademark IKEA. The Respondent cannot claim to have been using IKEA without being aware of the Complainant’s rights to it, which proves that the Respondent’s interests cannot have been legitimate. Mere registration of the Domain Name does not give the Respondent a right or legitimate interest in respect of the Domain Name. Besides, the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Moreover, the Respondent does not qualify under the criteria laid down in the Oki Data Test.
Further, the Complainant asserts that the Domain Name was registered and is being used in bad faith. The Complainant’s IKEA trademark is well-known and as a purely invented word, the Respondent would not legitimately choose to use it unless it was seeking to create an impression of an association with the Complainant. The Domain Name is currently connected to a website offering handyman services, most of which are completely unrelated to the Complainant. Following the cease and desist letter from the Complainant, the Respondent informed the Complainant that he only registered the Domain Name with the intention of reselling it, which shows the Respondent merely registered the Domain Name with the hope of creating revenue by using the fame of a well-known trademark. The Respondent has not provided any reason for having registered the Domain Name, in the absence of which, the registration of the 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.
The Complainant therefore requests the transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove that each of the following elements exists in seeking the transfer of the Domain Name:
(i) The Domain Name registered by the Respondent 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 Complainant has established that it is the exclusive owner of the worldwide famous trademark IKEA and that it together with its authorized retailers and affiliated entities has for decades provided its customers with well-priced, functional furniture and home furnishings under its famous IKEA trademark. Such rights date back to well before the date of registration of the Domain Name.
The Domain Name registered by the Respondent consists of the Complainant’s trademark IKEA, followed by the word “kitchen”. The word “IKEA” is identical to the famous mark IKEA, which has been registered by the Complainant as a trademark and domain name in numerous countries of the world, including the United States where the Respondent is located. The addition of the term “kitchen” is descriptive and generic and will not have any impact on the overall impression of the dominant part of the name (Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488). The addition of the top-level domain (gTLD) “.net” does not have any impact on the overall impression of the dominant portion of the Domain Name and is therefore irrelevant to determine the confusing similarity between the trademark and the Domain Name.
This Panel therefore finds that the Domain Name is confusingly similar to the IKEA trademark in which the Complainant has rights. B. Rights or Legitimate Interests
As prior WIPO UDRP panels have decided, once a complainant establishes a prima facie case showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of proof on this element shifts to the respondent to rebut the showing (Document Technologies, Inc. v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270; Chanel, Inc v Estco Technology Group,WIPO Case No. D2000-0413, Inter-Continental Hotel Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252). Moreover, prior WIPO UDRP panels have accepted that silence of the respondent might support a finding, based on other relevant circumstances, that he has no rights or legitimate interests in respect of the domain name (Singapore Airlines limited v. European Travel Network, WIPO Case No. D2000-0641; Bayerische Motoren Weke AG v. Null,WIPO Case No. D2002-0937).
The Panel finds that in this case the Complainant has established a prima facie case showing that the Respondent has no rights to or legitimate interests in the Domain Name. The Complainant holds a distinctive trademark and has not authorized the Respondent to use its mark. As the Respondent kept silent about his rights or legitimate interests in the Domain Name based on the available record, the Panel concludes that the Respondent does not have rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b)(i) of the Policy provides that circumstances indicating that one have registered the domain name primarily for the purpose of selling or transferring the domain name registration to the complainant who is the owner of the trademark or service mark or for valuable consideration in excess of out-of-pocket costs directly related to the domain name shall be evidence of the registration and use of a domain name in bad faith. The Panel notes from the Complainant’s contention that the Respondent refused to transfer the Domain Name to the Complainant at the out-of-pocket cost and confessed that he only registered the Domain Name with the intention of reselling it. The above circumstance proves bad faith in registration and use in contravention of the Policy, paragraph 4(b)(i) (World Wrestling Federation Entertainment, Inc. v. Michael Bosman,WIPO Case No. D2099-0001; Exxon Mobil Corporation v. Joseph Fisher, WIPO Case No. D2000-1412).
The Panel views that it is inconceivable that the Respondent was unaware of the IKEA mark when registering the Domain Name given that the Complainant and its IKEA mark are well-known worldwide. Bad faith can be found when the Respondent was aware of the Complainant’s trademark at the time of registering the Domain Name (America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004).
The Panel notes that the Respondent is using the Domain Name to direct Internet users to a website offering handyman services. Given the widespread reputation of the trademark IKEA, the Panel finds that the public is very likely to be confused and misled into the belief that the Domain Name is connected with the Complainant. Thus, the Panel determines that bad faith is established by the Respondent’s use of the Domain Name to intentionally confuse Internet users and to trade on the Complainant's rights and reputation in accordance with paragraph 4(b)(iv) of the Policy (Paule Ka v. Paula Korenek,WIPO Case No. D2003-0453).
In addition, the Panel also agrees with the Complainant that the Respondent does not effectively and accurately disclose the relationship between the Respondent and the Complainant given that the website connected to the Domain Name lacks a disclaimer on the main page and that the disclaimer is only viewable when looking at one of the Respondent’s services (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903). It is only by unauthorized use of the trademark that the potential customer is brought to the website containing the disclaimer in the first place. The disclaimer thus fails to avoid unauthorized use in bad faith of the trademark of the Complainant (ISL Worldwide and the Federal Internationale de Football Association .v. Western States Ticket Service, WIPO Case No. D2001-0070).
In light of the above facts and reasons, the Panel finds that the Domain Name was registered and is being used in bad faith pursuant to the Policy. 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.
Linda Chang
Sole Panelist
Date: July 15, 2014
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