The Complainant is Inter IKEA Systems B.V. of Delft, the Netherlands, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Noritomo Sawa of Kawasaki-shi, Kanagawa, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount-D and O (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 21, 2014. On May 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 23, 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 May 23, 2014, the Center transmitted an email to the parties in both English and Japanese regarding the language of proceedings. On May 26, 2014, the Complainant submitted its request that English be the language of the proceeding by email to the Center. On June 4, 2014, the Respondent submitted its request that Japanese be the language of the proceeding by email to the Center.
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 June 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2014. The Center has received an informal email communication from the Respondent on June 4, 2014. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent's default on June 24, 2014.
The Center appointed Masato Dogauchi as the sole panelist in this matter on July 2, 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
Whereas the Respondent has not submitted any contentions regarding the merits of the case, the following is found to be the factual background of this case.
The Complainant is the owner of a unique concept for the sale of furniture and home furnishing products marketed under the trademark IKEA. 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 owns over 1500 trademark registrations for IKEA and IKEA variants in more than 80 countries around the world, including in Japan, covering goods and services related to its business.
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, . In 2013, IKEA websites had over 1.2 billion visitors.
According to the WhoIs database, the Respondent is an individual located in Japan.
The disputed domain name was registered on March 13, 2014. 5. Parties' Contentions A. Complainant
The Complainant asserts as follows:
Today, there are 345 IKEA stores in 42 countries operating under IKEA franchise agreements. 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 rights in the trademark IKEA, which is one of the most well-known trademarks in the world. 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.
The disputed domain namecomprises the word "ikea", which is 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.
The addition of the term "eshop" in combination with a hyphen will not have any impact on the overall impression of the dominant part of the name, IKEA, instantly recognizable as a world famous trademark.
And, the addition of the gTLD ".com" does not have any impact on the overall impression of the dominant portion of the disputed domain name.
Therefore, the disputed domain name is confusing similar to the Complainant's trademark.
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.
The Complainant has several trademark registrations valid in Japan, and there are currently six IKEA stores located in Japan, which is the country in which the Respondent resides. 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.
The disputed domain name is currently connected to a parked pay per-click-website of which many of the links lead to the Complainant's competitors. 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.
The Complainant sent a cease and desist letter by email to the Respondent two times, but the Respondent never replied. According to UDRP precedents, it has been held 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. B. Respondent
The Respondent did not reply to the Complainant's contentions on the merits. 6. Discussion and Findings
No agreement is found in respect of the language to be used in this proceeding. In such a case, in accordance with Rule 11 (a) of the Rules, 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.
The Registrar has confirmed that the language of the Registration Agreement is Japanese. The Complainant submitted the Registration Agreement in Annex 3 of the Complaint and the Respondent has not disputed its authenticity. The Panel finds no special reason why any other language than English is to be chosen, having regard to the circumstances of this case. Indeed, both the Respondent and the Registrar are located in Japan, English is a natural choice in consideration that English is used globally in this age in comparison with very local languages, and the Panel has not found any difficulties encountered by the Respondent in this proceeding. The Respondent had the opportunity to file a Response in either Japanese or English, but has not done so. Accordingly, the Panel determines that English shall be the language of this proceeding.
According to the Rules, paragraph 15(a), a panel shall decide a case 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. Since the Respondent has not made any formal submission in this case, this decision is rendered on the basis of the facts found by the submission from the Complainant.
In accordance with the Policy, paragraph 4(a), in order to qualify for a remedy, the Complainant must prove each of the following:
(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 disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is found that the Complainant has rights in the IKEA trademark.
As the Complainant asserts, the disputed domain name can be divided into three parts: "ikea", "eshop" and "com". The first part is the distinctive portion of the disputed domain name is identical to the Complainant's trademark. The second part "eshop" is apparently a combination of "e" and "shop". The word "e" is a popular abbreviated form of "electronic" in these days and the word "shop" is just a generic term. Like the word "email", "eshop" is an easily understandable word. Lastly, the third part ".com" is generally known as a gTLD.
Accordingly, the second and the third part of the disputed domain name cannot be considered as sufficient to distinguish the disputed domain name from the Complainant's trademark. The term "eshop" is apt to induce confusion among Internet users as to the source and origin of the Complainant's products.
Having considered these terms, the Panel finds that the disputed domain name is confusingly similar to the IKEA trademark in which the Complainant has rights. Policy, paragraph 4(a)(i) is accordingly satisfied. B. Rights or Legitimate Interests
Under the Policy, the Complainant is required to present a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the burden shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the disputed domain name.
The Complainant has made a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. There is no relationship or association between the Respondent and the Complainant. The Respondent is not commonly known by the disputed domain name, and the Complainant has not authorized the Respondent to use the IKEA trademark or to register the disputed domain name. The Respondent uses the disputed domain name to connect to a parked pay-per-click website of which many of the links lead to the Complainant's competitors. Such use does not give rise to any rights or legitimate interests in the disputed domain name.
The Respondent has not come forward to refute the Complainant's prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Policy, paragraph 4(a)(ii) is accordingly satisfied. C. Registered and Used in Bad Faith
According to the Registrar, the Respondent registered the disputed domain name on March 13, 2014, which was long after the Complainant established its rights in and to the trademark.
Given that the disputed domain name is currently connected to a parked pay-per-click website of which many of the links lead to the Complainant's competitors, it is highly unlikely that the Respondent would not have known of the Complainant and the Complainant's legal rights in the IKEA trademark at the time of the disputed domain name registration.
Further, it is apparent to the Panel that the Respondent uses the disputed domain name in order to mislead the public into believing that the Respondent's website is associated with the Complainant, which is not true. Such behavior falls under paragraph 4(b)(iv) of the Policy and constitutes evidence of registration and use in bad faith.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith. Policy, paragraph 4(a)(iii) is accordingly satisfied.
Accordingly, all three cumulative requirements as provided for in the Policy, paragraph 4(a), are determined to be satisfied. 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.
Masato Dogauchi
Sole Panelist
Date: July 9, 2014
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