Complainant is Inter IKEA Systems B.V. of Delft LN, Netherlands, represented by CSC Digital Brand Services AB, Sweden.
Respondents are Matthias Gerard Edouard Michel Lesage of Santiago, Chile / Domain Admin, Privacy Protection Service INC d/b/a PrivacyP of Nobby Beach, Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2014. On November 6, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 7, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 13, 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2014. On November 28, 2014, Respondent Matthias Gerard Edouard Michel Lesage sent the Center and Complainant an email responding to the Complaint, described below.1
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on December 15, 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
Complainant owns hundreds of registrations worldwide containing the well-known IKEA trademark.
The disputed domain name was registered July 11, 2014. Although the disputed domain name does not presently route to a publicly visible website, until recently, it routed to a webpage displaying Complainant’s IKEA logo and promoting a textile business located in Santiago, Chile. 5. Parties’ Contentions A. Complainant
Summarizing its legal contentions, Complainant alleges that (1) the disputed domain name is confusingly similar to Complainant’s trademark, (2) Respondent has no rights or legitimate interests in the disputed domain name, and (3) the disputed domain name was registered and is being used in bad faith, all in violation of the Policy. Complainant also avers that it sent a cease and desist letter to Respondent on August 29, 2014, to which it received no response.
On this basis, Complainant seeks transfer. B. Respondent
There was no formal Response, however on November 28, 2014, Respondent wrote to the Center by email. Respondent represented that he created the website in good faith, presumably on behalf of individuals that Respondent avers registered a Chilean commercial company in July 2014. Respondent avers that one of the people named in the Chilean commercial registration owns South American representation rights for “IKEA FABRICS”, and also owns IKEA stores in Chile.
In the email, Respondent also stated that the new textile business associated with the disputed domain name will sell IKEA fabrics which would be directly bought from the IKEA business in Chile. Respondent’s letter to the Center neither specified any name for the commercial company registration, nor provided any evidence substantiating the alleged company registration. 6. Discussion and Findings
Complainant must establish that (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy paragraph 4(a). A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights.
UDRP decisions commonly disregard domain name suffixes in determining whether a disputed domain name is similar to a complainant’s marks. Removing the “.com” suffix from the disputed domain name leaves only the phrase “lonasarcoirisikea.”
Respondent has fully included the distinctive IKEA trademark in the disputed domain name. The Panel agrees with Complainant that the addition of the generic terms “lonas” and “arcoiris” (Spanish terms meaning “canvas” and “rainbow”) to the trademark does not alleviate the confusion that users would experience.
The requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
The Panel also concludes that the second element of paragraph 4(a) of the Policy is fulfilled.
Paragraph 4(c) of the Policy lists circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. A complainant must show a prima facie case that the respondent lacks rights or legitimate interests. See e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005). The absence of rights or legitimate interests is shown if a respondent does not rebut the complainant’s prima facie case.
The potentially applicable circumstances listed in paragraph 4(c) relevant to this proceeding include: (i) the use of the disputed domain name in connection with a bona fide offering of goods and services; and (ii) being commonly known by the disputed domain name. The fact that the website was used to promote commercial offerings precludes any possibility that the circumstances of paragraph 4(c)(iii) could be established in favor of Respondent. i. Bona Fide Offering
The Panel concludes that there is no bona fide offering. As elaborated below, such a conclusion is based upon (1) the Complaint’s allegations; (2) a generous interpretation of the factual averments in Respondent’s communications with the Center, and (3) even the application of the broadly accepted framework for interpreting the rights of authorized agents under the Policy articulated in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
The evidence submitted by the parties is unclear about the relationship between Respondent and Complainant. There was no new allegation in the amended Complaint addressing any possible relationship after the registrar disclosed Respondent’s name, so the Panel is left with only the allegation in the original Complaint that Respondent has no authorization to use Complainant’s trademarks and that Respondent is not an authorized reseller.
Were the Panel to take these allegations as true, there would be no ground for finding a bona fide offering of goods and services. Since Respondent makes averments suggesting that a connection exists between Respondent and a party with some sort of rights to represent “IKEA fabrics,” however, the Panel wishes to consider alternative grounds to reach a decision respecting the possibility of a bona fide offering.
For the sake of analysis, the Panel for the moment accepts Respondent’s summary allegation that one of the company owners for which Respondent registered the disputed domain name enjoys Complainant’s representation rights in South America. The Panel examines the possibility of Respondent’s rights or legitimate interests as though Respondent itself is Complainant’s South American representative (rather than a party providing web design services for the alleged representative).
Even on this basis, though, the Panel finds that Respondent does not establish a bona fide offering. First, as noted, there is no proofor detail respecting the relationship between Complainant and the trademark holder’s alleged representative for South America (to say nothing of the alleged representative’s relationship with Respondent). Second, a commercial representation agreement does not necessarily convey rights to register a domain name containing the principal’s trademarks; without proof of the alleged representation agreement, the Panel cannot assume such specific rights were conveyed. Third, even if the textiles in question are acquired through a legitimate channel (Respondent avers that the textiles are bought from the commercial representative’s Chilean IKEA business), there is no proof that a right exists to resell those goods on line by using Complainant’s trademark and logo.
The website displays Complainant’s trademarked logo, suggesting that the website is authorized by Complainant. Yet nowhere does it clearly appear to the Panel that Respondent included any prominent disclaimer or explanation of Respondent’s relationship to the trademark holder. Hypothetically treating Respondent as an authorized agent of Complainant, the trademark holder, Respondent’s use of the disputed domain name fails to meet at least one of the four Oki Data criteria, being that “The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site . . . .” Oki Data Americas, Inc. v. ASD, Inc., supra. In summary, the Panel concludes there is no bona fide offering. ii. Commonly Known
As forparagraph 4(c)(ii), the only evidence that Respondent may be commonly known by the disputed domain name consists of the heading and the copyright notice on Respondent’s website. The Panel is of the opinion that this evidence of legitimate rights or interests is inherently unreliable. While Respondent submitted a brief email response to the Complaint, averting to a Chilean company registration, Respondent’s communication omits specific reference to a company name, therefore Respondent has adduced no further evidence of rights under Policy paragraph 4(ii).
The Panel concludes that a prima facie case has been established in favor of Complainant. The Panel finds that Respondent has not rebutted the prima facie case, since the response is not sufficient to establish any of the circumstances of paragraph 4(c) of the Policy to support the existence of Respondent’s “rights or legitimate interests” in the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith. Policy, paragraph 4(b)(iv). See, e.g., L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623. UDRP panels may draw inferences about bad faith in light of the circumstances. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The record shows that Respondent registered the disputed domain name long after Complainant perfected trademark rights in many countries. Respondent registered the disputed domain name under a privacy protection service, without authorization or knowledge of Complainant. This suggests that Respondent was acting out of its own commercial motivation. The Panel therefore infers that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s marks. Registration in bad faith is therefore established.
The unauthorized use of Complainant’s trademarked logo and the lack of a website disclaimer or description of the relationship with Complainant are factors which in the Panel’s view establish use in bad faith. Respondent’s failure to respond to Complainant’s August 2014 cease and desist letter under the circumstances is further evidence of bad faith. 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 Complainant.
Jeffrey D. Steinhardt
Sole Panelist
Date: December 30, 2014
All further references to “Respondent” below signify the individual Respondent Matthias Gerard Edouard Michel Lesage.
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