The Complainant is Inter IKEA Systems B.V. of Delft, the Netherlands, represented by CSC Digital Brand Services, Sweden.
The Respondent is Larisa Skornyakova of Smolensk, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Regtime Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2016. On January 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 15, 2016, 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 and confirming that the language of the Registration Agreement for the Domain Name was Russian. Accordingly, the Center sent an email communication on January 19, 2016, concerning the Language of Proceeding in English and in Russian to the parties. On January 22, 2016, the Complainant requested English to be the language of proceedings. The Respondent did not respond to the request.
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 and 4, the Center formally notified the Respondent in English and Russian of the Complaint, and the proceedings commenced on January 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2016.
The Center appointed Olga Zalomiy as the sole panelist in this matter on March 1, 2016. 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 Complainant owns numerous trademark registrations for the well-known IKEA trademark, such as trademark registration No. 86153 registered on August 7, 1989 in the Soviet Union, to which the Russian Federation is a legal successor. The Complainant, a Dutch company, is the owner of the IKEA business model and is the worldwide IKEA franchisor. Numerous domain name registrations containing the IKEA trademark belong to the Complainant.
The Respondent is a Russian individual residing in Smolensk. The Respondent registered the Domain Name that consists of the IKEA trademark, the word “idea” and the generic Top-Level Domain (“gTLD”) suffix “.info”, on March 12, 2015.
The Respondent failed to respond to “cease and desist” letters sent on behalf of the Complainant on October 28, 2015, November 4, 2015 and November 11, 2015.
Previously the Domain Name resolved to a website offering delivery and installation services for the Complainant’s products as well as for the products of competing companies such as OBI, LEROY MERLIN, and HOFF. Currently, the Domain Name is passively held. 5. Parties’ Contentions A. Complainant
The Complainant claims that it owns more than 1,500 trademark registrations for the IKEA trademark in more than 80 countries around the world, including the Russian Federation, the country of the Respondent’s residence. The Complainant alleges that it is the owner of a unique concept for the sale of furniture and home furnishing products marketed under the IKEA trademark. According to the Complainant, it is the worldwide IKEA franchisor. The Complainant claims that it owns more than 300 domain names containing the IKEA trademark. The Complainant alleges that the IKEA trademark is one of the most well-known trademarks in the world.
The Complainant argues that the Domain Name is confusingly similar to the Complainant’s world famous trademark IKEA. The Complainant claims that the mark IKEA is an invented name, which is an acronym that comprises the initials of its founder’s name, the farm where he grew up and his home parish. The Complainant claims that IKEA has no meaning in the English or Russian languages, other than as an identification of the source of origin for the Complainant’s goods. The Complainant alleges that the addition of the word “idea” has no impact on the overall impression of the dominant part of the Domain Name, in which the IKEA trademark is an instantly recognizable famous trademark. The Complainant claims that the addition of the gTLD “.info” does not distinguish the Domain Name from the Complainant’s trademark.
The Complainant alleges that the Respondent does not have rights or legitimate interests in the Domain Name because the Respondent has no registered trademarks corresponding to the Domain Name or other rights in the Domain Name. The Complainant claims that it has not given any license or authorization to the Respondent to use the IKEA trademark. The Complainant argues that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Instead, the Complainant claims that the Respondent chose the Domain Name to profit from the use of the Complainant’s famous trademark by using the Domain Name to refer to a website that offers delivery and installation of the Complainant’s and other companies’ goods and features the Complainant’s logo. The Complainant alleges that the Respondent’s website associated with the Domain Name contains no disclaimers disclosing the Respondent’s lack of a relationship with the Complainant.
The Complainant claims that the Respondent registered the Domain Name decades after the IKEA trademark was first registered to profit from the fame and widespread reputation of the Complainant’s IKEA trademark. The Complainant claims that it sent a cease and desist letter to the Respondent on October 28, 2015, which advised the Respondent that the unauthorized use of the IKEA trademark within the Domain Name was an infringement of the Complainant’s rights in the trademark. The Complainant alleges that it requested the Respondent to transfer the Domain Name to the Complainant voluntarily and offered to compensate the Respondent for her out of pocket registration and transfer expenses. The Complainant claims that it sent two additional cease and desist letters. The Complainant argues that the Respondent’s failure to respond to the cease and desist letters is relevant to finding bad faith registration and use. The Complainant further argues that the Respondent chose to register the Domain Name to intentionally attract for commercial gain Internet users to her website by creating likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of her website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the proceeding
Paragraph 11(a) of the Rules provides that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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.”
Because the language of the Registration Agreement for the Domain Name is Russian, the default language of the administrative proceeding would be Russian. However, the Complainant requested that the language of the proceeding be English for three reasons.
First, The Complainant claims that the Respondent understands English because the Respondent failed to respond to the Complainant’s cease and desist letters. Had the Respondent had trouble understanding the letters, she would have contacted the Complainant’s representative for clarification. Further, the Respondent’s inclusion of the English word “idea” into the Domain Name shows her ability to understand the English language.
Second, the Complainant argues that English should be the language of this proceeding because it is used globally and that the Respondent will not encounter any difficulties because of the use of the English language in this proceeding.
Finally, the Complainant argues that the spirit of paragraph 11 of the Rules is to ensure fairness to both parties taking into account expenses to be incurred, a possibility of delay in the proceeding in case of translations into Russian and how comfortable both parties are with each of the languages.
The Panel accepts the Complainant’s arguments. It is established practice to make a decision regarding the language of the proceeding that ensures fairness to the parties and maintains an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding. See, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593.
It is likely that the Respondent understands English because after receipt of the Complainant’s (English language) cease and desist letters, she removed the content of her “www.” website. Moreover, the Center advised the Respondent in both English and Russian about an opportunity to object to the Complainant’s request for English to be the language of the proceeding, but the Respondent failed to do so. Therefore, it will not be unfair to the Respondent for the Panel to conduct the proceeding in English. To require the Complainant to translate the Complaint into Russian will lead to an undue and unnecessary burden and delay resolution of the dispute. The Panel, therefore, determines English to be the proper language of this proceeding. 6.2. General discussion
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding the Complainant must prove each of the following elements with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)). A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the IKEA trademark as a result of its numerous trademark registrations.
The Domain Name consists of the IKEA trademark, the generic word “idea” and the gTLD suffix “.info”. The Panel finds that the Domain Name is confusingly similar to the Complainant’s IKEA trademark because it fully incorporates the IKEA trademark. The addition of the generic word “idea” to the IKEA trademark in the Domain Name is insufficient to avoid finding of confusing similarity. The gTLD suffix “.info” is to be generally disregarded under the confusing similarity test (as TLDs are a technical requirement of registration).
Thus, the Panel finds that the first element of the UDRP has been met. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the UDRP, the Respondent may establish that it has rights or legitimate interests in the Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s 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 it 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.
Once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name1 . Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.2
The Panel accepts that the Respondent is not a licensee nor is it associated with the Complainant in any way that could give rise to any license, permission or other right by which the Respondent could own or legitimately use the Complainant’s IKEA trademark. Given the notoriety of the Complainant’s IKEA trademark, any use which the Respondent would make of the Domain Name would likely violate the exclusive trademark rights which the Complainant has long held in its mark.
The Panel also accepts that the Respondent did not use the Domain Name in connection with a bona fide offering of goods or services. The evidence on file shows that the Respondent used the “www.” website to offer delivery and installation of the Complainant’s and other companies’ goods. The website also displayed the Complainant’s IKEA logo. Such use (i.e., unauthorized commercial use of the Complainant’s mark for the promotion of services related to its competitors’ products) does not qualify as bona fide offering of services or as noncommercial or fair use.
Further, the Respondent has not been commonly known by the Domain Name.
Finally, the current passive holding of the Domain Name does not give rise to any rights or legitimate interests.
Thus, the Panel finds that the second element of the UDRP has been met. C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.
The Panel accepts that at the time of registration the Respondent must have been aware of the Complainant’s well-known trademark and registered the Domain Name incorporating that trademark in bad faith for the following reasons. First, at the time of registration of the Domain Name on March 12, 2015, the distinctive IKEA trademark was one of the most well-known trademarks worldwide. Second, the evidence on file shows that the Domain Name used to direct to a website that offered express delivery of IKEA goods from an IKEA store in Smolensk as well as delivery of goods from other stores located in Smolensk. The evidence also shows that the “www.” website featured the IKEA logo. Therefore, it is inconceivable to the Panel that the Respondent could have coincidentally chosen the Domain Name without knowledge of the Complainant’s IKEA trademark.
This evidence shows that by using the Domain Name, the Respondent attempted to attract, for commercial gain, Internet users to its online location, by creating a likelihood of confusion with the Complainant. The Respondent’s use of the Domain Name to attract users to her website offering delivery services of goods from IKEA and other stores effectively amounts to trading off the Complainant’s rights without authority and therefore amounts to use in bad faith. The Respondent’s deletion of the content of her website, in response to the Complainant’s cease and desist letters, also indicates bad faith.
The Panel notes that currently the Domain Name does not direct to any website. The passive holding of a domain name has in certain circumstances been found to amount to bad faith (see e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). These circumstances include where the subject mark has a strong reputation and is widely known and where the respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name. Because the Respondent previously used the Domain Name to profit from the Complainant’s famous trademark, it is unlikely that there any chance of a plausible future bona fide use for the Domain Name.
Thus, the Panel finds that the third element of the UDRP has been met. 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.
Olga Zalomiy
Sole Panelist
Date: March 10, 2016
1 Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
2 Id.
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