The Complainant is Inter IKEA Systems BV (IISBV) of Amsterdam, the Netherlands represented by Saba & Co. Intellectual Property s.a.l. Head Office, Beirut-Lebanon.
The Respondent is Hossien Abedi of Hong Kong, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with OnlineNic, Inc. d/b/a China-C (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 8, 2016. On December 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 9, 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.
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 of the Complaint, and the proceedings commenced on December 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2017. The Respondent did not submit a formal response, but sent informal communications on December 13, 2016 and January 3, 2017.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on January 11, 2017. 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 is owner of the IKEA Concept and the IKEA Retail System, which is franchised to IKEA retailers worldwide. The Complainant is a Dutch company whose franchisees sell ready-to-assemble furniture and related products such as beds and desks, appliances and home accessories. The IKEA retailers operate 361 stores in 45 countries and collectively make up one of the world's largest networks of furniture retailers.
The Complainant's trademarks and brand name IKEA are one of the most well-known trademarks.
The Complainant owns over 1,500 trademark registrations for IKEA and IKEA variants in more than 80 countries around the world, including the Islamic Republic of Iran, covering goods and services related to its business. The Complainant has evidenced its possession of the following trademark registrations in Iran:
- Iranian trademark IRANIKEA number 131437 registered on January 5, 2006;
- Iranian trademark IKEA & Device in Latin characters number 125527 registered on October 18, 2005,
- Iranian trademark IKEA & Device in Farsi characters number 125525 registered on October 18, 2005.
The Respondent registered the disputed domain names and on March 30, 2016. The disputed domain names resolve to websites offering the Complainant's products for sale. 5. Parties' Contentions A. Complainant
The Complainant contends the following:
a) the disputed domain names are confusingly similar to the trademark of the Complainant because:
- they reproduce the Complainant's trademark in its entirety;
- the addition of a generic term such as "ih" and the generic Top-Level Domain ("gTLD") ".com" and ".co" are insufficient to distinguish them from the mark.
b) The Respondent has no rights or legitimate interests in respect of the disputed domain names because:
- the Respondent is not commonly by the disputed domain names;
- IKEA is an invented mark without any meaning in any language other than the trademark owned by the Complaint;
- the Complainant has not authorized the Respondent to use the disputed domain names.
c) The disputed domain names were registered and are being used in bad faith because:
- the Respondent after the registration of the disputed domain names started offering IKEA products for sale online in the Islamic Republic of Iran using also images and photos taken form the official IKEA website;
- the Complainant tried to settle the matter amicably sending a cease-and-desist letter to the Respondent without receiving any answer. B. Respondent
The Respondent did not formally reply to the Complainant's contentions. However, he submitted two informal communications, acknowledging receipt and a willingness to cooperate with the Complainant. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant is owner of several trademark registrations for IKEA all over the world and also in the Islamic Republic of Iran where the websites related to the disputed domain names seem to target Internet users.
The disputed domain names and incorporate IKEA, which constitutes the Complainant's trademark and company name.
The Panel finds that the combination of the Complainant's trademark with the letters "ih" does not render the disputed domain names dissimilar to the trademark of the Complainant.
There are several UDRP decisions stating that confusing similarity, for the purposes of the Policy, is established when a domain name wholly incorporates a complainant's mark even if it is added to another term. In particular, there are UDRP decisions stating that the incorporation of the trademark and a generic word in a domain name is misleading and confusingly similar to the trademark owned by the complainant (LEGO Juris A/S v. Devin Steenberg,WIPO Case No. D2015-0394; QVC Inc. and ER Marks Inc. v. WhoisGuard,WIPO Case No. D2007-1872).
Additionally, the Panel does not typically consider, when analyzing the identity or similarity, the gTLD suffixes – in this case ".com" and ".co" – because they are a necessary component of the disputed domain names and do not create any distinctiveness from the Complainant's trademark (see, Crédit Industriel et Commercial S.A v. Name Privacy,WIPO Case No. D2005-0457).
Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
The Respondent has not filed any response in this case. There is prima facie indication in the evidence provided by the Complainant to the Panel that there are no rights or legitimate interests on the part of the Respondent in the disputed domain names.
The Respondent has not received any license or authorization from the Complainant to register and use the disputed domain names or use the Complainant's trademarks and copyrighted images on the resolving websites. Noting in particular the resemblance of the Respondent's websites to the Complainant's official website, and the apparent intention to misrepresent to Internet users that the websites are endorsed or affiliated with the Complainant, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
The Respondent must have been aware of the existence of the Complainant's trademarks. It is not plausible that someone who was not familiar with the Complainant's marks would have registered the disputed domain names.
The Panel is of the opinion that the Respondent registered the disputed domain names with the intent to profit from the reputation of the famous trademark of the Complainant by choosing domain names that are confusingly similar to the Complainant's mark.
The disputed domain names have exploited the Complainant's trademark by offering IKEA products for sale in the Islamic Republic of Iran without the Complainant's authorization or disclosing that it is neither operated nor endorsed by the Complainant, which might be believed by Internet users, especially considering the resemblance of the Respondent's website to the Complainant's official website.
Taken together with the fact that the Respondent has not filed any response containing substantial arguments in this proceeding in support of any good faith registration or use, the Panel believes that the Complainant has demonstrated that the disputed domain names have been registered and are being used in 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 names and be transferred to the Complainant.
Nicoletta Colombo
Sole Panelist
Date: January 28, 2017
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