The Complainant is Inter IKEA Systems B.V. of Delft, the Netherlands, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Justin Briggs of Swansea, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2018. On February 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 13, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 23, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 26, 2018.
The Center verified that the Complaint together with the amended 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 February 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2018.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on April 5, 2018. 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 a well-known franchisor of furniture and home furnishing products marketed under the trademark IKEA. As of today, there are 403 IKEA stores in 49 countries operating under IKEA franchise agreements, totaling around 194,000 employees. In 2017, the annual sales amounted to EUR 38.3 billion.
The Complainant owns more than 1,500 trademark registrations for the mark IKEA and its variants, in more than 80 countries, all registered in various classes, including 2, 8, 9, 11, 16, 18, 20, 21, 24, 25, 27-31, 35, 38, 39, 41-43 with an application date dating back to April 1, 1996 for the first ones (see, e.g., European Union trade mark number 109652, registered on October 1, 1998).
It also owns more than 300 domain names consisting in all or in part of the mark IKEA, including as primary domain name.
The IKEA mark has recently been listed by Best Global Brands 2016 as the 26th most valuable brand in the world, while Forbes has ranked it as number 41 of the World’s Most Valuable Brands of 2017.
On May 3, 2017, the Respondent registered the disputed domain name . The Respondent’s website was first copying the Complainant’s IKEA logo and featuring its blue and yellow color scheme. The Respondent further invited visitors to disclose their personal information by requesting them to participate in an exclusive survey in order to win 1,000 IKEA gift cards worth SEK 20,000. As of the time of the Complaint, the Respondent was using the disputed domain name to redirect users to websites featuring links to third-party websites, some of which directly compete with the Complainant’s business.
The Respondent did not respond to the several cease-and-desist letters sent respectively on June 26, July 3 and July 10, 2017 by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant first asserts that the disputed domain name is confusingly similar to its IKEA mark as it entirely incorporates the trademark. The addition of the non-distinctive numerical suffix “07” does not negate the confusing similarity between the disputed domain name and the Complainant’s IKEA trademark.
The Complainant then affirms that the Respondent has no rights or legitimate interests in the disputed domain name. It is not commonly known under that name and has never been licensed or authorized in any way by the Complainant to use the IKEA mark. The Respondent’s use of the disputed domain name in connection with a survey scam and phishing scheme does not constitute a bona fide offering of goods or services, nor does the use of the disputed domain name on a parked page comprising PPC links.
Finally, the Complainant considers the disputed domain name to have been registered and to be used in bad faith. Considering the fame of the IKEA trademark, the Respondent was aware of its existence when it registered the disputed domain name. The uses made of the disputed domain name as described above, which demonstrate an attempt of the Respondent to pass off the Complainant’s website as part of a phishing scheme, evidence that the disputed domain name was used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(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
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant holds numerous trademarks in jurisdictions throughout the world consisting of the term IKEA.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the disputed domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises,WIPO Case No. D2007-1629). Such happens to be the case here.
This is all the more true when the inserted trademark consists of the dominant part of the disputed domain name, and the added elements are merely descriptive.
Such happens to be the case. The applicable generic Top-Level Domain (“gTLD”) suffix, in the present case “.com”, is usually disregarded under the confusing similarity test and the addition of merely descriptive term does not avoid confusing similarity (see, among others: Playboy Entreprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768; Inter-IKEA Systems B.V. v. Evezon Co. Ltd,WIPO Case No. D2000-0437; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life,WIPO Case No. D2002-0363). The same holds true with regards to the addition of the non-distinctive numerical suffix “07”, as acknowledged by a Panel in a similar case (Inter IKEA Systems B.V. v. Privacy Protection,WIPO Case No. D2012-2456, where the Panel held: “The disputed domain name [] is a replica of the Complainant’s mark with the non-distinctive numerical suffix ‘37’. This is sufficient to satisfy the requirement that the disputed domain name is confusingly similar to a mark in which the Complainant has rights […]. Any added words, most obviously the suffix comprising the number ‘37’ is not sufficient to establish that the disputed domain name is not confusingly similar to the mark IKEA.”).
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied. B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, demonstrating that the Respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task.” Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion.” Following that decision, subsequent UDRP panels acknowledged that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, the burden of production shifts to the respondent to come forward with evidence to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the present case, the Complainant is the owner of numerous IKEA trademarks that enjoy a worldwide reputation and amount to well-known trademarks. The Complainant has no business or other relationship with the Respondent. The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
Absent any Response, considering the fame of the Complainant’s trademarks, a legitimate business is hardly conceivable. This is all the more obvious in the present case than the Respondent’s website was first copying the Complainant’s IKEA logo by featuring its blue and yellow color scheme, inviting visitors to disclose their personal information by requesting them to participate in an exclusive survey in order to win 1,000 IKEA gift cards worth SEK 20,000 to unduly collect their data (see The Coca-Cola Company v. Andrew Corr,WIPO Case No. D2012-0368). The further use made of the Respondent of the website to redirect users to websites featuring links to third-party websites, some of which directly compete with the Complainant’s business, is no more legitimate than the previous purposes (see section 2.9 of the WIPO Overview 3.0 (“panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.”).
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled. C. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith requires the respondent to be aware of the complainant’s trademarks. In the present case, the Complainant’s IKEA trademarks enjoy a worldwide reputation and amount to well-known trademarks as pointed out above.
Considering the worldwide reputation of the IKEA mark, there is no doubt that the Respondent was well aware of the Complainant’s trademarks when it registered the disputed domain name.
Furthermore, in this Panel’s view, it is inconceivable that the Respondent would have chosen for some legitimate purposes a domain name such as the disputed domain name and use it in good faith. The uses described above rather demonstrate the opposite.
Consequently, the Panel is of the opinion that the disputed domain name has been registered and is being used in bad faith under the paragraph 4(a)(iii) of 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 disputed domain name be transferred to the Complainant.
Philippe Gilliéron
Sole Panelist
Date: April 12, 2018
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