The Complainant is Inter Ikea Systems B.V., Netherlands, represented by Saba & Co. Intellectual Property, Lebanon.
The Respondent is Ahmed Omar, a2-hostweb, ahmed saad, Egypt. 2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2019. On April 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 26, 2019, 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 April 30, 2019 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 May 2, 2019.
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 May 2, 2019. The Respondent sent various emails to the Complainant on May 8 and 9, 2019. Accordingly, The Center sent a possible settlement email to the Parties on May 9, 2019. On May 13, 2019 the proceeding was suspended for settlement discussions. On July 16, 2019 the Complainant requested for the Reinstitution of Proceeding. The proceeding was reinstituted on July 17, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2019. On July 23, 2019, the Center notified the Parties that it would proceed to appoint the Panel.
The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on July 29, 2019. 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 Inter Ikea Systems B.V. is the owner of the trademark IKEA in connection with ready to assemble furniture and operates 422 stores in 80 countries through its franchisees.
The Complainant holds many trademark registrations around the world including among others in Saudi Arabia:
- National Saudi Registration No. 143203249 for the trademark IKEA & Device dated July 28, 2012 covering the goods in class 11,
- National Saudi Registration No. 1437009459 for the trademark IKEA dated June 01, 2016 covering goods in class 11,
- National Saudi Registration No. 140800312 for the trademark IKEA & Device dated May 9, 1988 covering services in class 35.
The Complainant registered more than 441 domain names under generic Top-Level Domains (“gTLDs”) and 294 domain names under country code Top-Level Domains (“ccTLDs”) containing the term “ikea”.
The Respondent, which is a physical person domiciled in Egypt, has registered the disputed domain name with the Registrar on December 10, 2017. The disputed domain name resolved to a website purporting to offer assemble and repair services for the Complainant’s products.
The Complainant sent two legal notices to the owner of the disputed domain name which remained unanswered.
At the time of the decision, disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s trademark IKEA and that the addition of the geographical term “riyadh” (capital of Saudi Arabia) reinforces the association between the disputed domain name and the Complainant’s trademark as Internet users will likely assume that the disputed domain name is used for the official IKEA website in Saudi Arabia.
The Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, mainly because the Complainant has neither licensed nor otherwise authorized the Respondent to use its marks or to apply for or use any domain name incorporating the trademark IKEA.
In addressing the question of registration and use of the disputed domain name in bad faith, the Complainant observes that the Respondent is well aware of the Complainant’s trademark considering that the Respondent is using the Complainant’s copyrighted photos showing its products, that the Respondent’s website clearly suggests that the website belongs to the Complainant or is an official affiliated dealer endorsed by the Complainant. In this regard, the Respondent has used privacy shield in order hide its identity.
The fact that the Respondent did not reply to the legal notices sent by the Complainant and that more importantly, the Respondent attempted to hide its identity upon legal notices sent by the Complainant is a clear indication of bad faith registration and use.
The Complainant claims that for the reasons mentioned above, the Respondent intentionally creates the impression that the products offered on the Respondent’s website are provided by the Complainant or at least an official dealer by misleading users on the source of the website and thereby attract, for commercial gain, Internet users to the website. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
However, the Respondent submitted informal communications on May 8 and 9, 2019, mentioning its willingness to solve the problem. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove, during the administrative proceedings, to merit a finding that the disputed domain name be transferred to the Complainant:
(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) the disputed domain name has been registered and is being used in bad faith.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide a Complaint 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. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. As indicated above, “Ikea” is the distinctive part of the Complainant’s trade name and the Complainant holds multiple registrations for IKEA in more than 80 countries around the world.
The disputed domain name integrates the Complainant’s IKEA trademark in its entirety and the geographical term “riyadh”.
Several UDRP panels have ruled that the mere addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) does not avoid a finding of confusing similarity between a disputed domain name and a complainant’s registered trademark (see, e.g., Société des Produits Nestlé S.A. v. MrT LLC,WIPO Case No. D2012-1356; Allianz SE v. Roy Lee / Traffic-D,WIPO Case No. D2012-1459; Swarovski Aktiengesellschaft v. mei xudong,WIPO Case No. D2013-0150; and Swarovski Aktiengesellschaft v. ,WIPO Case No. D2013-0335).
As regards the gTLD “.com”, it is typically disregarded under the confusing similarity test.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The onus is on the Complainant to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and it is then for the Respondent to rebut this case.
Although the Respondent did not reply to the Complainant’s contentions, this does not automatically result in a decision in favor of the Complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 and the cases cited therein.
However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Panel infers that the Respondent does not deny the facts asserted and contentions made by the Complainant. Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441. In its email communications of May 8 and 9, 2019, the Respondent mentioned its willingness to solve the problem.
A number of UDRP decisions have addressed the question of when a reseller’s use of a mark constitutes a bona fide offering of goods and services. The consensus view was articulated in Oki Data Americas, Inc. v. ASD, Inc., supra. See WIPO Overview 3.0 at section 2.8. In that case, the authorized reseller’s domain name incorporated the complainant’s OKIDATA trademark in full. The panel in Oki Data Americas, Inc. v. ASD, Inc., supra, concluded that for a respondent to demonstrate that a resale offering was bona fide, the following conditions must be met:
“- the respondent must actually be offering the goods or services at issue;
- the respondent must use the corresponding website to sell only the trademarked goods, otherwise there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods;
- the site itself must accurately disclose the respondent’s relationship with the trademark owner, i.e., respondent may not falsely suggest that it is the trademark owner, or that the website is the official site, if that is not the case; and
- the respondent must not try to “corner the market” in all relevant domain names, or deprive the trademark owner of reflecting its own mark in a domain name.”
In this case, it appears from the website that the Respondent has been operating its business to offer assemble and repair services for the Complainant’s products under the disputed domain name. However, it appears again from the website that the Respondent does not offer these services exclusively for the Complainant’s products.
Moreover, although the Respondent is not using the stylized version or the logo of the IKEA trademark, the Respondent website includes the photos of the Complainant’s copyrighted photo containing the Complainant’s products.
Lastly, there is no disclaimer as to the relationship with the Complainant. On the contrary, the Respondent tried to hide its identity on purpose.
It appears from the above facts that three out of four conditions determined by the Oki Data Americas, Inc v. ASD, Inc, decision have not been fulfilled in this case.
Moreover, the Panel finds that the disputed domain name carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.
For these reasons, the Panel concludes that the Respondent is not making use of the disputed domain name in connection with a bona fide offering of goods or services.
In the Panel’s view the Complainant has made out its prima facie case under this element of the Policy and the Respondent has failed to rebut it. Accordingly, the Complaint succeeds in relation to the second element of the Policy. C. Registered and Used in Bad Faith
Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
Considering the Panel’s finding under the second element, the Panel finds that the registration and use of the disputed domain name falls under the circumstances described under paragraph 4(b)(iv) of the Policy, namely, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by seeking to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The fact that the Respondent did not reply to the legal notices sent by the Complainant corroborates the fact that the Respondent registered and used the disputed domain name in bad faith. It is important to mention that the Respondent has apparently hidden its identity following to the legal notices sent by the Complainant.
In the view of the all above, there is no doubt that the Respondent knew the Complainant’s well-known trademark at the time of the registration and tried to take unlawful advantage from it through the use of the disputed domain name.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by the Complainant. 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.
Emre Kerim Yardimci
Sole Panelist
Date: August 19, 2019
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