The Complainant is Inter IKEA Systems BV (IISBV), Netherlands, represented by Saba & Co. Intellectual Property s.a.l. (Offshore) Head Office, Lebanon.
The Respondent is Ali Esmaeilnejad, Hungary. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2020. On January 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 25, 2020, 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 February 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 25, 2020. On February 26, 2020, the Center received an informal email communication from the Respondent. The Center appointed Lynda M. Braun as the sole panelist in this matter on March 9, 2020. 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 the 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 appliances and accessories for the home. The franchising network comprises the world’s largest furniture retail chain. The IKEA Retailers operate 422 stores in fifty countries worldwide. The Complainant owns over 1,500 trademark registrations for IKEA and IKEA variants (such as International Trademark Registration No. 926155 for IKEA, registered April 24, 2007, designating multiple jurisdictions; and Trade Mark Registration No. 131437 for IRAN IKEA, registered May 1, 2006) in more than eighty countries around the world, covering goods and services related to its business (collectively, hereinafter the “IKEA Mark”). In addition, the Complainant owns over 441 domain names under generic Top-Level Domains (“gTLDs”) and 294 domain names under country code Top-Level Domains (“ccTLDs”) worldwide, which incorporate in their entirety the IKEA Mark. The Complainant’s office website is “www.ikea.com”. In 2018, there were 2.5 billion visits to the website. The Disputed Domain Name was registered on February 18, 2019. The Disputed Domain Name resolved to a website created by the Respondent, which offered IKEA products for sale online in Iran as well as through its store operating in Tehran, presumably in the northern neighborhood of Tehran called “Pasdaran”. The Complainant submitted a screenshot as an annex to the Complaint that showed that the Respondent was selling IKEA-branded products in its brick and mortar store. Further, without permission, the Respondent used the IKEA Mark as well as photos from the Complainant’s official website on the website to which the Disputed Domain Name resolved. The Respondent also operated an Instagram page entitled “ikeapasdaran” to promote its Tehran store, on which it posted official photos of IKEA-branded products. On September 16, 2019, the Complainant sent a cease and desist letter to the Respondent, requesting that the Respondent transfer the Disputed Domain Name to the Complainant. The Respondent never responded to that letter. 5. Parties’ Contentions A. Complainant The following are the Complainant’s contentions: - the Disputed Domain Name is confusingly similar to the Complainant’s trademark. - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. - the Disputed Domain Name was registered and is being used in bad faith. The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding: (i) The Disputed Domain Name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights; and (ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the IKEA Mark. It is uncontroverted that the Complainant has established rights in the IKEA Mark based on its many years of use as well as its over 1,000 registered trademarks for the IKEA Mark in jurisdictions worldwide. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the IKEA Mark. The Disputed Domain Name consists of the entirety of the IKEA Mark along with the term “pasdaran”, followed by the gTLD “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of other terms. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.1 Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182. Thus, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s IKEA Mark. Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its IKEA Mark. Nor does the Complainant have any type of business relationship with the Respondent. Based on the use made of the Disputed Domain Name to create a website and Instagram account with misappropriated images from the official IKEA website, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, the Respondent had used the IKEA Mark in the Disputed Domain Name to promote its website for illegitimate commercial gain. Specifically, the Respondent intentionally attempted to create a likelihood of confusion by using the Disputed Domain Name containing the IKEA Mark as well as using images from the Complainant’s official website on the website to which the Disputed Domain Name resolved. Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith The Panel finds that, based on the record, the Complainant has demonstrated the Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(b) of the Policy. First, the Respondent registered and used the Disputed Domain Name in bad faith by creating the false impression that the Complainant owned or was affiliated with the Disputed Domain Name. The Respondent accomplished this by using misappropriated images from the Complainant’s official website on the Respondent’s website to which the Disputed Domain Name resolved. Further, the Respondent offered for sale IKEA-branded goods on the website and in the brick and mortar store located in Pasadaran, the neighborhood in northern Tehran. Second, the Respondent knew or should have known of the Complainant’s rights in its IKEA Mark when registering the Disputed Domain Name. The Respondent registered the Disputed Domain Name years after the Complainant first used and obtained its trademark registrations for the IKEA Mark. Based on the use of the IKEA Mark the Complainant’s numerous registered trademarks, and the fame of the Complainant’s brand, it strains credulity to believe that the Respondent had not known of the Complainant or its IKEA Mark when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763 (“a finding of bad faith may be made where the respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name”). In sum, the Panel finds it likely that the Respondent had the Complainant’s IKEA Mark in mind when registering the Disputed Domain Name. Finally, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be suggestive of opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and is using the Disputed Domain Name in bad faith to target the Complainant’s IKEA Mark for commercial gain. Accordingly, the third element of paragraph 4(a) of the Policy has 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 Lynda M. Braun 1 The term “pasdaran” is the name of a neighborhood in northern Tehran, in which the Respondent operates a brick and mortar store and offers IKEA products.
Sole Panelist
Date: March 23, 2020
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