Complainant is Inter IKEA Systems BV (IISBV), Netherlands, represented by Saba & Co. IP, Lebanon.
Respondent is Mazen Nahawi, News Group International, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2020. On July 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a request for amendment sent by the Center, Complainant filed an amended Complaint on July 17, 2020. 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 Respondent of the Complaint, and the proceedings commenced on July 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 6, 2020. The Center received two email communications on July 17, 2020, from Mr. Awas Louis. The Center notified the Commencement of Panel Appointment Process on August 7, 2020. The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on August 13, 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 Complainant has been using the IKEA trademark (“Complainant’s Mark”) in connection with ready-to-assemble furniture and related products such as beds and desks, appliances, and home accessories since at least 1970. Complainant’s retailers operate 361 stores in 45 countries and collectively make up one of the world’s largest network of furniture retailers. Complainant received over 821 million visitors in its franchised retailed stores between September 1, 2013, and August 31, 2014. In 2017, Complainant’s Mark was ranked 26th of the 100 best brands according to “Best Global Brands”. Complainant also owns over 700 domain names that incorporate its IKEA mark. Complainant’s primary website, located at the Complainant owns various national and international registrations for its IKEA trademark, including German registration number DE867152 (registered on March 12, 1970), Egyptian registration number 233786 (registered on January 17, 2011), and International Registration number 926155 (registered on April 24, 2007, designating 29 countries). The disputed domain name Complainant alleges that the disputed domain name is confusingly similar to Complainant’s IKEA mark because it reproduces identically and entirely the IKEA mark, with the addition of the geographical term “egypt”. Complainant asserts that the inclusion of this geographical term does nothing to dispel the confusing similarity between the disputed domain name and its IKEA mark. Complainant further posits that Respondent has no rights or legitimate interests in the disputed domain name. Complainant alleges that Respondent is not commonly known by the disputed domain name, is not associated or affiliated to Complainant in any way and was never licensed or authorized to use Complainant’s IKEA Mark. Therefore, according to Complainant, Respondent cannot claim to be making any legitimate noncommercial or fair use of the disputed domain name because it fully incorporates Complainant’s Mark, implying an association with Complainant that does not exist. Lastly, Complainant argues that paragraph 4(iii) of the Policy only requires a showing that the disputed domain name was registered or used in bad faith. Complainant here is alleging that the disputed domain name was registered in bad faith given that Respondent must have had constructive or actual knowledge of Complainant’s rights in the IKEA mark given its worldwide notoriety, and the complete incorporation of the IKEA mark in the disputed domain name. B. Respondent Mr. Awas Louis, on behalf of Respondent, addressed some of Complainant’s contentions through an electronic correspondence it sent on July 17, 2020. He claimed, among other less salient claims, that it is the “official IKEA brand online content technical managers to the Middle East” and that he has had an official agreement to “cover and manage” Complainant’s IKEA brand for the past 15 years. He submitted no evidence in support of these claims. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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 Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. Complainant has provided evidence that it has rights in the IKEA mark through its various trademark registrations cited above. With Complainant’s rights in the IKEA mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s IKEA mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. 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 a descriptive word or suffix. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795. As stated in section 1.8 of the 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”. See Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923. Here, Complainant’s IKEA mark is fully incorporated in the disputed domain name, and the addition of the geographical term “egypt” does not prevent a finding of confusing similarity. See Merck KgaA v. Registrant [3644982]: Chen Yan Hua,WIPO Case No. D2011-1010. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to Complainant’s IKEA mark. B. Rights or Legitimate Interests Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of production of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or legitimate interests in the domain name: (i) before any notice 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 (as an individual, business or other organization) 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. As expressed in previous UDRP decisions, non-exhaustive examples of prior use, or demonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services may include: (i) evidence of business formation-related due diligence/legal advice/correspondence, (ii) evidence of credible investment in website development or promotional materials such as advertising, letterhead, or business cards (iii) proof of a genuine (i.e., not pretextual) business plan utilizing the domain name, and credible signs of pursuit of the business plan, (iv) bona fide registration and use of related domain names, and (v) other evidence generally pointing to a lack of indicia of cybersquatting intent. While such indicia are assessed pragmatically in light of the case circumstances, clear contemporaneous evidence of bona fide pre-complaint preparations is required. WIPO Overview 3.0, section 2.2. If not independently verifiable by the panel, claimed examples of use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services cannot be merely self-serving but should be inherently credible and supported by relevant pre-complaint evidence. Id. Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Mr. Awas Louis has asserted that Respondent has an agreement with Complainant to manage its IKEA brand online in the Middle East. However, it submitted no evidence of any such agreement nor any other evidence showing that it was otherwise authorized, licensed or permitted to use the IKEA mark in any way. Respondent’s merely self-serving allegation that it is authorized to use Complainant’s Mark is not enough to establish that it has legitimate rights or interests in the disputed domain name. Furthermore, there is no evidence that Respondent is using the disputed domain name in connection with any bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the disputed domain name because it does not resolve to an active website. Facebook, Inc. v. Mirza Azim, WIPO Case No. D2016-0950, citing KOC Holding A.S. v. VistaPrint Technologies Ltd, Domain Administrator, VistaPrint,WIPO Case No. D2015-1910; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320. Lastly, there is no evidence on record suggesting that Respondent is commonly known by disputed domain name. Therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain name within the meaning of Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith From the inception of the UDRP, panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. Id. It is necessary for a complainant to show that the disputed domain name was both registered and used in bad faith. In fact, the UDRP proceeding Complainant cites in support of its argument, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, explicitly states that: “[…] [I]t is clear that ICANN intended that bad faith registration alone not give rise to a remedy under the Uniform Policy. For a remedy to be available, the Complainant must prove both that the domain was registered in bad faith and that it is being used in bad faith. This interpretation is confirmed, and clarified, by the use of both the past and present tenses in paragraph 4 (a)(iii) of the Uniform Policy. The use of both tenses draws attention to the fact that, in determining whether there is bad faith on the part of the Respondent, consideration must be given to the circumstances applying both at the time of registration and thereafter. So understood, it can be seen that the requirement in paragraph 4(a)(iii) that the domain name ‘has been registered and is being used in bad faith’ will be satisfied only if the Complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith.” (emphasis added) The Panel notes that Complainant has clearly demonstrated bad faith registration but Complainant’s contention regarding bad faith use were not clearly established. Nonetheless, in this case, Complainant has still sustained its burden of demonstrating bad faith registration and use of the disputed domain name. Complainant provided ample evidence to show the widespread use and numerous registrations IKEA mark that long predate Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of the IKEA trademark when it registered the disputed domain name, or knew or should have known that it was identical or confusingly similar to Complainant’s Mark. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Moreover, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4, see also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Here, the disputed domain name completely incorporates the IKEA mark and merely adds the geographical term “egypt”, meaning that bad faith registration of the disputed domain name can be presumed. Indeed, the Response to the Complaint clearly supports the assertion that Respondent was well aware of the IKEA brand when the disputed domain name was registered. Furthermore, the passive holding doctrine applies in this case given the distinctiveness and notoriety of Complainant’s Mark, Respondent’s failure to come forward with any evidence of the purported good faith registration and use of the disputed domain name, and the implausibility of Respondent’s claim of a possible good faith use without any substantiating evidence of same. The Panel finds it likely that Respondent selected the disputed domain name with the intention of taking advantage of Complainant’s reputation by registering a domain name fully containing Complainant’s Mark with the intent of ultimately using it for illegitimate purposes, such attracting Internet users for Respondent’s commercial gain. See e.g., Koc Holding A.S. VistaPrint Technologies Ltd.,WIPO Case No. D2015-0886; Madonna Ciccone, p/k/a Madonna v. Dan Parisi / “Madonna.com”,WIPO Case No. D2000-0847). For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name was in bad faith within the meaning 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, Brian J. Winterfeldt
Sole Panelist
Date: August 27, 2020
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