The Complainant is Inter IKEA Systems BV (IISBV) of Amsterdam, Netherlands, represented by Saba & Co. Intellectual Property s.a.l., Lebanon.
The Respondent is Hassan Abedi of Bandar Kangan, Islamic Repulic of Iran. 2. The Domain Name and Registrar
The disputed domain name is registered with IRNIC. 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 IRNIC a request for registrar verification in connection with the disputed domain name. On December 11, 2016, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on December 12, 2016.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the "Policy" or "irDRP"), the Rules for .ir Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 19, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2017. On January 9, 2017, the Center notified the Respondent's default.
The Center appointed Edoardo Fano as the sole panelist in this matter on January 19, 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.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), "to employ reasonably available means calculated to achieve actual notice to Respondent". Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules. 4. Factual Background
The Complainant is Inter IKEA Systems BV, a Dutch company owning the IKEA Concept and IKEA Retail System which is franchised to IKEA retailers worldwide.
The Complainant owns over 1,500 registrations for the trademark IKEA in more than 80 countries, including the Islamic Republic of Iran, the country of the Respondent:
- Iranian Trademark Registration No. 131437 IRANIKEA, registered on January 5, 2006;
- Iranian Trademark Registration No. 125527 IKEA and device, registered on October 18, 2005;
- Iranian Trademark Registration No. 125525 IKEA and device (in Persian characters), registered on October 18, 2005.
The Complainant provided evidence in support of the above.
The disputed domain name was registered on March 30, 2016. At the time of filing the Complaint, the website at the disputed domain name was offering IKEA products for sale and showing pictures of the Complainant's trademark and advertising material.
On October 27, 2016 the Complainant sent a warning letter by mail to the Respondent and received no reply from the Respondent. 5. Parties' Contentions A. Complainant
The Complainant states that the disputed domain name is confusingly similar to its trademark IKEA, as the letters "ih" are not sufficient to differentiate the disputed domain name from the Complainant's trademark.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, nor is the Respondent commonly known by the disputed domain name.
The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant's trademark IKEA is distinctive and well known all around the world. Therefore, the Respondent had knowledge of the Complainant's trademark at the time of registration of the disputed domain name.
The Complainant submits that the Respondent is using the disputed domain name in bad faith since on the relevant website pictures of the Complainant's trademark and advertising taken from the Complainant's website are displayed and the Complainant's products are offered for sale, creating a likelihood of confusion among the consumers. B. Respondent
The Respondent has made no reply to the Complainant's contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN,WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al.,WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A.,WIPO Case No. D2007-0288)1; Fortinet, Inc. v. Pouyesh Afzar Houshmand Eng. Co.,WIPO Case No. DIR2007-0003. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark 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 has been registered or is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademark IKEA both by registration and acquired reputation and that the disputed domain name is confusingly similar to the trademark IKEA, as the addition of the letters "ih" is not sufficient to distinguish the disputed domain name from the Complainant's trademark.
It is also well accepted that a country code Top-Level Domain ("ccTLD") suffix, in this case ".ir", may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. V,WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant's trademark, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Respondent has failed to file a response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name, and the Panel is unable to establish any such interests on the basis of the evidence in front of it.
Should the products sold on the website to which the disputed domain name resolves be genuine products, legitimately acquired by the Respondent, the question that would arise is whether the Respondent would therefore have a legitimate interest in using a domain name that is confusingly similar to the Complainant's trademark in circumstances that are likely to give rise to initial interest confusion.
According to the UDRP panel decisions in relation to the issue of resellers, as summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.3:
"A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant's relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark."
This summary is mainly based on the UDRP decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
On the other hand, should the products offered for sale on the website to which the disputed domain name resolves be counterfeit products, that would be clear evidence that the Respondent does not have rights or legitimate interests in the disputed domain name.
Nevertheless, even if the products sold by the Respondent were the Complainant's genuine products, from viewing the Respondent's website pages enclosed in the Complaint, the Panel finds that the use of the Complainant's trademark and device in all the webpages, the lack of any disclaimer and the use of the Complainant's advertising material would falsely suggest to the Internet users, under the Oki Data principles (see above), that the website to which the disputed domain name resolves is owned by the Complainant or at least affiliated to the Complainant.
The Panel therefore concludes that the disputed domain name is not being used in connection with a bona fide offering of goods or services.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered or Used in Bad Faith
Paragraph 4(b) of the Policy provides that "for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] web site or location."
As regards to the registration in bad faith of the disputed domain name, the existence of the Complainant's famous trademark IKEA was certainly known by the Respondent since the content of the website to which the disputed domain name resolves consists of advertising for the sale of various purported Complainant's products, with the reproduction of pictures of the Complainant's trademark and advertising taken from the Complainant's official website.
The Panel further notes that the disputed domain name is also being used in bad faith since the Respondent is trying to attract Internet users to its website by creating likelihood of confusion with the Complainant's trademark IKEA in order to sell products bearing the Complainant's trademark IKEA, an activity clearly detrimental to the Complainant's business.
The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order both to disrupt the Complainant's business, in accordance with paragraph 4(b)(iii) of the Policy, and to attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy.
Moreover, the lack of the Respondent's reply to the Complainant's warning letter sent by mail is a further evidence of the Respondent's bad faith.
The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied. 7. Decision
For all 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.
Edoardo Fano
Sole Panelist
Date: February 1, 2017
1 In light of the substantive and procedural similarities between the irDRP and the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the Panel has cited authorities decided under the UDRP where appropriate.
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