The Complainant is Inter IKEA Systems BV (IISBV) of Amsterdam, the Netherlands, represented Saba & Co. IP, Lebanon.
The Respondent is Mohammadreza Mohammadian of Teharan, Islamic Republic 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 January 9, 2018. On January 9, 2018, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On January 10, 2018, 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 January 16, 2018.
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 January 17, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2018. On February 13, 2018 the Center notified the Respondent’s default.
The Center appointed David J.A. Cairns as the sole panelist in this matter on February 27, 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 Dutch company and the owner of the large franchising network called IKEA Retailers. It sells ready to assemble furniture and related products such as home appliances and accessories through its franchisees.
The Complainant is the registered owner of European Union trademark registrations No. 000109652 and No. 000705343 for the word mark IKEA (registration dates October 1, 1998, and May 4, 2006 respectively) in various classes. It is also the registered owner of an Iranian trademark for the word IKEA in Latin characters and in Persian characters inside a blue and yellow label device, registered on October 18, 2005 with registration number 125527, and the Iranian trademark for the word mark IRANIKEA, registered on October 29, 2005 with registration number 1314437.
The disputed domain name was registered on June 28, 2017. The annexes to the Complaint show that the disputed domain name previously resolved to a website offering the Complainant’s goods for sale. The Panel entered the disputed domain name in its web browser on March 5, 2018. The Panel found that the landing site contained notice that advised “Sorry, we’re doing some work on the site” and “thank you for being patient. We are doing some work on the site and will be back shortly.” 5. Parties’ Contentions A. Complainant
The Complainant states that it is the owner of more than 1,500 trademark registrations in more than 80 countries that consist of or contain IKEA. It also holds over 441 generic Top-Level Domains (“gTLDs”) and 294 country code Top-Level Domains (“ccTLDs”) worldwide, among which is , with 2.1 billion visits during 2016. The Complainant asserts that the IKEA retailers operate in 395 stores in 50 countries, and that it is one of the most well-known trademarks in the world. The Complainant cites the list of “Best Global Brands 2016” provided by Inter-brand in which IKEA ranks as number 26 of the best-known brands in the world, and also the list of “The World’s Most Reputable Companies” by the Reputation Institute in which the Complainant’s trademark is number 58.
The Complainant states that the disputed domain name is confusingly similar to the Complainant’s IKEA trademark. It states that the disputed domain name contains the IKEA trademark in its entirety with the addition of the generic word “market”. The Complainant states that the inclusion of a descriptive word in the disputed domain name is insufficient to avoid the confusing similarity with the Complainant’s IKEA trademark, and refers to previous Uniform Domain Name Dispute Resolution Policy (“UDRP”) cases in which panels have found that the inclusion of the word “market” is descriptive and does not dispel the confusing similarity between the domain name and the registered trademark.
The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that nothing in the Respondent’s WhoIs information or website demonstrates that the Respondent is commonly known by the disputed domain name. In addition, the Complainant argues that the word “Ikea” is an acronym and invented word with no meaning in any language. It avers that it has not authorized the Respondent to use the IKEA trademark. The Complainant states that by using the website without authorization to sell related products, and by displaying the IKEA trademark logo in Persian letters, the Respondent is creating a likelihood of confusion that leads the customers to believe that the website at the disputed domain name is related to the Complainant. The Complainant asserts that the Respondent’s action in this case amount to trademark infringement, cybersquatting and copyright infringement.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. It asserts that the Respondent offers IKEA products online through the website associated with the disputed domain name, and that the website contains the Complainant’s trademark logo in Persian, as well as photos of the Complainant’s products in order to attract Internet users for commercial gain, and mislead them about the business relationship with the Complainant and the source of the products sold. The Complainant asserts that the use of the photos constitutes copyright infringement.
The Complainant further alleges that the Respondent has included links on its website that direct the customers to documents on the Complainant’s website, creating further confusion as to the business relationship between the Complainant and the Respondent. Further, by allowing customers to create an account, shop and pay online on its website the Respondent is clearly using the Complainant’s trademark to attract Internet users for commercial gain. Finally the Respondent neither complied with nor responded to two cease-and-desist letters sent by the Complainant.
The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the irDRP requires the Complainant to prove all three of the following elements to be entitled to the relief sought:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered or is being used in bad faith (paragraph 4 of the irDRP).
The Panel is required to decide on the basis of the statements and documents submitted in accordance with the irDRP, the Rules and any rules and principles of law that it deems applicable (paragraph 15(a) of the Rules).
Paragraph 4(b) of the irDRP elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) of the irDRP sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name.
Given the similarities between the irDRP and UDRP, on which the irDRP is based, it is appropriate to refer to the UDRP jurisprudence, and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), in applying the irDRP. The overall purpose of the WIPO Overview 3.0 is to assist in predictability in domain name disputes, and predictability and coherence with identical or substantially similar provisions of the UDRP is important and should be promoted in the application of the irDRP. A. Identical or Confusingly Similar
The Panel accepts that the Complainant owns the trademark registrations for the IKEA trademarks referred to above.
Section 1.7 of the WIPO Overview 3.0 states that the test for identity or confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”. And it continues saying that “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
Section 1.8 of the WIPO Overview 3.0 states that “[w]here 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.”
In the present case, the disputed domain name is not identical to the IKEA trademark. The disputed domain name is composed of the Complainant’s mark IKEA and the word “market”.
The Panel considers that on a side-by-side comparison, the disputed domain name is confusingly similar to the IKEA trademark for the following reasons: (i) the disputed domain name contains the Complainant’s IKEA trademark in its entirety; (ii) the word IKEA is an invented word and is the first and dominant word of the disputed domain name; and (iii) the use of the word “market” does not avoid the confusion of the disputed domain name with the Complainant’s IKEA trademark, but rather enhances it by suggesting a place of exchange or market for IKEA products. and (iv) the Complainant’s IKEA trademark is famous and widely used, including for on-line retail business, and has enormous goodwill and recognition by consumers.
For these reasons, the Panel considers that the disputed domain name is confusingly similar to the Complainant’s IKEA trademark. B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent has any contractual or proprietary rights in any registered trademark corresponding to the disputed domain name; (ii) the Respondent is not authorized or licensed by the Complainant to use the IKEA trademark or to register and use the disputed domain name; and (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name.
Paragraph 4(c) of the irDRP refers to three circumstances, any of which is sufficient to evidence that the Respondent has rights or legitimate interests in the disputed domain name. Paragraph 4(c)(1) refers to the use of the disputed domain name in relation to a bona fide offering of goods or services. The evidence demonstrates that the Respondent used the disputed domain name in connection with a website offering for sale the Complainant’s goods. There is no evidence that the Respondent is offering for sale the products of any third party at the website hosted at the disputed domain name. The evidence therefore indicates that the Respondent is acting as an unauthorized reseller of the Complainant’s products. Section 2.8.1 and 2.8.2 of the WIPO Overview 3.0 summarizes the potential rights and legitimate interests of unauthorized resellers as follows:
“2.8.1 Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.
The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.
2.8.2 Cases applying the Oki Data test usually involve a domain name comprising a trademark plus a descriptive term (e.g., ‘parts’, ‘repairs’, or ‘location’), whether at the second-level or the top-level. At the same time, the risk of misrepresentation has led panels to find that a respondent lacks rights or legitimate interests in cases involving a domain name identical to the complainant’s trademark.”
In the application of the Oki Data principles to the current case, it appears that that the Respondent is selling only genuine IKEA products, so that the first two requirements are satisfied. As to the second requirement, there is no evidence in the record or on the website that the Respondent is offering for sale products of other manufacturers or of competitors of the Complainant. However, the Respondent fails the third requirement. There is no evidence of the Respondent disclosing its relationship with IKEA amongst the screenshots of the Respondent’s website submitted in evidence by the Complainant. Further, the Respondent’s prominent use of the Complainant’s IKEA trademarks, the use of the Complainant’s photographs of its products, and the use of links to documentation on the Complainant’s own website, without any disclaimer as to the real relationship, is likely to lead Internet users to conclude that the trademark owner has approved the Respondent’s sales of its products, and is probably exercising some form of supervision over the Respondent’s sales. For these reasons, the Panel concludes that the Respondent offering of goods or services on its website is not bona fide.
For the above reasons, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered or Used in Bad Faith
Paragraph 4(a)(iii) of the irDRP requires that a disputed domain name was registered in bad faith or that it is being used in bad faith. Paragraph 4(b) of the irDRP sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith.
The Respondent’s use of the disputed domain name in the present case falls within paragraph 4(b)(iv) of the irDRP: by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website 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 website or location or of a product or service on the website or location.
The Respondent uses the website for commercial gain by offering for sale the Complainant’s products. The likelihood of confusion is established by the confusing similarity between the Complainant’s IKEA trademark and the disputed domain name. Internet users are likely to assume that this website is affiliated to or endorsed by the Complainant because: (i) the website prominently displays the Complainant’s IKEA trademark and devices in a manner that, in the absence of any disclaimer, conveys the impression of affiliation to or endorsement by the trademark owner; (ii) the use of a design for the website that is very similar on a visual comparison to the Complainant’s website, including the display of the same photos that are on the Complainant’s own website; and (iii) the website includes links that redirect Internet users from the Respondent’s website to the Complainant’s website.
The Respondent knew of the Complainant’s famous trademark at the time of registration and intentionally set out to exploit the Complainant’s goodwill for commercial gain.
For these reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith by the Respondent. 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.
David J.A. Cairns
Sole Panelist
Date: March 14, 2018
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