The Complainant is Inter IKEA Systems BV (IISBV) of Amsterdam, Netherlands, represented Saba & Co. IP, Lebanon.
The Respondent is Reza Sardashty, webdesign of Tehran, Islamic Republic of Iran. 2. The Domain Name and Registrar
The disputed domain name (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 October 16, 2018. On October 16, 2018, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Disputed Domain Name. On October 17, 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.
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 October 29, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2018. On November 22, 2018, the Center notified the Respondent’s default.
The Center appointed Nicholas Weston as the sole panelist in this matter on December 10, 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 the Dutch incorporated owner of a multinational franchising business that sells ready-to-assemble home furnishing products through approximately 400 franchisee stores in almost 50 countries. The Complainant holds registrations for the trademarks IKEA and IRANIKEA in the Islamic Republic of Iran (“Iran and the mark IKEA and variants in many other countries which it uses to designate these goods. Its trademarks in the Islamic Republic of Iran include: IRANIKEA number 131437 dated May 1, 2006; in classes 11, 17, and 20; IKEA & Device in Latin characters number 125527 dated October 18, 2005; in classes 11, 17, and 20; and IKEA & Device in Persian characters number 125525 dated October 18, 2005.
The Complainant owns the generic Top-Level Domain (“gTLD”) .
The Respondent registered the Disputed Domain Name on April 29, 2018. The Disputed Domain Name resolves to a website that displays IKEA trademarks. 5. Parties’ Contentions A. Complainant
The Complainant cites its trademark registrations in the Islamic Republic of Iran Nos. 131437 and 125527 and 125525 for the marks IRANIKEA. IKEA & Device in Latin characters and IKEA & Device in Persian characters the latter two registrations accompanied by the “blue lettering on a yellow oval in a blue rectangle” device as prima facie evidence of ownership.
The Complainant submits that the mark IKEA is well-known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name . It submits that the Disputed Domain Name is confusingly similar to its trademarks, because the Disputed Domain Name incorporates in its entirety the IKEA trademark and that confusing similarity is not removed by the addition of the letter “a” and Iran’s country code Top-Level Domain (“ccTLD”), “.ir”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is an invented name owned by the Complainant being used by the Respondent without a license or authority.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the fame and long standing prior use of the Complainant’s trademarks and in view of the Respondent’s use of the IKEA mark on its home page, in addition to photos of an IKEA shop and IKEA products in order to attract Internet users for commercial gain. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the irDRP, a complainant has the burden of proving the following:
(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. A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark IKEA in the Islamic Republic of Iran and many other countries. 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. The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358).1
Turning to whether the Disputed Domain Name is identical or confusingly similar to the IKEA trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark IKEA followed by (b) the addition of the letter “a”; and (c) followed by Iran’s ccTLD”, “.ir”.
It is well established that the ccTLD, in this case “.ir”, used as part of the domain name may be disregarded in the determination of confusing similarity (see BT Financial Group Pty Limited v. Basketball Times Pty Ltd,WIPO Case No. DAU2004-0001, VAT Holding AG v. V,WIPO Case No. D2000-0607, Inter IKEA Systems BV (IISBV) v. Hassan Abedi,WIPO Case No. DIR2016-0040). The relevant comparison to be made is with the second level portion of the Disputed Domain Name: “ikeaa”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a word or, in this case, the letter “a”: (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Wal Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033).
This Panel finds that the additional element, including the letter “a”, after the Complainant’s registered trademark does not serve to adequately distinguish the Disputed Domain Name which therefore remains confusingly similar to the registered trademark: (see Inter IKEA Systems BV (IISBV) v. Hassan Abedi,WIPO Case No. DIR2016-0040; Inter IKEA Systems BV (IISBV) v. Abolfazl Hosseini Zeydabadi, WIPO Case No. DIR2016-0008; Inter IKEA Systems BV (IISBV) v. Ali Armon,WIPO Case No. DIR2017-0018).
The Panel observes that, but for the additional letter “a” which adds no distinguishing feature the Disputed Domain Name is identical to the IKEA trademark and finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists ways that a respondent may demonstrate rights or legitimate interests in a disputed domain name. The Policy also places the burden on the complainant to establish the absence of the respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it has not granted any license, authorization or consent to the Respondent to use the trademark IKEA and there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and services, noting that it resolves to a website displaying multiple trademarks owned by the Complainant.
In this Panel’s view, the Respondent does not satisfy the criteria set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, and none of the criteria in paragraph 4(c) of the Policy. The Panel accepts that the Complainant has not licensed or otherwise permitted the Respondent to use any of the Complainant’s trademarks nor to apply for or use any domain name incorporating these marks. In these circumstances, the Complainant has made out a prima facie case.
This Panel finds that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and, in the absence of a response by the Respondent, the Panel finds for the Complainant on paragraph 4(a)(ii) of the Policy. C. Registered or Used in Bad Faith
The third element of the Policy that a complainant must also demonstrate is that the disputed domain name has been registered or used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
The evidence that the Respondent registered and has used the Disputed Domain Name in bad faith is overwhelming. The trademark IKEA is so famous a mark for ready-to-assemble home furnishing products that it would be inconceivable that the Respondent might have registered the Disputed Domain Name without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Inter IKEA Systems BV (IISBV) v. Hassan Abedi,WIPO Case No. DIR2016-0040 (“the Complainant’s famous trademark IKEA”); Inter IKEA Systems BV (IISBV) v. Abolfazl Hosseini Zeydabadi,WIPO Case No. DIR2016-0008 (“the trademark IKEA is one of the most well-known trademarks in the world for furniture and household items”); Inter IKEA Systems BV (IISBV) v. Mohammadreza Mohammadian,WIPO Case No. DIR2018-0003 (“the Complainant’s famous trademark”)).
Further, a gap of 10 years between the registration of a complainant’s trademarks and a respondent’s registration of a disputed domain name (containing the trademark) can indicate bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name more than 12 years after the Complainant established trademark rights in the IKEA mark in the Islamic Republic of Iran.
The consensus view in section 3.2 of WIPO Overview 3.0 is that UDRP panels may draw inferences about whether a domain name was used in bad faith given the circumstances surrounding registration.
In this case, no response to the Complaint has been filed, the Respondent knew or should have known about the Complainant’s well-known trademark when he made identical use of that mark in the Disputed Domain Name, and it resolves to a website deceptively displaying the Complainant’s trademarks. In the absence of a response, this Panel regards such conduct as prima facie evidence of bad faith registration and use under the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Date: December 18, 2018
1 The Panel follows prior decisions under the irDRP and, given the similarities between the irDRP and UDRP, finds it appropriate to apply UDRP jurisprudence, including reference to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition. See ACCOR v. Mohammad Reza Aghaei,WIPO Case No. DIR2018-0011.
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