The Complainant is Inter IKEA Systems BV (IISBV), Netherlands, represented Saba & Co. Intellectual Property s.a.l. (Offshore) Head Office, Lebanon.
The Respondent is Alireza Azimpour, Iran (Islamic Republic of).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2021. On December 7, 2021, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On December 11, 2021, 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 December 14, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2022. On January 5, 2022, the Center notified the Respondent’s default.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on January 10, 2022. 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 BackgroundThe Complainant is a well-known franchisor of furniture and home furnishing products marketed under the trademark IKEA. There are 403 IKEA stores in 49 countries, and they employ some 194,000 employees. In 2017, the Complainant’s annual sales amounted to EUR 38.3 billion.
The Complainant’s trademark has been registered in more than 80 countries around the world, including in Iran, the trademark IKEA, registered under no. 46938 on June 14, 1977 in classes 1, 2, 3, 6, 7, 8, 9, 11, 20, 29, 30, 31, 32, 35, and 39.
The disputed domain name was created on October 11, 2017, and according to the information provided by IRNIC, registered by the Respondent on December 30, 2020, and is currently in force until December 31, 2022.
At the time of filing the Complaint, the disputed domain name resolved to a website promoting an IKEA online store in Iran. The disputed domain name is now inactive.
5. Parties’ Contentions A. ComplainantThe disputed domain name is confusingly similar and identical to the Complainant’s trademark since it includes the Complainant’s trademark in addition with the suffix “mall”, which is insufficient to differentiate the disputed domain name from the Complainant’s trademark.
The Complainant has no rights or legitimate interests to the disputed domain name. The disputed domain name is not being used in connection with a bona fide offering of goods or services as it does not resolve to an active website. The Complainant has not authorized the Respondent to use its IKEA trademark in any way.
The disputed domain name was registered and is being used in bad faith. It has been registered without the Complainant’s authorization, the Respondent failed to respond to the Complainant’s pre-complaint warning letters of July 18, 2021, and October 25, 2021, and the disputed domain name clearly misappropriates the Complainant’s trademark.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint or not. The first element is that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the disputed domain name. The third element a complainant must establish is that the disputed domain name has been registered or is being used in bad faith.
Given the similarities between the Policy and the Uniform Domain Name Resolution Policy (“UDRP”), the Panel takes note of the applicable WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections and the cases therein as relevant.
A. Identical or Confusingly SimilarParagraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
According to section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”.
Furthermore, “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. The nature of such additional term(s) may however bear on assessment of the second and third elements”. See section 1.8 of the WIPO Overview 3.0.
The disputed domain name is confusingly similar to the Complainant’s trademark as it includes the Complainant’s trademark in its entirety combined with the word “mall”, relating to the Complainant’s activities. This does not prevent confusing similarity between the Complainant’s trademark and the disputed domain name.
This means that the disputed domain name is confusingly similar with the Complainant’s trademark and hence the first element of the Policy has been fulfilled.
B. Rights or Legitimate InterestsParagraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name.
It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270, and section 2.1 of the WIPO Overview 3.0.
The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register the disputed domain name, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy.
Moreover, the Panel finds that the nature of the disputed domain name carries a risk of implied affiliation with the Complainant’s trademark, noting the descriptive nature of the added term “mall” to the Complainant’s trademark. See section 2.5.1 of the WIPO Overview 3.0.
Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Considering the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled.
C. Registered or Used in Bad FaithParagraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered or is being used in bad faith. Paragraph 4(b) of the Policy provides that 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 that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [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) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
According to the Complaint, the disputed domain name used to relate with a website promoting an IKEA online store in Iran. Accordingly, the Respondent clearly knew of the Complainant and purposefully targeted the Complainant when registering the disputed domain name. Further, considering the impersonating nature of the disputed domain name and the content found on the website to which the disputed domain name resolves, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.
Currently the disputed domain name does not resolve to an active website. Accordingly, the disputed domain name is not in active use, see e.g., Accenture Global Services Limited v. Domain eRegistration,WIPO Case No. D2018-1994.
This, however, does not prevent the finding of bad faith under the doctrine of passive holding. See section 3.3 of WIPO Overview 3.0.
Considering that previous panels have found the Complainant’s trademark to be well known, the Respondent has not provided any evidence of actual or contemplated good-faith use or indeed responded to the complaint in any way, there are no obvious good faith or legitimate uses to which the disputed domain name may be put, the Respondent has not responded to the Complainant’s warning letters, the Panel considers, that the current passive holding of the disputed domain name does not prevent a finding of bad faith; rather, the change in use further reinforces the lack of good-faith explanation.
Therefore, the Panel finds that the third element of the Policy is fulfilled.
7. DecisionFor 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
Tuukka Airaksinen
Sole Panelist
Date: January 24, 2022