WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Inter Ikea Systems B.V. v. Domain Administrator [email protected]

Case No. D2011-1934

1. The Parties

Complainant is Inter Ikea Systems B.V. of Delft, Netherlands, represented by Crowell & Moring, LLP, Belgium.

Respondent is Domain Administrator [email protected] of Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <ikeafurnitures.com> (“Disputed Domain Name”) is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2011. On November 8, 2011, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On November 8, 2011, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 1, 2011.

The Center appointed Eduardo Machado as the sole panelist in this matter on December 8, 2011. 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, Inter Ikea Systems B.V., is a provider of furniture and home furnishings, which it markets under the IKEA trademark. Complainant’s business model is based on a franchise system, and only approved retailers who have entered into an agreement with Complainant may use this concept, including the IKEA mark.

Complainant is the owner of the IKEA trademark (International trademark registered under number 926155 on 24 April 2007 in classes 16, 20, 35 and 43). Complainant also registered the IKEA trademark in the United States (registration no. 1118706 on May 22, 1979 in classes 11, 20, 21, 24 and 27 and duly renewed thereafter, as well as registration no. 1443893 on June 23, 1987 in classes 11, 16, 20, 21, 24 and 27 and duly renewed thereafter) and the European Union (Community Trade Mark registration no. 000705343 on May 4, 2006, applied for on December 18, 1997, for classes 9, 35 and 38 and duly renewed thereafter, as well as Community Trade Mark registration no. 001672997 on April 3, 2002 and applied for on May 24, 2000 for class 35 and duly renewed thereafter.

5. Parties’ Contentions

A. Complainant

Complainant argues that the Disputed Domain Name <ikeafurnitures.com> incorporates Complainant’s IKEA trademark in its entirety and adds the generic term “furnitures”. Moreover, Complainant argues that as it is itself in the business of creating and selling furniture, the generic word is directly related to Complainant’s business.

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name as Respondent is not commonly known by the Disputed Domain Name.

Moreover, Complainant observes that the Disputed Domain Name is used for a parking page providing sponsored links to websites offering furniture and other goods and services. Complainant argues that this passive use of the Disputed Domain Name is obviously monetized in that the provision of sponsored links is beneficial to the Disputed Domain Name holder. Complainant argues that by doing so, Respondent is using Complainant’s trademark and reputation to make money through commercial advertising for third parties and that such use does not constitute a legitimate or fair use according to the policy.

Complainant argues it never received a response to its cease and desist letter that was sent both by email and registered letter. Complainant informs that the registered letter even returned as Respondent apparently provided a false address in the WhoIs records. Complainant argues that the provision of false contact information and the absence of a reply is further evidence that Respondent has no rights or legitimate interest in the Disputed Domain Name.

Complainant contends that, at the time Respondent registered the Disputed Domain Name, Respondent must have known Complainant and its trademarks. This is acknowledged by the content provided on Respondent’s parking page, where reference is made to the IKEA trademark in related searches and where links of competitors of Complainant in the furniture business are provided.

Moreover, Complainant states that the notoriety of its trademarks has been acknowledged by several UDRP panels. It has previously been held that knowledge of a corresponding trademark at the time of the disputed domain name registration suggests bad faith.

Complainant argues that a simple trademark search at the time of the registration of the Disputed Domain Name would have revealed Complainant’s trademark registrations. Also, a simple search on the Internet would have revealed Complainant’s presence and trademarks. Hence, Respondent could not reasonably have been unaware of the fame of the IKEA trademark at the time of registration.

Complainant states that the Disputed Domain Name resolves to a parking page containing sponsored links that refer to competitors of Complainant in the furniture business. And that, therefore, Respondent uses the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the websites.

Moreover, Complainant argues that the use of the Disputed Domain Name to promote goods or services in competition with the business of a complainant who has rights in trademarks or service marks to which the Disputed Domain Dame is confusingly similar, constitutes a disruption of the business of that complainant and is evidence of bad faith registration and use under Policy paragraph 4(b)(iii).

Furthermore, by registering the Disputed Domain Name, Respondent prevents Complainant, as the holder of the IKEA trademark, from reflecting its mark in a corresponding domain name.

Complainant also argues that Respondent is only passively using the Disputed Domain Name, as it merely refers to a parking page featuring sponsored links and that under the circumstances of the case, the passive holding of the Disputed Domain Name can amount to bad faith registration and use.

Finally, Complainant contends that the Disputed Domain Name is offered for sale on the auction website “www.sedo.com” and that this is a clear indication that the Disputed Domain Name was registered by Respondent primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to Complainant, who is the owner of the trademark or service mark, for valuable consideration in excess of the documented out-of-pocket costs directly related to the Disputed Domain Name.

B. Respondent

Respondent did not submit a response.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (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 has been registered and is being used in bad faith, Policy, paragraph 4(a).

A. Identical or Confusingly Similar

According to Complainant’s arguments and the exhibits to the Complaint, it is proved that Complainant has trademark rights in IKEA.

The panel finds that Complainant’s registered IKEA trademarks are well-known in its field of activity and have a strong reputation in many countries. The Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s IKEA trademark. The only difference between Complainant’s registered trademark and the Disputed Domain Name is the addition of the generic and non-distinctive word “furnitures”.

The Panel finds that the difference pointed above is not enough to characterize the Disputed Domain Name as being distinct from Complainant’s registered IKEA trademark. See Columbia Pictures Industries, Inc. v. Caribbean Online International Ltd., WIPO Case No. D2008-0090(“adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of Complainant.”). Moreover, the Panel finds that adding a generic expression linked to Complainant’s activities, such as the word “furnitures”, is likely to increase the possibility of confusion amongst consumers.

The Panel finds that this similarity can mislead Internet users who search for Complainant’s products or services and are then diverted to the website hosted at the Disputed Domain Name.

The Panel, therefore, finds that Complainant has established the first element of the paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Complainant has alleged that Respondent has no rights or legitimate interests in the Disputed Domain Name. Taking into consideration that Respondent has failed to respond to the Complaint, the Panel will infer that Respondent lacks rights and legitimates interests in the Disputed Domain Name.

The Panel finds that Complainant has made a prima facie case in support of its allegations and, due to this, the burden of proof shifts to Respondent to show that it does have rights or legitimates interests in the Disputed Domain Name, pursuant to paragraph 4(a) (ii) of the Policy.

With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services.

With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the Disputed Domain Name.

With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the Disputed Domain Name and has not used the Disputed Domain Name, or a name corresponding to it, in connection with a bona fide offering of goods or services.

At the time the Complaint was filed, the Disputed Domain Name directed Internet users to parking pages offering goods and services of Complainant’s competitors. The Panel finds that this is not a bona fide offering of goods and services.

So, in view of the above, the Panel finds that Complainant has established the second element of the paragraph 4(a) of the policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b)(iv) of the Policy, a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt 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 site or of a product or service offered on the respondent’s site.

Respondent has intentionally registered the Disputed Domain Name that wholly incorporates Complainant’s well-known IKEA trademark. Due to the noterity of Complainant’s well-known mark it is highly unlikely that Respondent did not have knowledge of Complainant’s rights in the IKEA trademark.

Complainant’s registered IKEA trademarks are well-known in its field of activity and have a strong reputation in many countries. Additionally, the IKEA brand is known in Hong Kong (where Respondent appears to be located) through the presence of the IKEA Hong Kong retailer.

Complainant’s allegations of bad faith are not contested. The evidence provided by Complainant confirms that it has been using its IKEA trademark since at least 1979, long before the Disputed Domain Name was registered. Moreover, Complainant submitted evidence sufficient to establish that its trademark is well-known. The Panel finds that Respondent should have been aware of Complainant’s rights in the IKEA trademark.

Further factors that indicate bad faith under paragraph 4(b) of the Policy include use of a disputed domain name in which the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on-line 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 your web site or location.”. In the present case, Respondent used Complainant’s well-known trademark to attract users to a parking page displaying pay-per-click ads. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.

Finally, the Panel finds that the fact that the Disputed Domain Name is offered for sale on the auction website “www.sedo.com” is a clear indication that the Disputed Domain Name was registered by Respondent primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to Complainant for valuable consideration in excess of the documented out-of-pocket costs directly related to the Disputed Domain Name.

In light of these, the Panel finds Respondent registered and used the Disputed Domain Name in bad faith. Therefore, Complainant has established the third element of the Paragraph 4(a) of the Policy.

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 <ikeafurnitures.com> be transferred to Complainant.

Eduardo Machado
Sole Panelist
Dated: December 22, 2011