WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Inter Ikea Systems B.V. v. Ikea Property Management

Case No. D2011-1966

1. The Parties

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

The Respondent is Ikea Property Management, Linday Bullock of Wilmington, Delaware, United States of America.

2. The Domain Name and Registrar

The disputed domain name <ikeapropertymgmt.com> is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2011. On November 9, 2011, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain name. On November 9, 2011, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.

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 the Respondent of the Complaint, and the proceedings commenced on November 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2011.

The Center appointed Jonathan Agmon as the sole panelist in this matter on December 16, 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

The Complainant is a Dutch company that is the owner and franchisor of a unique concept for the sale of furniture and home furnishing products under the trademark IKEA. The Complainant’s business model is based on a franchise system. Only approved retailers who have entered into an agreement with the Complainant may sell furniture and home furnishing products under the trademark IKEA.

The Complainant was founded in the early 1940s and its business model consists of 316 stores in 38 countries, generating annual revenue in 2010 of EUR 23.8 billion.

The Complainant owns multiple worldwide trademark registrations for the trademark IKEA. For example: United States Trademark Registration No. 1,118,706 for IKEA (logo), with the registration date of May 22, 1979; United States Trademark Registration No. 1,443,893 for IKEA, with the registration date of June 23, 1987; European Community Trademark Registration No. 001672997 for IKEA, with the registration date of April 3, 2002; European Community trademark registration No. 000705343 for IKEA, with the registration date of May 4, 2006; International Trademark Registration No. 926155 for IKEA (logo), with the registration date of April 24, 2007, designated, among others, to the United States of America, the European Community and China.

The Complainant also developed its presence on the Internet and is the owner of several domain names, which contain the IKEA trademark. For example: <ikea.com> and <ikea-usa.com>

On April 13, 2011, the Complainant sent the Respondent, by email and by registered mail, a cease and desist letter, demanding that the Respondent refrain from infringing the Complainant's rights. The letter was addressed to the Respondent's contact details as provided by the Respondent in the WhoIs records for the disputed domain name.

The Respondent did not reply to the Complainant's letter. Additionally, the Complainant's registered mail letter was returned to sender, due to an apparent incorrect address.

The disputed domain name was registered on November 18, 2010.

The disputed domain name currently resolves to a parking page with sponsored links.

5. Parties’ Contentions

A. Complainant

The Complainant contends the following:

The Complainant argues that the public associates the IKEA trademark exclusively with the Complainant, as a result of the Complainant's promotional activities.

The Complainant further argues that the IKEA trademark gained tremendous goodwill due to widespread and substantial international use. The Complainant contends that the IKEA trademark has gained the status of a well-known trademark.

The Complainant indicates that previous UDRP panels have established the complainant's long lasting rights in the IKEA trademark, and that the Complainant's IKEA trademark is well known.

The Complainant further argues that the disputed domain name infringes the Complainant's trademark rights and that the Respondent unjustly profits from it. The Complainant further contends that the Respondent's use of the disputed domain name tarnishes the goodwill of its IKEA trademark.

The Complainant further argues that the disputed domain name is confusingly similar to the Complainant's IKEA trademark, as it wholly incorporates the Complainant's IKEA trademark as the dominant element of the disputed domain name. The Complainant further contends that the addition of the generic term “property” and an abbreviation for the generic term “management” – “mgmt”, do not eliminate the confusing similarity.

The Complainant further argues that the Respondent has no rights or legitimate interests in the disputed domain name, since the Respondent is not commonly known by the disputed domain name.

The Complainant further states that it did not authorize the Respondent to use its trademark.

The Complainant further argues that the Respondent has registered the Domain Name in an attempt to attract internet traffic for commercial gain, by intentionally misleading and creating a likelihood of confusion with the Complainants’ trademark as to the source, sponsorship, affiliation, or endorsement of the website. The Complainant further contends that the Respondent is unjustly profiting of the disputed domain name, as the disputed domain name resolves to a parking page, which provides sponsored links to third-party web sites, offering various goods and services.

The Complainant further argues that the fact that the disputed domain name is offered for sale on the auction website “afternic.com”, indicates that the disputed domain name was registered by the Respondent primarily for the purpose of selling, renting, or transferring the domain name registration to the Complainant.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant owns multiple trademark registrations for IKEA. For example: United States Trademark Registration No. 1,118,706 for IKEA (logo), with the registration date of May 22, 1979; United States Trademark Registration No. 1,443,893 for IKEA, with the registration date of June 23, 1987; European Community Trademark Registration No. 001672997 for IKEA, with the registration date of April 3, 2002; European Community Trademark Registration No. 000705343 for IKEA, with the registration date of May 4, 2006; and International trademark No. 926155 for IKEA (logo), with the registration date of April 24, 2007, designated, among others, to the United States of America, European Community and the People's Republic of China.

The disputed domain name <ikeapropertymgmt.com> differs from the registered IKEA trademark by the additional generic term “property” and an abbreviation for the generic term “management” – “mgmt” and by the additional gTLD ".com".

The addition of the word "property" and the abbreviation "mgmt" does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's IKEA trademark, especially as "Property" and "mgmt" are descriptive terms that relate to the Complainant's field of business. The Panel finds that these terms are not sufficient to avoid confusion between the disputed domain name and the IKEA trademark. It is clear that the most prominent element in the disputed domain name is the term “ikea”, which lacks dictionary meaning in English.

Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate a domain name from a registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark”. Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. See also, RedBull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909 (“the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark.”)

Also, the addition of the gTLD “.com” in the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate a domain name.

The result is that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to rebut the presumption established by the Complainant.

In the present case, the Complainant alleges that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Respondent failed to assert any rights or legitimate interests.

The Complainant has established its rights in the IKEA trademark worldwide. The Complainant's vast goodwill in the IKEA trademark was also asserted in previous UDRP decisions (see e.g.Inter IKEA Systems B.V. v. Polanski, WIPO Case No. D2000-1614; and Inter IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437).

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia due to the fact that Complainant has not licensed or otherwise permitted the Respondent to use the IKEA trademark or a variation thereof.

The Respondent has not submitted a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.

Although the WhoIs record for the disputed domain name indicates that the Respondent is connected to a company by the name of the disputed domain name, there is no evidence in the file that such a company exists. The existence of such company is even more doubtful as the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but rather the disputed domain name resolves to a parking web page, which indicates that the disputed domain name is for sale.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that shall be evidence of bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant submitted evidence that shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned registrations for the IKEA trademark since at least the year 1979. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (see Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735). This conclusion is further supported when taking into account the vast goodwill that the Complainant has gained in its well-known IKEA trademark.

Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use by the Respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain name resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolved to.

The Complainant provided evidence proving to the Panel that the Respondent is using the Complainant’s trademark, as part of the disputed domain name, in order to intentionally attract Internet users to the website at the disputed domain name, for commercial gain. The Respondent’s actions therefore constitute bad faith under the Policy. (See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”). The Respondent's use of the disputed domain name without rights or legitimate interests to display sponsored links for other websites constitutes bad faith on behalf of the Respondent (see Schur International A/S v. Jorge Massa, WIPO Case No. D2009-0450).

The Panel also notes that the disputed domain name has been found confusingly similar to the Complainant’s trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have stated that attracting Internet traffic for commercial purposes by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

The fact that the disputed domain name is offered for sale on an auction website is another clear indication of the Respondent's bad faith here. Offering a domain name for sale at an auction is evidence of bad faith registration and use (see Wrenchead.com, Inc. v. Alison Hammersla, WIPO Case No. D2000-1222).

In addition, the Panel notes that the Respondent failed to reply to the Complainant's cease and desist letter.

This fact itself may constitute, under certain circumstances, additional evidence of the Respondent's bad faith (see ALSTOM v. STOCKMARKET DOMAINS, WIPO Case No. D2008-1542). Furthermore, the fact that the cease and desist letter that was sent by registered mail was returned, begs the conclusion that the Respondent provided false contact details or failed to maintain a proper address for service. It was decided by previous UDRP panels that the use of false registration details may constitute evidence of bad faith under this element of the Policy (see Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138).

Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the confusing similarity between the disputed domain name and the Complainant's mark and the fact that the Respondent offers the disputed domain name for sale, the Panel draws the inference that the disputed domain name was registered and used in bad faith.

Accordingly, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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 domain name, <ikeapropertymgmt.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Dated: December 28, 2011