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Inter Ikea Systems B.V. v. Ikea International Co. Ltd.

WIPO Case No. D2003-0965

Outcome
Transfer
Domain names
ikea-int.com
Complainant
Inter Ikea Systems B.V. (Netherlands)
Complainant's counsel
Fross
Respondent
Ikea International Co. Ltd.
Panelist
Gerd F. Kunze
Registrar
Melbourne IT trading as Internet Name Worldwide
Decided
27 Jan 2004
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2003/d2003-0965.html

WIPO

Arbitration and Mediation Center

ADMINISTRATIVE PANEL

DECISION

Inter Ikea Systems B.V. v. Ikea International Co. Ltd.

Case No. D2003-0965

1. The Parties

The Complainant is Inter Ikea Systems B.V., Netherlands, represented by Fross

Zelnick Lehrman & Zissu, PC, United States of America.

The Respondent is Ikea International Co. Ltd.,Taiwan, Province of China, represented

by its administrative contact.

2. The Domain Name and Registrar

The disputed domain name <ikea-int.com> is registered with Melbourne

IT trading as Internet Name Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the

"Center") on December 6, 2003. On December 8, 2003,

the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide

a request for registrar verification in connection with the domain name at issue.

On December 9, 2003, Melbourne IT trading as Internet Name Worldwide

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 administrative, billing, and technical contact. The Center verified

that the Complaint satisfied the formal requirements of the Uniform Domain Name

Dispute Resolution Policy (the "Policy"), 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 December 10, 2003.

In accordance with the Rules, paragraph 5(a), the due date for Response was

December 30, 2003. The Response was filed with the Center on December 26, 2003.

The Center appointed Gerd F. Kunze as the sole panelist in this matter on January 14, 2003.

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

A. The Complainant

The Complainant is an internationally active company in the field of home furnishing

and household wares. The founder of the company started to use the trademark

IKEA in 1950 and published the first IKEA catalogue in 1951. Since then the

business has substantially grown and today the Complainant has 190 furnishing

stores in 31 countries on four continents. In Taiwan the Complainant opened

its first IKEA store in 1994 and in 1998 a mega store in downtown Taipei. Another

IKEA warehouse is situated in Tao-Yuan County.

The Complainant is the owner of over 1200 trademark registrations for the wordmark

IKEA and a design mark combining the word IKEA with graphical elements, in more

than 70 countries, and covering a wide range of products and services. Exhibit

F to the complaint contains a data bank printout providing a partial listing

of Complainant's IKEA trademarks worldwide and Exhibit G provides for a list

of over 60 trademark registrations and 6 pending applications of the Complainant

in Taiwan for the word IKEA in Latin characters and in Chinese characters and

its IKEA device mark. Many of them date back to 1987 and all were applied for

registration and (apart from the 6 pending applications) registered before 1997,

long before the Respondent registered the domain name <ikea-int.com>.

The trademarks are principally, but not exclusively being used for furnishing

and accessories and related services.

These facts are evidenced by the attachments to the Complaint and not contested

by the Respondent. The Panelist is satisfied that the documents submitted by

the Complainant truthfully reflect the factual circumstances of the case.

The Complainant administers, amongst others, a sophisticated and informative

website under the domain name <ikea.com> (providing links to the countries

where the Complainant operates) and a website, specifically directed to Taiwanese

customers under the domain name <ikea.com.tw>. On the Complainant's websites

the trademark "IKEA" is shown prominently.

B. The Respondent

The Respondent registered on August 28, 2002, the domain name <ikea-int.com>.

This domain name leads to a website of the Respondent where several skin care

products are advertised and a several links to the website "anynw.com"

are provided. The latter leads to a package website of Yahoo Taiwan, where products

may be ordered online.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the trademark IKEA is an acronym that is comprised

of the initials of its founder, Ingvar Kamprad, and the initials of the farm

where he grew up. Consequently it considers that the term IKEA has no meaning

in any language. The Complainant furthermore submits that the trademark IKEA

is internationally well-known, and that the Beijing No. 2 Intermediate People’s

court of China in June 2000, considered the mark IKE A to be well-known in China.

The Complainant considers the trademark IKEA to be well-known in Taiwan as well.

It not only refers to the IKEA outlets in the country, but also to press articles,

submitted in annexes to the Complaint. For example, in the Taiwan Headlines

dated December 28, 1999, it is mentioned that among international

furniture and hardware chains that are entering Taiwan, "Ikea and B&Q

stand out as the most recognized names among Taiwan consumers" and that

stores like Ikea are "revolutionizing Taiwan’s furniture business".

B. Respondent

The Respondent does not contest the Complainant’s submission that its mark

IKEA is well-known internationally and in Taiwan. It believes that IKEA and

its company have different target consumers, since its business is to import

lanolin skin care products from Australia and New Zealand.

The Respondent submits that the company has been established on August 8, 2002,

under a Chinese name, composed of the name of its owner and manager and the

Chinese word for "international". As proof for this submission the

Respondent has added a document written entirely in Chinese and without any

translation into Latin script. Since the language of the proceedings is English,

and the Panelist cannot read Chinese characters, the document is of little value,

but the Panelist accepts that the Respondent is an established company, operating

under its name written in Chinese characters, as indicated in the Response.

The Respondent furthermore submits that the transliteration of the name of its

owner is "Ikea" and that the domain name, registered on August 28, 2002,

has been chosen by using the transliteration of the Chinese company name. According

to the Respondent, the domain name has been used to provide information about

the company and the products that were imported since 2002.

The Respondent furthermore, submits that it signed a one-year contract with

Yahoo Taiwan in order to set up a shopping website and in May 2003 the company

started to sell, at the Yahoo Taiwan shopping site, skin care products, imported

from New Zealand and Australia, which it considers to be totally different from

the IKEA furnishing and household goods. It furthermore submits that it plans

to run its shopping website by itself from May 2004 and that therefore it registered

the domain name <anynw.com> on November 3, 2003.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements that the Complainant must

prove to merit a finding that the domain name of the Respondent be transferred

to the Complainant or cancelled:

1) The domain name is identical or confusingly similar to a trademark or service

mark ("mark") in which the Complainant has rights; and

2) the Respondent has no rights or legitimate interests in respect of the domain

name; and

3) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

As the Complainant has convincingly put forward, its trademark IKEA is, at

least in many commercial languages, an invented word with no meaning and therefore

inherently distinctive. Complainant's trademark registrations of the word IKEA

in Taiwan evidence that it has exclusive rights in that word in Taiwan, as in

many other countries. To the knowledge of the Complainant no other person has

registered trademark rights in the word IKEA for whatever goods or services

and the Respondent has not contested this submission.

Furthermore, IKEA is an internationally well-known trademark. Not only is the

Panel personally convinced that IKEA is a well-known trademark, the Complainant

has also submitted extensive evidence to prove the wide reputation of the mark.

The Respondent has not contested this evidence. It has also been recognized

in many earlier panel decisions that the trademark IKEA is well-known. As examples

Inter IKEA Systems B.V. v. Technology Education Center, WIPO

Case No D2000-0522 and Inter IKEA Systems B.V. v. Polanski, WIPO

Case No. D2000-1614, are referred to. Based on the facts and evidence submitted

by the Complainant the Panel is satisfied that also in Taiwan the trademark

IKEA is well-known. Furthermore, the Respondent has chosen to register its domain

name in the ".com" domain and not in the <.tw> country code

domain. Therefore, both the international fame and the high degree of knowledge

of consumers in Taiwan must be taken into consideration when considering confusing

similarity. Consequently, the trademark IKEA clearly enjoys a broad scope of

protection beyond the goods and services offered at the Complainant’s outlets

(also Art. 23(12) of the Taiwanese Trademark Law grants well-known marks protection

beyond similar goods and services).

The domain name <ikea-int.com> is not identical to the mark IKEA of the

Complainant, however there can be no doubt that it is confusingly similar. It

incorporates in its entirety the mark IKEA, followed by "-int", a

common abbreviation of the non-distinctive word "international". This

is the more true as the Complainant operates on an international basis. In a

similar case, the Panel has considered the domain name <ikeaworld.com>

to be confusingly similar to the mark IKEA (Inter IKEA Systems B.V. v. Chekroun,

WIPO Case No. D2000-0478). Given the fact

that IKEA is internationally well-known, consumers, becoming aware of the domain

name <ikea-int.com> will reasonably believe that it is for or related

to the global website of the Complainant. The Respondent argues that, when searching

in the Internet by typing IKEA in one of the major search engines, the result

would never be "www.ikea-int.com". This submission can for

all practical purposes not be verified since, when searching for IKEA for example

at Google, the engine starts listing main references to the Complainant as being

the first results from about 459 000 references to IKEA. The sheer number of

references to the Complainant’s mark is another sign for the fame of this mark.

At the same time it is obvious that combinations of IKEA with other terms, such

as "ikea-int", will show up much later than references to the mark

IKEA as such. It may therefore be true, that the visitor of the search engine

will discontinue searching, before arriving at a reference to the Respondent’s

domain name. However, if the Respondent expects users of the Internet to visit

its site by using the domain name <ikea-int.com>, it must try to promote

in one or the other way this domain name. Otherwise, its website would rarely

be visited and the purpose of registering the domain name would have failed.

When using, in whatever manner, the domain name <ikea-int.com>, the Respondent

will automatically create confusion with the well-known trademark IKEA. The

same is true for such Internet users who intentionally type "ikea-int",

thus trying to arrive at an international website of the Complainant. In that

context it does not matter that the products of the Respondent are different

from those of the Complainant. Because the Complainant’s mark IKEA is so well-known,

persons being confronted with the use of the domain name of the Respondent for

skin care products will either believe that the Complainant now also has included

such products in its range of products (even if the main products of the Complainant

are in the furnishing and household goods field, the Complainant, at least in

a number of its mega stores, also offers some totally different products such

as food products; visitors of these stores are therefore already accustomed

to find other than furnishing goods in these stores) or assume that there exists

some relationship between the Complainant and the business operating under <ikea-int.com>

or at least that this business is sponsored by the Complainant.

B. Rights or legitimate interests

There cannot be any doubt that the Respondent has no right to use the mark

IKEA of the Complainant as its domain name. The Complainant has not consented

to the Respondent's use of the domain name.

The Panel accepts that the Respondent may operate a business under the name

(or a part of that name) of its owner, combined with the term "international"

(in Chinese). In its Response, the Respondent expressly states that its name

is as indicated in the Response in Chinese characters (which the Panel of course

cannot read and is not supposed to be able to read, since the language of the

proceedings is English). However, the Respondent has not explained to the satisfaction

of the Panel why it uses the domain name <ikea-int.com> and uses as (transliterated,

respectively as concerns the term "international", translated) name

of the registrant of this domain name the company name "Ikea International

Co, Ltd". The Complainant has submitted, and the Respondent has not contested,

that there exists no company registration for that name under the address given

by the Respondent as Registrant. The Respondent submits that "Ikea"

is the transliteration of the Chinese name of its owner. Its owner is apparently

the person who is indicated as administrative and technical contact,

who submitted the Response and whose name is indicated as "Ikea Chou".

However, the facts and evidence submitted by the Respondent for the correctness

of its own transliteration are not convincing. First, the name of the owner

of the Respondent consists (at least) of two parts, the part Chou not being

used in the domain name, nor in the company name. Second, even the Panelist

can see that the Chinese sign, used by the Complainant for its trademark IKEA

in Chinese, is not identical to the Chinese sign used by the Respondent for

one part of its name, and transliterated by itself as "Ikea". Why

should therefore the pronunciation (and the transliteration) be exactly the

same, as the Respondent submits, without offering any proof? Finally it is most

surprising to note that, as evidenced by the Complainant, according to WHOIS

the administrative contact for the domain name <anynw.com>, which the

Respondent expressly submits to have registered in its name (with this submission

the Panelist will deal below C), is a Mr. Yi Chia Chou and that the company

name of the registrant of that company is indicated as Yichia International

(Yichia being quite apparently a combination of "Yi" and "Chia"),

with the same address as the address of the Respondent. Why should the Respondent

use such different names in English for its Chinese Company name?

For the Panelist there is only one explanation: The Respondent intended to use

the word "ikea" that – contrary to "Yi Chia" – does not

at all sound like a Chinese name, for its domain name <ikea-int.com>.

The Respondent cannot, therefore, deduct from its arbitrary transliteration

of its owner’s Chinese name into "Ikea" a right of its own at this

name. On the contrary, the Panel is satisfied that the correct transliteration

of the name of the owner of the Respondent and of the Respondent’s company name

is the one used more recently by the Complainant, when registering the domain

name <anynw.com>, i.e. "Yi Chia" respectively "Yichia".

None of the circumstances listed under 4(c) of the Policy, possibly demonstrating

rights or legitimate interests, are therefore given. The Respondent has submitted

that its online shopping center is set under the package website that it bought

from Yahoo Taiwan and that the name of its online shop is "Any" combined

with Chinese characters having the meaning of "(Any) brave New World".

The Respondent registered on November 7, 2003, the domain name <anynw.com>,

being an abbreviation of the before mentioned name of its online shop. It explains

that it intends to run its own shopping website under that name from May 2004,

and that this was the reason that it has registered that domain name. The Respondent

furthermore submits that, when promoting its brand, the company uses always

the name of the online shopping center of which the hyperlink is "http://sh1.yahoo.edyna.com/ikea-int/index.asp".

Contrary to its submission that it registered the domain name <anynw.com>

for its future own business, it uses already now this domain name as principal

name for the shopping site "www.anyw.com".

From these submissions, and failing any submissions and evidence of the Respondent

(in English) about its use of the domain name <ikea-int.com>, the Panel

deducts that the sole use made by the Respondent of the domain name <ikea-int.com>

is to provide a link to an advertising site of the Respondent, where references

to the name of its online shopping center (which at the Internet is presented

at "Yahoo shopping") and references to its further domain name <anynw.com>

are made. Using one of these links, an Internet user will arrive at the same

before mentioned shopping website ("www.anynw.com") where it will

arrive when directly using the domain name <anynw.com>. Such use of the

domain name <ikea-int.com> cannot be considered to be a bona fide

offering of goods or services. No doubt, the Respondent is not known at all

under the name <ikea-int.com>, since it apparently never became active

under that name. On the contrary, it uses already now the domain name <anynw.com>

as principal name for the shopping site "www.anyw.com" and may be

known under its original name in Chinese characters.

The Panel concludes that the Respondent has no rights or legitimate interests

in the domain name <ikea-int.com>.

C. Registered and Used in Bad Faith

The Panel is satisfied that the Respondent knew the mark IKEA of the Complainant

when it registered the domain name <ikea-int.com>. The Respondent does

not object to this submission of the Complainant; it is of the opinion that

it could chose that name in view of the difference of the goods and services

offered. As already said before, the Respondent overlooks in that context that

IKEA is an internationally well-known mark and therefore enjoys a very broad

scope of protection far beyond the household goods and related services offered

by the Complainant. The Panel is satisfied that skin care products are not so

totally different from household goods that any danger of confusion of consumers

would be excluded.

As already explained above B, the Respondent failed to explain why, when it

registered the domain name <anynw.com>, which is the abbreviation of the

name of its online shopping site, it used a different company name Yichia International

Co Ltd and why the name of the administrative contact (who apparently is the

owner of the company) in that case is transliterated into "Yi Chia Chou"

and not into "Ikea Chou".

Failing any submission of the Respondent to this fact the Panelist is satisfied

that both domain names have been registered by the same company (as admitted)

and the same person as its administrative contact, simply using different transliterations

of its Chinese name, which is the real name of the company and of its owner

(as admitted by the Respondent). The Panel concludes that the only reason for

the Respondent to have transliterated a part of its owner’s name and its company

name into "Ikea" has been to be able to make use of the well-known

name IKEA of the Complainant. If this was the intention of the Respondent the

Panel is satisfied that it adopted the domain name <ikea-int.com> for

the purpose of attracting and diverting web traffic to its website for commercial

gain. Although the Respondent’s trading activities do not extend to the goods

traded in by the Complainant, likelihood of confusion by Internet users as to

the relationship of the business of the Respondent with the Complainant cannot

be excluded (see above 6A). The Respondent denies any promotion of its business

through the domain name <ikea-int.com>. However, what should have been

the reason to register that domain name and what should have been the reason

for establishing a website "www.ikea-int.com" and for providing on

that website links to its shopping website, if not to promote its business?

The Respondent furthermore contradicts itself by stating that "www.ikea-int.com"

is the company’s main website, and that "anynw.com" "will

be" its online shopping website.

In conclusion, the Panel is satisfied that, by using the domain name <ikea-int.com>,

the Respondent has intentionally attempted to attract, for commercial gain,

Internet users to its 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 its website or location.

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 <ikea-int.com>

be transferred to the Complainant.

Gerd F. Kunze

Sole Panelist

Date: January 27, 2004

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