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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter-IKEA Systems B.V. v. McLaughlin Mobility
Case No. 2000-0499
1. The Parties
The complainant is Inter-IKEA Systems B. V., of Olof Palmestraat 1, NL-2616 Delft, Netherlands, represented by Fross Zelnick Lehrman & Zissu P.C., attention Martin B. Schwimmer, of 866 United Nations Plaza, New York, New York 10017, USA.
The respondent is McLaughlin Mobility, of 75 Oriole Parkway, Toronto, Canada M4V 2E3.
2. Domain Name and Registrar
The domain name at issue is <ikeacar.com>, and the registrar is Network Solutions, Inc., of 505 Huntmar Drive, Herndon, Virginia 20170, USA.
3. Procedural History
The complaint was submitted on May 25, 2000. A timely response was submitted to and received by WIPO on July 1, 2000. George R. F. Souter was appointed as Sole Panelist on July 19, 2000.
4. Factual Background
The complainant has furnished a computer print-out, itemising substantial trade mark protection of the trade mark IKEA in numerous countries, including Canada.
The respondent registered the domain name <ikeacar.com> on July 21, 1999.
On March 10, 2000, Kevin McLaughlin wrote to Martin Ekelund, Legal Affairs, Inter Ikea Holding Services S. A., of Waterloo, Belgium, offering to transfer the domain name registration to the complainants "for the nominal change fee of US$1,000".
5. Parties’ Contentions
The complainant claims to be the deviser of the trade mark IKEA, as an acronym comprised of the initials of the company’s founder (Ingvar Kamprad), and the initials of the farm (Elmtaryd) and parish (Agunnaryd), where he grew up.
The complainant claims to have been selling furniture under the trade mark IKEA since 1950, to now have 155 furniture stores in 29 countries around the world, and to have recorded a turnover in furnishings and accessories in 1999 of over US$8 billion.
The complainant claims that its trade mark is famous "and has been so held by judicial decision in Norway". No details of this Norwegian decision were supplied to the Panel. A copy of a report of a recent study by InterBrand, one of the world’s largest branding companies, in which IKEA was listed as the 43rd most valuable trade mark in the world, with an estimated value of US$3.46 billion, was drawn to the Panel’s attention.
The complainant contends that addition of the general noun "car" to IKEA has limited ability to distinguish the domain name in issue from the complainant’s trade mark.
The complainant further contends that the respondent can demonstrate no legitimate interest in the domain name, and that the domain name has been registered and used in bad faith.
The respondent claims that the domain name in issue was registered in connection with car sharing mobility services, and further claims that the name is derived as follows – Intelligent, Kind-to-the-Environment and Affordable CAR.
The respondent further claims that there is no confusion on the part of the consumer, as its web site contains no elements of the Swedish-oriented livery of the complainant, and the service concept described in the site is in no way connected with the goods sold by IKEA.
The respondent contends that it has not attempted "to play off the name and/or the trademarks of IKEA: not only has this site not been entered into any search engines, there are no META tags using the words "IKEA" or any other trademarks to improve search engine response".
6. Discussion and Findings
For the complainant to succeed, the Panel must, under Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, be satisfied:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and used in bad faith.
The language employed, namely the word "and" at the end of paragraphs (i) and (ii), makes it clear that the tests in all three paragraphs (i), (ii) and (iii) must be met for the complainant to succeed. Previous Administrative Panel Decisions have, uniformly, followed this interpretration. Further, the word "and" in paragraph (iii) requires that both the domain name registration has been registered in bad faith, and that it has been used in bad faith, and the Administrative Panel, in Case No. D99-0001 so decided.
In connection with Paragraph 4a(i), the complainant has drawn the Panel’s attention to Decision D2000-0102, which related to the domain name <nokiagirls.com>. In that case, the Administrative Panel decided that the addition of a general noun to a registered trade mark in a domain name is of limited effect in distinguishing the resulting domain name from the trade mark, and decided that the test of Paragraph 4(a)(i) was satisfied in that case, although there was clearly no question of commerce in common between the complainant and the respondent. The Panel takes the view that there is sufficient similarity between the factual situation in Decision D2000-0102 and the instant case, to follow the decision of the Panel in that case, and concludes that the test of Paragraph 4(a)(i) has been met.
In Case No. D2000-0102, the Panel considered the question of a well known mark in connection with the mark NOKIA, and concluded: "The trademark NOKIA is currently enjoying such fame internationally that it cannot reasonably be argued that Respondent … could have been unaware of the trademark rights vested therein when registering the domain name." In the Panel’s opinion, IKEA is also a trade mark sufficiently well known that it cannot reasonably be argued that the respondent could have been unaware of the trade mark rights vested therein when registering the domain name.
The respondent claims that the domain name <ikeacars.com> stands for Intelligent Kind-to-the-Environment Affordable CAR. Accessing the domain name directs the enquirer to a web site <carsharing.net>. The car sharing system described in this web site could fairly be described as "intelligent", "kind to the environment" and "affordable", but not necessarily in that order. Further, the individual attributes could have been alternatively described. "Kind to the Environment" could have been replaced by "environment/ally friendly", for example.
The Panel concludes that the respondent cannot reasonably have been unaware of the fame of the IKEA trade mark at the time of adoption of its domain name, and could have easily, without distorting its "sales message", avoided conflict with the complainant by adopting an alternative to the "ikea" component of its domain name.
As the respondent points out, its trading concept does not extend to the goods traded in by the complainant. The protection accorded to a well known trade mark may, however, extend beyond the goods protected by trade mark registration, but this point has not been argued by the complainant. The Panel notes, however, that the complainant’s Benelux trade mark registration No. 425584 covers goods in class 12, into which class falls commerce in automobiles. Had the respondent effected or instructed a trade mark search appropriate to internet trading, particularly in view of the fact that the <carsharing.net> web site to which enquirers to the <ikeacar.com> web site are directed makes specific mention of Europe, it is, in the Panels’s view, likely that this Benelux registration would have come to its attention, and required consideration as to conflict of rights.
The Panel, accordingly, finds that the respondent had no rights or legitimate interests in respect of the domain name, and that, in consequence, the test of Paragraph 4(a)(ii) has been met.
It follows from the above finding that the Panel finds that the respondent registered the domain name in issue in bad faith, and the first part of the test of Paragraph 4(a)(iii), has, accordingly, been met.
The question of use in bad faith remains for consideration. This question was raised in Case No. D99-0001, in which the Panel decided that the test of use in bad faith is met when the respondent offers to sell the domain name for valuable consideration in excess of any out of pocket costs related to the domain name, and this finding has been followed in subsequent decisions. The sum offered for sale of the domain name in case D99-0001, as in this case, was US$1000. The Panel in this case follows the reasoning of the Panel in Case D99-0001, and decides that the offer for sale of the domain name in issue for the sum of US$1000, constitutes use in bad faith.
The dual test of Paragraph 4(a) has, accordingly, been met.
The Panel is satisfied that the three tests of Paragraphs 4a(i), 4a(ii) and 4a(iii) of the Uniform Domain Name Dispute Resolution Policy have been met, and, accordingly, requires that the registration of the domain name <ikeacar.com> be transferred to the complainant.
George R. F. Souter
Dated: August 1, 2000