Complainant is IKEA Systems BV (IISBV) of Amsterdam, Netherlands, represented by Saba & Co. Intellectual Property s.a.l. (Offshore) Head Office, Lebanon.
Respondent is Abbas Ghaffarian, IKIA SHIRAZ of Shiraz, Iran (Islamic Republic of).
The disputed domain name <ikiashz.com> is registered with Realtime Register B.V. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2016. On July 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details of Respondent.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2016. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 1, 2016.
The Center appointed M. Scott Donahey as the sole panelist in this matter on August 11, 2016. 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.
Complainant is the owner of the Ikea retail system franchise, whose franchisees operate Ikea retail stores worldwide, operating 361 stores in forty-five countries. Complainant’s IKEA trademark is well known, ranked by Interbrand as number 27 among the top 100 best-known brands in the world. Complaint, Annex 4. The brand is also ranked number 27 by the Reputation Institute listing of the World’s Most Reputable Companies. Complaint, Annex 5.
Among the more than 1,500 trademarks registered by Complainant around the world are Iranian trademarks for IRANIKEA, issued on January 5, 2006, and for IKEA, issued on October 28, 2005, using both Latin and Persian characters, and for IKEA and IKEA SKOMAB IRAN, dating to 1977.
Respondent registered the disputed domain name on April 26, 2016. Respondent used the domain name at issue to resolve to a web site at which Complainant’s trademark products were offered for sale online and also at a retail outlet operated by Respondent in Shiraz, Iran. The shop sign and shop receipt displayed and given at Respondent’s retail outlet bear Complainant’s registered marks. Complaint, Annex 11 and 12.
Respondent registered the disputed domain name a few days after Complainant filed an IR-DRP complaint concerning the domain name <ikeashiraz.ir> and a UDRP Complaint concerning the domain name <ikeashz.com>. Both of those domain names had also been registered by Respondent who was the respondent in the previously filed proceedings.
The web site to which the domain names which were the object of the prior proceedings resolved to the same content as does the disputed domain name.
Complainant contends that the disputed domain name is confusingly similar to its registered trademark IKEA in that “ikia” is identical in pronunciation to “Ikea” and differs from it only by the substitution of the letter “i” for the letter “e”, and that “shz” is common shorthand for the city name, Shiraz, that Respondent has never been authorized by Complainant to use its trademarks or to sell its goods, and in fact Complainant has brought proceedings against Respondent for utilizing similar domain names. Finally, Complainant asserts that the disputed domain name has been registered and is being used in bad faith.
Respondent did not reply to Complainant’s contentions.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) 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
2) that the respondent has no rights or legitimate interests in respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith.
As the Panel finds that the disputed domain name consists of an insignificant spelling change from Complainant’s famous trademark together with an abbreviation of the name of the city of Shiraz, where Respondent has a retail outlet purportedly operated under authority of Complainant and using Complainant’s registered trademark, the Panel finds that the disputed domain name is similar to Complainant’s registered trademark.
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of a disputed domain name is as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore, a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), Section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
As Respondent registered the disputed domain name shortly after it had been named as a respondent by Complainant in other dispute resolution proceedings concerning other similar domain names and as Respondent is using the disputed domain name to resolve to a web site at which Complainant’s trademark goods are offered for sale without authorization by Complainant and as Complainant is the owner of longstanding registered Iranian trademarks to which Respondent has registered a number of domain names which are substantially similar and which domain names, including the disputed domain name, resolve to a web site at which goods bearing Complainant’s registered marks are being offered for sale, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith.
For 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, <ikiashz.com>, be transferred to Complainant.
M. Scott Donahey
Sole Panelist
Date: August 15, 2016