PARTIES' CONTENTIONS:
COMPLAINANT:
The Complainant claims that the disputed domain name is confusingly similar to the Complainant’s registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant’s claims for each point are here below reported:
(1) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The disputed domain name <ikeacasa.com> reproduces the Complainant's IKEA trademark in its entirety with the addition of the Italian word “casa”, thus the disputed domain name is undoubtedly confusingly similar to the trademark IKEA in which the Complainant has rights. The addition of the Italian word “casa” (meaning “house” or “home”) following the IKEA trademark does not reduce the high degree of similarity between the disputed domain name and the Complainant’s trademark. The Complainant’s IKEA trademark is inherently distinctive and the addition of the generic term “casa” does not negate the confusing similarity between the mark and the disputed domain name, as that term is closely linked to and associated with the Complainant’s trademark. In fact, it only serves to underscore and increase the confusing similarity, because the word “casa” aptly describes the business carried on by the Complainant.
The Complainant concludes that the disputed domain name is confusingly similar to the prior registered trademark in which the Complainant has rights in satisfaction of paragraph 4(a)(i) of the Policy.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name
The mere registration of a domain name does not establish rights or legitimate interests in a disputed domain name.
The Respondent is not an authorized dealer of the Complainant’s nor has it ever been authorized by the Complainant to use the IKEA trademark in the disputed domain name. The Complainant is not in possession of, or aware of the existence of, any evidence demonstrating that the Respondent might be commonly known by the disputed domain name or a name corresponding to the disputed domain name as an individual, a business, or another organization. IKEA is neither a generic term, nor descriptive, and it is not a dictionary word; rather, it is an inherently distinctive trademark which refers solely to the Complainant. There has been no evidence to show that the Respondent has any registered trademark rights with respect to the disputed domain name.
The Respondent registered the disputed domain name on April 25, 2009, many years after the IKEA trademark became widely known.
The fact that the disputed domain name comprises a combination of the Complainant’s famed and distinctive trademark and the description of its business activity leads to the compelling conclusion that the Respondent was well aware of the Complainant and its rights in the IKEA trademark when adopting the disputed domain name. Subsequent use of the disputed domain name to direct to an online site offering goods and services in direct competition with those of the Complainant cannot constitute a use of the disputed domain name in the bona fide offering of goods or services.
The Respondent has not provided the Complainant with any evidence of its use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute was served.
Considering that prima facie no relationship has ever been established between the parties and no lawful connection to the IKEA name appears from the records, the Complainant could not find any evidence on which to ground the assumption that the Respondent is making a bona fide offering of goods or services related to the IKEA name.
For all of the foregoing reasons, the Complainant concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
(3) The Respondent registered and uses the disputed domain name in bad faith
The disputed domain name was registered in April 2009, many years after the Complainant obtained its trademark registrations.
Owing to its extensive worldwide use, the Complainant’s IKEA trademark has become a well-known trademark, as also indicated in several UDRP decisions. Quoting previous UDRP decisions, the Complainant asserts that it is inconceivable that the Respondent could have chosen the disputed domain name by coincidence, without knowledge of the Complainant’s marks, as it encapsulates the distinctive IKEA mark.
Moreover, as indicated in many decisions, registering a well-known trademark is deemed bad faith registration considering that the Respondent knew or should have known that its registration would be identical to the Complainant’s mark.
Currently, the disputed domain name redirects to a website displaying an e-store selling third-party trademarked products. This circumstance cannot be deemed a good faith use because the Respondent receives profits by offering for sale items bearing third-party trademarks while exploiting a domain name incorporating the well-known IKEA trademark in the domain name itself.
The Respondent’s use of the disputed domain name creates a likelihood of confusion as to the affiliation of its website for the purposes of confusing consumers and diverting customers to its own website where it offers for sale household products, home furnishing products and accessories in direct competition with the Complainant.
The Respondent is aware of the existence of the trademark IKEA and also of the INTER IKEA SYSTEMS B.V. company, and created its website to include the Complainant’s trademark in order to capitalize on the reputation and goodwill associated with the Complainant’s mark or otherwise mislead Internet users. Therefore, considering the high reputation of the IKEA trademark, the Complainant claims that such use amounts to bad faith.
Finally, since the IKEA trademark is an invented word, it is also unlikely that the disputed domain name, including that word, was chosen by the Respondent without having the Complainant’s trademark in mind. Rather, such trademark distinctiveness, together with the generic term "casa" (the Italian term for “house” or “home”) creates a domain name confusingly similar to the Complainant’s trademarks and it is the Complainant’s contention that the Respondent has exploited this similarity for its own commercial gain, in so doing inducing even more confusion among Internet users searching for the Complainant’s products for the home.
Therefore, the Respondent's purpose is clearly to capitalize on the reputation of the Complainant's trademark for financial gain by diverting Internet users seeking IKEA products to its own website, by intentionally creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of its web sites and/or the goods offered or promoted through said web sites, according to paragraph 4(b)(iv) of the Policy.
In light of the above, the Complainant respectfully submits that the disputed domain name was registered and is being used in bad faith in full satisfaction of paragraphs 4(a)(iii) and 4(b) of the Policy.
RESPONDENT:
Respondent contends that:
The Domain name is neither identical nor confusingly similar to the protected mark (i.e. IKEA) for the following reasons:
(Note: errors are in the original)
“Ike a casa” is a product name for building modules in wooden structure.
The name Ikeacasa is composed by 3 words, IKE A CASA and it is referred to the Hurricane "Ike". It means: Ike at home.
The name is: Ike a casa. Its reading pronunciation is consequent and it has nothing in common with the famous Ikea.
The logo ikeacasa, in order to avoid eventual confusion with the most famous ikea, is subdivided in 3 different colors, one color for each word making up the domain name
The homepage of ikeacasa.com clearly reports the reference to the hurricane
The products sold on the ikeacasa.com site are completely different in nature from those sold by ikea.com”.
The Respondent has rights and/or legitimate interest in the domain name because:
Ikeacasa is a name initially created for prefabricated wood-frame house modules.
The Respondent claims that the choice of this name came from a “crazy idea” that came to its staff while watching the effects of the hurricane Ike that left only one house standing. "That house, which looks like a wooden structure, remained intact, must have been the house of Hurricane IKE, where he returned after the disaster. As a result, Ike had returned home, so the name reads: Ike A Casa and not otherwise”.
The Respondent, who was in Italy and at the time of the events dealt in prefabricated wood-frame houses, created the name Ikeacasa simply by using the name of a hurricane and two words of its native language.
The Respondent further points out that “not coincidentally, to make a clear distinction between ikeacasa and ikea, and above all to show this difference to site visitors, thus avoiding possible confusion, the logo was created with 3 different colors, one color for each word making up the domain name”.
With regard to this section, the Panel notes that the Respondent has provided the Center with several documents and information regarding the IKE hurricane and the “Ike a casa” products, i.e. prefabricated wooden walls.
The Respondent contends that the disputed domain name has not been registered and used in bad faith for the following reasons:
Ikeacasa is a name initially created for prefabricated wood-frame house modules.
The Respondent, who was in Italy and at the time of the events dealt in prefabricated wood-frame houses, created the name Ikeacasa simply by using the name of a hurricane and two words of its native language.
The products sold on the ikeacasa.com site are completely different in nature from those sold by ikea.com.
The Respondent documents that it received its first communication regarding the disputed domain name on December 19, 2013, from CSC Digital Brand Services in the person of the lawyer Christian Elftorp, who sent the Respondent a "Notification of violation of Trademark rights", and asserts (without documenting same) that on January 8, 2014, with an email, Mr Elftorp concluded as follows: "We agree to reimburse your out of pocket expenses, but we will not buy the domain."
The Respondent thus affirms that: “The logical conclusion was that the IKEA company was not interested in the ikeacasa.com name”.
Finally, the Respondent claims that since 2012 it has been a reseller of domain names and all related services. In virtue of its capacity as a reseller, the Respondent requests that all the rules of sale of domain names of Godaddy.com be applicable.
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