The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
The registered trademark IKEA has been indeed used extensively and exclusively by the Complainant since 1943 and, through long established and widespread use in several countries of the world, the aforesaid trademark of the Complainant enjoys worldwide reputation in the sector of furniture. The disputed domain name was registered in October 2013, years after the Complainant obtained its trademark registrations, including in Italy where the Respondent is located.
Therefore, by virtue of its extensive worldwide use, the Complainant’s trademark IKEA has become a well-known trademark as indicated also in several UDRP decisions. For instance, in the WIPO decision No. D2016-0067: “The Panel is satisfied that the disputed domain name was registered and is being used in bad faith for the following reasons: (a) The Panel finds that at the time of registration the Respondent must have been aware of the Complainant’s well-known trademark and registered the disputed domain name incorporating that well-known trademark in bad faith for the following reasons: (i) The Complainant’s IKEA trademark is distinctive. At the time of registration of the disputed domain name on February 25, 2015 it was one of the world’s most well-known global brands. IKEA is not a term that anyone would likely use descriptively. It is inconceivable to the Panel that the Respondent could have coincidentally chosen the disputed domain name without knowledge of the Complainant’s marks as it encapsulates the distinctive mark IKEA.”. Moreover, in the WIPO Case No. D2016-0432 “the element of bad faith is clearly established by the fact that the trademark IKEA is one of the most well-known trademarks in the world in connection with furniture and household items. In the WIPO decision No. D2017-2211 related to the domain name <ıĸea.com> in Punycode: “at the time of the registration of the disputed domain name the Complainant’s trademark and business had both been very well-known for many years; it is not plausible that the Respondent stumbled on the name in the disputed domain name, much less its relevant Punycode, by chance or serendipity. This alone strongly suggests a bad faith registration, with the motive of making use of the disputed domain name to deceive Internet users into believing that the website linked to the disputed domain name was linked to the Complainant and its brand.”
As indicated in many decisions, registering a well-known trademark is deemed bad faith registration considering indeed that the Respondent knew or should have known that its registration would be identical to the Complainant’s mark. Along these lines, WIPO Case No. D2002-0033 Ferrari S.p.A. v. Allen Ginsberg, the registration of a domain name related to a well-known trademark is a: “Respondent has registered the domain name <maserati.org> corresponding to the well-known or even famous trademark MASERATI which he must have been aware of”. In view of the trademark’s distinctiveness and well-known character of IKEA trademark, it is inconceivable that the Respondent was unaware of the existence of the Complainant’s registered trademark at the time of the registration of the disputed domain name, with which it is almost identical.
Furthermore, the Respondent has not replied to the cease and desist letter sent on March 20, 2020, consequently he has avoided to provide evidence of contemplated good-faith use. The fact that the disputed domain name is offered for sale via both Afternic and Network Solutions platforms is a further proof of bad-faith registration. The Respondent has indeed registered the disputed domain name having in mind the value of the Complainant’s trademark and with the aim to offer it for sale obtaining, therefore, profits from it. This aspect reveals the implausibility of any good faith use of the disputed domain name by the Respondent.
Currently, the disputed domain name is redirected to a parking page hosting pay-per-click links to the Complainant and to third party websites, this circumstance could not be deemed a good faith use because the Respondent receives profits by the pay-per-clink link as indicated in the WIPO decision: SAP SE v. Domains by Proxy, LLC / Kamal Karmakar, WIPO Case No. D2016-2497: “It is well established that where a domain name is used to generate revenue in respect of ‘click through’ traffic, and that traffic has been attracted because of the name’s association with the Complainant, such use amounts to use in bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396. Revenue will be generated by such visitors clicking on the provided links and it does not matter whether that revenue accrues to the Respondents or the operator of the parking site.”
Among the sponsored links displayed in the page, the first one is related to the Complainant, so the Respondent is aware of the existence of the trademark IKEA and targeted the parking page to include the Complainant’s trademark.
As displayed in the decision Owens Corning v. NA WIPO Case No. D2007-1143: “Even if the Respondent did not have any direct influence over what sponsored links were chosen, in this case it does not matter. The Respondent must have known that by using a parking service, some sponsored links would be generated. Since the Respondent knew that the term “Pink Batts” was one which could only be sensibly associated with the Complainant’s insulation products, she must also have known that any sponsored links generated by GoDaddy were likely to relate to insulation connected goods and services. Finally, even if the sponsored links had been to businesses unconnected with insulation, again in this case it would not matter. What is important is that the Respondent must have known that internet users seeking information about the Complainant’s products would then find themselves at a website upon which goods and services unrelated to the Complainant were advertised. In the circumstances, the Panel finds the use of GoDaddy’s domain name parking service was a bad faith use of the Domain Name”.
Therefore, the Respondent wants to capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users. Therefore, considering the high reputation of the trademark IKEA, we can claim such use amounts to bad faith.
The offer for sale of the disputed domain name for USD 300 exceeds the Respondent’s out-of-pocket costs, the fees for the registration and maintenance of a domain name .com is usually around USD 10 per year. Along the same lines, WIPO Case No. D2013-1152 Inter IKEA Systems B.V. v. Above.com Domain Privacy / Host Master, Transure Enterprise Ltd: “the “Mr. Smith” who communicated with the Complainant’s representative demanded USD 500 for the Domain Name and reported that he had listed the Domain Name on an auction website for any party to bid on. The stated amount substantially exceeds the Respondent’s likely out-of-pocket costs, given that the Domain Name had only recently been registered and the Registrar typically charges less than USD 10 for registration of a “.com” domain name (as indicated on the Registrar’s website). Thus, the Respondent’s conduct is consistent with the example of bad faith described in the Policy, paragraph 4(b)(i).”
The Respondent has been involved in other UDRP procedures as indicated also in the recent WIPO decision No. D2019-2982 Nicolas Ghesquiere v. THIS DOMAIN MAY BE FOR SALE AT HTTPS://WWW.NETWORKSOLUTIONS.COM, New Ventures Services, Corp, where the Respondent was New Ventures Services, Corp, “- The Respondent has been involved in numerous proceedings under the Policy, where the UDRP panels have found bad faith on the part of the Respondent, and the outcome of the proceeding was a transfer to the complainant (see, for example, Dr. Rebecca Parsons, ThoughtWorks, Inc. v. Perfect Privacy, LLC / This Domain May be for Sale at https://www.networksolutions.com, New Ventures Services, Corp, WIPO Case No. D2019-0866; SGII, Inc. v. New Ventures Services, Corp, WIPO Case No. D2019-2748; and Ashok Leyland Limited v. New Ventures Services Corp, WIPO Case No. D2015-0762).”. As indicated in such recent proceeding, similarly to the case at issue, the disputed domain name was redirected to a parking page containing sponsored links for clothes and accessories, including links to clothing and bags from “Balenciaga” to capitalize on the reputation and goodwill of the complainant’s mark.
In light of the above, the Panel concludes 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.
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