Decision for dispute CAC-UDRP-108658

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is the owner of the trademark IKEA, with several international and national trademark registrations worldwide, including the following:

• German Trademark Registration n. DE867152 of March 12, 1970, in class 20;
• S.A. Trademark Registration n. 1118706 of May 22, 1979, in classes 11, 20, 21, 24, 27;
• European Union Trademark Registration n. 000109652 of October 1, 1998, in classes 2, 8, 11, 16, 18, 20, 21, 24, 25, 27, 28, 29, 30, 31, 35, 36, 39, 41, 42;
• European Union Trademark Registration n. 000109637 of October 8, 1998, in classes 2, 8, 11, 16, 18, 20, 21, 24, 25, 27, 28, 29, 30, 31, 35, 26, 39, 41, 42;
• International Trademark Registration n. 926155 of April 24, 2007, in class 16, 20, 35, 43, designating also China.

I. The Complainant

The Complainant is the worldwide IKEA franchisor and is responsible for developing and supplying the global IKEA range.

II. The Respondent and the disputed domain name

The Respondent is Lorenzo Scalzone domiciled in Switzerland. The disputed domain name <casa-ikea.com> was registered on April 25^th, 2009 and is inactive. 

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

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 Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

1. The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Panel agrees that the disputed domain name is confusingly similar to the IKEA trademarks owned by the Complainant.

The "IKEA" trademark is entirely contained in the disputed domain name. The addition of the generic term "CASA" and "-" does not exclude the confusing similarity with the IKEA trademarks since these terms could be easily associated with the Complainant's business. Thus, they have no impact on the confusing similarity assessment.

The addition of the ".com" domain name extension does not prevent the likelihood of confusion between the disputed domain name and the Complainant's trademarks. 

B. The Respondent has no rights or legitimate interests in respect of the disputed domain name

Under paragraph 4(a)(ii) of the Policy, a complainant has the burden of establishing that a respondent lacks rights or legitimate interests in respect of a domain name, but this burden is light. It is sufficient in the first instance for Complainant to allege a prima facie case, and if the evidence presented is persuasive or yields a positive inference that Respondent lacks rights or legitimate interests, the burden shifts to Respondent to rebut the allegations. 

In this case, the Panel finds that the Complainant’s submitted evidence and allegations, to which the Respondent did not reply, are sufficient to establish a prima facie case of lack of rights and legitimate interests in the disputed domain name.

In particular, the Complainant denies that the Respondent has ever been authorized to use the IKEA trademark as a domain name. Moreover, the WHOIS information excludes that the Respondent is known by the sign IKEA.

Moreover, according to the evidence submitted by the Complainant, the disputed domain name was never actively used. Therefore, the domain name <casa-ikea.com> has not been used in connection with a bona fide offering of goods and services nor in a legitimate, noncommercial, or fair manner.

C. The disputed domain name was registered and is being used in bad faith

As far as registration in bad faith is concerned, the Panel finds particularly relevant the following circumstances:

i) the disputed domain name entirely contains the Complainant trademark "IKEA". The Complainant's trademarks were registered long before the registration of the disputed domain name (2009);

ii) the disputed domain name combines the Complainant's trademark IKEA with a descriptive term ("CASA") which could be associated with the Complainant's field of activity;

iii) IKEA is a well-known trademark and it is a made-up word.

These circumstances, in the absence of a reasonable justification by the Respondent, suggest that the Respondent was perfectly aware of the Complainant's trademarks and business at the time of the registration of the disputed domain name and that the disputed domain name was registered in bad faith.

As regards the use in bad faith, the leading case (Telstra Corporation Limited v. Nuclear Marshmallows Case No. D2000-0003) states that passive holding of a domain name does not prevent a bad faith finding. In order to assess bad faith, all the circumstances of the case must be considered. In this case, the facts suggest that the disputed domain name is also used in bad faith as it entirely contains the IKEA trademark, which is combined with descriptive terms related to the Complainant’s business. Therefore, it is hard to see how the disputed domain name could be used in a way that would not infringe the Complainant's trademark rights. 

It must also be considered that the Respondent never replied to the C&D letter that was sent by the Complainant.