официальный сайт ВОИС
Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам
Arbitration and Mediation Center
Inter Ikea Systems B.V. v. Ikea International Co. Ltd.
Case No. D2003-0965
1. The Parties
The Complainant is Inter Ikea Systems B.V., Netherlands, represented by Fross
Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Ikea International Co. Ltd.,Taiwan, Province of China, represented
by its administrative contact.
2. The Domain Name and Registrar
The disputed domain name <ikea-int.com> is registered with Melbourne
IT trading as Internet Name Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the
"Center") on December 6, 2003. On December 8, 2003,
the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide
a request for registrar verification in connection with the domain name at issue.
On December 9, 2003, Melbourne IT trading as Internet Name Worldwide
transmitted by email to the Center its verification response confirming that
the Respondent is listed as the registrant and providing the contact details
for the administrative, billing, and technical contact. The Center verified
that the Complaint satisfied the formal requirements of the Uniform Domain Name
Dispute Resolution Policy (the "Policy"), 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
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally
notified the Respondent of the Complaint, and the proceedings commenced on December 10, 2003.
In accordance with the Rules, paragraph 5(a), the due date for Response was
December 30, 2003. The Response was filed with the Center on December 26, 2003.
The Center appointed Gerd F. Kunze as the sole panelist in this matter on January 14, 2003.
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.
4. Factual Background
A. The Complainant
The Complainant is an internationally active company in the field of home furnishing
and household wares. The founder of the company started to use the trademark
IKEA in 1950 and published the first IKEA catalogue in 1951. Since then the
business has substantially grown and today the Complainant has 190 furnishing
stores in 31 countries on four continents. In Taiwan the Complainant opened
its first IKEA store in 1994 and in 1998 a mega store in downtown Taipei. Another
IKEA warehouse is situated in Tao-Yuan County.
The Complainant is the owner of over 1200 trademark registrations for the wordmark
IKEA and a design mark combining the word IKEA with graphical elements, in more
than 70 countries, and covering a wide range of products and services. Exhibit
F to the complaint contains a data bank printout providing a partial listing
of Complainant's IKEA trademarks worldwide and Exhibit G provides for a list
of over 60 trademark registrations and 6 pending applications of the Complainant
in Taiwan for the word IKEA in Latin characters and in Chinese characters and
its IKEA device mark. Many of them date back to 1987 and all were applied for
registration and (apart from the 6 pending applications) registered before 1997,
long before the Respondent registered the domain name <ikea-int.com>.
The trademarks are principally, but not exclusively being used for furnishing
and accessories and related services.
These facts are evidenced by the attachments to the Complaint and not contested
by the Respondent. The Panelist is satisfied that the documents submitted by
the Complainant truthfully reflect the factual circumstances of the case.
The Complainant administers, amongst others, a sophisticated and informative
website under the domain name <ikea.com> (providing links to the countries
where the Complainant operates) and a website, specifically directed to Taiwanese
customers under the domain name <ikea.com.tw>. On the Complainant's websites
the trademark "IKEA" is shown prominently.
B. The Respondent
The Respondent registered on August 28, 2002, the domain name <ikea-int.com>.
This domain name leads to a website of the Respondent where several skin care
products are advertised and a several links to the website "anynw.com"
are provided. The latter leads to a package website of Yahoo Taiwan, where products
may be ordered online.
5. Parties’ Contentions
The Complainant submits that the trademark IKEA is an acronym that is comprised
of the initials of its founder, Ingvar Kamprad, and the initials of the farm
where he grew up. Consequently it considers that the term IKEA has no meaning
in any language. The Complainant furthermore submits that the trademark IKEA
is internationally well-known, and that the Beijing No. 2 Intermediate People’s
court of China in June 2000, considered the mark IKE A to be well-known in China.
The Complainant considers the trademark IKEA to be well-known in Taiwan as well.
It not only refers to the IKEA outlets in the country, but also to press articles,
submitted in annexes to the Complaint. For example, in the Taiwan Headlines
dated December 28, 1999, it is mentioned that among international
furniture and hardware chains that are entering Taiwan, "Ikea and B&Q
stand out as the most recognized names among Taiwan consumers" and that
stores like Ikea are "revolutionizing Taiwan’s furniture business".
The Respondent does not contest the Complainant’s submission that its mark
IKEA is well-known internationally and in Taiwan. It believes that IKEA and
its company have different target consumers, since its business is to import
lanolin skin care products from Australia and New Zealand.
The Respondent submits that the company has been established on August 8, 2002,
under a Chinese name, composed of the name of its owner and manager and the
Chinese word for "international". As proof for this submission the
Respondent has added a document written entirely in Chinese and without any
translation into Latin script. Since the language of the proceedings is English,
and the Panelist cannot read Chinese characters, the document is of little value,
but the Panelist accepts that the Respondent is an established company, operating
under its name written in Chinese characters, as indicated in the Response.
The Respondent furthermore submits that the transliteration of the name of its
owner is "Ikea" and that the domain name, registered on August 28, 2002,
has been chosen by using the transliteration of the Chinese company name. According
to the Respondent, the domain name has been used to provide information about
the company and the products that were imported since 2002.
The Respondent furthermore, submits that it signed a one-year contract with
Yahoo Taiwan in order to set up a shopping website and in May 2003 the company
started to sell, at the Yahoo Taiwan shopping site, skin care products, imported
from New Zealand and Australia, which it considers to be totally different from
the IKEA furnishing and household goods. It furthermore submits that it plans
to run its shopping website by itself from May 2004 and that therefore it registered
the domain name <anynw.com> on November 3, 2003.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must
prove to merit a finding that the domain name of the Respondent be transferred
to the Complainant or cancelled:
1) The domain name is identical or confusingly similar to a trademark or service
mark ("mark") in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain
3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
As the Complainant has convincingly put forward, its trademark IKEA is, at
least in many commercial languages, an invented word with no meaning and therefore
inherently distinctive. Complainant's trademark registrations of the word IKEA
in Taiwan evidence that it has exclusive rights in that word in Taiwan, as in
many other countries. To the knowledge of the Complainant no other person has
registered trademark rights in the word IKEA for whatever goods or services
and the Respondent has not contested this submission.
Furthermore, IKEA is an internationally well-known trademark. Not only is the
Panel personally convinced that IKEA is a well-known trademark, the Complainant
has also submitted extensive evidence to prove the wide reputation of the mark.
The Respondent has not contested this evidence. It has also been recognized
in many earlier panel decisions that the trademark IKEA is well-known. As examples
Inter IKEA Systems B.V. v. Technology Education Center, WIPO
Case No D2000-0522 and Inter IKEA Systems B.V. v. Polanski, WIPO
Case No. D2000-1614, are referred to. Based on the facts and evidence submitted
by the Complainant the Panel is satisfied that also in Taiwan the trademark
IKEA is well-known. Furthermore, the Respondent has chosen to register its domain
name in the ".com" domain and not in the <.tw> country code
domain. Therefore, both the international fame and the high degree of knowledge
of consumers in Taiwan must be taken into consideration when considering confusing
similarity. Consequently, the trademark IKEA clearly enjoys a broad scope of
protection beyond the goods and services offered at the Complainant’s outlets
(also Art. 23(12) of the Taiwanese Trademark Law grants well-known marks protection
beyond similar goods and services).
The domain name <ikea-int.com> is not identical to the mark IKEA of the
Complainant, however there can be no doubt that it is confusingly similar. It
incorporates in its entirety the mark IKEA, followed by "-int", a
common abbreviation of the non-distinctive word "international". This
is the more true as the Complainant operates on an international basis. In a
similar case, the Panel has considered the domain name <ikeaworld.com>
to be confusingly similar to the mark IKEA (Inter IKEA Systems B.V. v. Chekroun,
WIPO Case No. D2000-0478). Given the fact
that IKEA is internationally well-known, consumers, becoming aware of the domain
name <ikea-int.com> will reasonably believe that it is for or related
to the global website of the Complainant. The Respondent argues that, when searching
in the Internet by typing IKEA in one of the major search engines, the result
would never be "www.ikea-int.com". This submission can for
all practical purposes not be verified since, when searching for IKEA for example
at Google, the engine starts listing main references to the Complainant as being
the first results from about 459 000 references to IKEA. The sheer number of
references to the Complainant’s mark is another sign for the fame of this mark.
At the same time it is obvious that combinations of IKEA with other terms, such
as "ikea-int", will show up much later than references to the mark
IKEA as such. It may therefore be true, that the visitor of the search engine
will discontinue searching, before arriving at a reference to the Respondent’s
domain name. However, if the Respondent expects users of the Internet to visit
its site by using the domain name <ikea-int.com>, it must try to promote
in one or the other way this domain name. Otherwise, its website would rarely
be visited and the purpose of registering the domain name would have failed.
When using, in whatever manner, the domain name <ikea-int.com>, the Respondent
will automatically create confusion with the well-known trademark IKEA. The
same is true for such Internet users who intentionally type "ikea-int",
thus trying to arrive at an international website of the Complainant. In that
context it does not matter that the products of the Respondent are different
from those of the Complainant. Because the Complainant’s mark IKEA is so well-known,
persons being confronted with the use of the domain name of the Respondent for
skin care products will either believe that the Complainant now also has included
such products in its range of products (even if the main products of the Complainant
are in the furnishing and household goods field, the Complainant, at least in
a number of its mega stores, also offers some totally different products such
as food products; visitors of these stores are therefore already accustomed
to find other than furnishing goods in these stores) or assume that there exists
some relationship between the Complainant and the business operating under <ikea-int.com>
or at least that this business is sponsored by the Complainant.
B. Rights or legitimate interests
There cannot be any doubt that the Respondent has no right to use the mark
IKEA of the Complainant as its domain name. The Complainant has not consented
to the Respondent's use of the domain name.
The Panel accepts that the Respondent may operate a business under the name
(or a part of that name) of its owner, combined with the term "international"
(in Chinese). In its Response, the Respondent expressly states that its name
is as indicated in the Response in Chinese characters (which the Panel of course
cannot read and is not supposed to be able to read, since the language of the
proceedings is English). However, the Respondent has not explained to the satisfaction
of the Panel why it uses the domain name <ikea-int.com> and uses as (transliterated,
respectively as concerns the term "international", translated) name
of the registrant of this domain name the company name "Ikea International
Co, Ltd". The Complainant has submitted, and the Respondent has not contested,
that there exists no company registration for that name under the address given
by the Respondent as Registrant. The Respondent submits that "Ikea"
is the transliteration of the Chinese name of its owner. Its owner is apparently
the person who is indicated as administrative and technical contact,
who submitted the Response and whose name is indicated as "Ikea Chou".
However, the facts and evidence submitted by the Respondent for the correctness
of its own transliteration are not convincing. First, the name of the owner
of the Respondent consists (at least) of two parts, the part Chou not being
used in the domain name, nor in the company name. Second, even the Panelist
can see that the Chinese sign, used by the Complainant for its trademark IKEA
in Chinese, is not identical to the Chinese sign used by the Respondent for
one part of its name, and transliterated by itself as "Ikea". Why
should therefore the pronunciation (and the transliteration) be exactly the
same, as the Respondent submits, without offering any proof? Finally it is most
surprising to note that, as evidenced by the Complainant, according to WHOIS
the administrative contact for the domain name <anynw.com>, which the
Respondent expressly submits to have registered in its name (with this submission
the Panelist will deal below C), is a Mr. Yi Chia Chou and that the company
name of the registrant of that company is indicated as Yichia International
(Yichia being quite apparently a combination of "Yi" and "Chia"),
with the same address as the address of the Respondent. Why should the Respondent
use such different names in English for its Chinese Company name?
For the Panelist there is only one explanation: The Respondent intended to use
the word "ikea" that – contrary to "Yi Chia" – does not
at all sound like a Chinese name, for its domain name <ikea-int.com>.
The Respondent cannot, therefore, deduct from its arbitrary transliteration
of its owner’s Chinese name into "Ikea" a right of its own at this
name. On the contrary, the Panel is satisfied that the correct transliteration
of the name of the owner of the Respondent and of the Respondent’s company name
is the one used more recently by the Complainant, when registering the domain
name <anynw.com>, i.e. "Yi Chia" respectively "Yichia".
None of the circumstances listed under 4(c) of the Policy, possibly demonstrating
rights or legitimate interests, are therefore given. The Respondent has submitted
that its online shopping center is set under the package website that it bought
from Yahoo Taiwan and that the name of its online shop is "Any" combined
with Chinese characters having the meaning of "(Any) brave New World".
The Respondent registered on November 7, 2003, the domain name <anynw.com>,
being an abbreviation of the before mentioned name of its online shop. It explains
that it intends to run its own shopping website under that name from May 2004,
and that this was the reason that it has registered that domain name. The Respondent
furthermore submits that, when promoting its brand, the company uses always
the name of the online shopping center of which the hyperlink is "http://sh1.yahoo.edyna.com/ikea-int/index.asp".
Contrary to its submission that it registered the domain name <anynw.com>
for its future own business, it uses already now this domain name as principal
name for the shopping site "www.anyw.com".
From these submissions, and failing any submissions and evidence of the Respondent
(in English) about its use of the domain name <ikea-int.com>, the Panel
deducts that the sole use made by the Respondent of the domain name <ikea-int.com>
is to provide a link to an advertising site of the Respondent, where references
to the name of its online shopping center (which at the Internet is presented
at "Yahoo shopping") and references to its further domain name <anynw.com>
are made. Using one of these links, an Internet user will arrive at the same
before mentioned shopping website ("www.anynw.com") where it will
arrive when directly using the domain name <anynw.com>. Such use of the
domain name <ikea-int.com> cannot be considered to be a bona fide
offering of goods or services. No doubt, the Respondent is not known at all
under the name <ikea-int.com>, since it apparently never became active
under that name. On the contrary, it uses already now the domain name <anynw.com>
as principal name for the shopping site "www.anyw.com" and may be
known under its original name in Chinese characters.
The Panel concludes that the Respondent has no rights or legitimate interests
in the domain name <ikea-int.com>.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent knew the mark IKEA of the Complainant
when it registered the domain name <ikea-int.com>. The Respondent does
not object to this submission of the Complainant; it is of the opinion that
it could chose that name in view of the difference of the goods and services
offered. As already said before, the Respondent overlooks in that context that
IKEA is an internationally well-known mark and therefore enjoys a very broad
scope of protection far beyond the household goods and related services offered
by the Complainant. The Panel is satisfied that skin care products are not so
totally different from household goods that any danger of confusion of consumers
would be excluded.
As already explained above B, the Respondent failed to explain why, when it
registered the domain name <anynw.com>, which is the abbreviation of the
name of its online shopping site, it used a different company name Yichia International
Co Ltd and why the name of the administrative contact (who apparently is the
owner of the company) in that case is transliterated into "Yi Chia Chou"
and not into "Ikea Chou".
Failing any submission of the Respondent to this fact the Panelist is satisfied
that both domain names have been registered by the same company (as admitted)
and the same person as its administrative contact, simply using different transliterations
of its Chinese name, which is the real name of the company and of its owner
(as admitted by the Respondent). The Panel concludes that the only reason for
the Respondent to have transliterated a part of its owner’s name and its company
name into "Ikea" has been to be able to make use of the well-known
name IKEA of the Complainant. If this was the intention of the Respondent the
Panel is satisfied that it adopted the domain name <ikea-int.com> for
the purpose of attracting and diverting web traffic to its website for commercial
gain. Although the Respondent’s trading activities do not extend to the goods
traded in by the Complainant, likelihood of confusion by Internet users as to
the relationship of the business of the Respondent with the Complainant cannot
be excluded (see above 6A). The Respondent denies any promotion of its business
through the domain name <ikea-int.com>. However, what should have been
the reason to register that domain name and what should have been the reason
for establishing a website "www.ikea-int.com" and for providing on
that website links to its shopping website, if not to promote its business?
The Respondent furthermore contradicts itself by stating that "www.ikea-int.com"
is the company’s main website, and that "anynw.com" "will
be" its online shopping website.
In conclusion, the Panel is satisfied that, by using the domain name <ikea-int.com>,
the Respondent has intentionally attempted to attract, for commercial gain,
Internet users to its website or other on-line location, by creating a likelihood
of confusion with the Complainant’s mark as to the source, sponsorship, affiliation,
or endorsement of its website or location.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy
and 15 of the Rules, the Panel orders that the domain name <ikea-int.com>
be transferred to the Complainant.
Gerd F. Kunze
Date: January 27, 2004