IKEA has successfully had the domain name “ıĸea.co”, which was registered by an unauthorised third party, transferred to it following a complaint to the World Intellectual Property Organisation (WIPO).
Domain names are unique names that identify a website e.g. ipharbour.com on the Internet. When a user accesses a website, the domain name is translated to an IP address which defines the server where the website located. This translation is performed dynamically by a service called “Domain Name System” (DNS). Anyone can easily register a domain online for a minimal fee (although some suffixes e.g. “.gov” are restricted to the public). Similar to a trade mark, domain names allow brands to be identified and differentiated. More importantly, an accurate domain name at a well-established suffix such as “.com” is usually a marker of a website and brand’s authenticity.
Swedish furniture brand IKEA holds numerous trade marks that are utilised in connection with its online presence such as the websites “ikea.com”, “ikea.us”, and “ikea.eu”.
The Internet Corporation for Assigned Names and Numbers (ICANN) is the governing authority of the domain name system. As a non-profit organisation, it is responsible coordinating of some key components that keep the Internet running. ICANN is also responsible for establishing the Uniform Domain-Name Dispute-Resolution Policy (UDRP) which is used to resolve domain name disputes. This policy attempts to provide a mechanism for fast cost efficient resolution of domain name disputes by avoiding the court system and instead allowing these cases to be brought to one of a set of bodies that arbitrate domain name disputes. A domain registrant cannot purchase a domain name without agreeing to be bound by the UDRP.
On 29th October 2017, the disputed domain name (ıĸea.co) was registered and in November 2017, IKEA complained to the WIPO Arbitration and Mediation Center naming the registrant of the infringing domain as the respondent (link). The Mediation Center stated that the formal requirements to raise a dispute had been satisfied as per the requirements provided by the UDRP.
IKEA alleged that the domain was resolved to a survey used for phishing activities. The domain was registered with non-ASCII characters using a special encoding syntax called “Punycode”. This syntax translates ASCII characters to Unicode which is a limited character set. IKEA alleged that that the respondent made use of Punycode to register the disputed domain name with non-ASCII English script characters to create a domain name that is virtually identical to the IKEA’s trade mark. There are only minor differences in the names due to the different code used. The domain name in question does not have a dot on the “i” and the “k” is similar to a small uppercase “K”. As such, Nicolas Ulmer, the Sole Panellist found that the disputed domain name was virtually identical to IKEA’s trade mark and is confusingly similar to it.
IKEA stated that the fact that Punycode was utilised to conceal its identity and the absence of any legitimate interest showed that there was no indication of any good faith reason for the registration. Ulmer found in favour of IKEA and on 17th January 2018 ordered the disputed domain name “ıĸea.com” be transferred to IKEA.
While this is a clear example of the UDRP working as intended, this is not always the case or the end of the dispute. In January 2015, WIPO ruled in favour of Playboy with regards to the registration “playboy.london” which infringed the Playboy trade mark. It ordered the transfer of the domain to Playboy, the respondent Mr Ross, issued a claim in IPEC, the Intellectual Property Enterprise Court, a specialist court, part of the Business and Property Court of the High Court of Justice in England challenging the decision. However, in the end, the Court issued a decision which refused the remedies sought by Mr Ross.