FTFA: "Long story short, after much negotiation between their agent and my lawyer, I am allowed to keep the domain name IKEAhackers.net only on the condition that it is non-commercial, meaning no advertising whatsoever."
That could have been a lot worse. She gets to keep it, they don't see their brand diluted in any meaningful way or exploited commercially.
I count a whole pile of ad banners on the site, IKEA branding (including their colors and logos) everywhere. She really got off very light. And if she switches to another domain in time then there will be 0 harm.
She should just turn this site into an Ikea attack site, pointing out the weird charitable foundation status that Ikea uses to avoid paying taxes, and then migrate all this content to another site that includes other manufacturers.
If you understand even the basics of trademark law, you know that if IKEA were to do nothing at all in this case, that they would risk losing their IKEA trademark.
That's a fairly big price to pay, just to allow someone else to make money using the brand name the company spent decades building.
The fact that they were even willing to negotiate shows the company actually cared about the individual and wanted to try to come to a compromise that would suit both parties without involving a lawsuit.
In the end the author of the website shows everyone that money is what's most important to them, and that's their decision.
Both you and jacquesm seem to have the opinion that this site is run by an opportunistic profiteer parasitically leeching off of IKEA. In reality it's a DIY community that is very supportive of the IKEA brand and probably makes very little money, which is obviously driven more by the hacks than simply the IKEA brand itself.
It's depressing that this ruthless capitalist paranoia is so systemic in our society (USA). We should view these situations as opportunities for collaboration, not competition. IKEA could have turned this into a huge positive for everyone by embracing it and making it somewhat official.
Right...a C&D...so indicative of care and compromise. Never mind the bit about "give us your domain or we will take any legal action necessary." Her and her lawyer pushed for some small ground and IKEA eventually ceded it probably because it was a lot cheaper than a lawsuit. Furthermore, the "compromise" is still completely untenable for the future of the site, so it's still going to have to change the name, this only affords them some semblance of continuity during the transition.
Why are you so supportive of a large corporation bullying an individual and simultaneously critical of that individual? What did IKEA show is important to them in this episode? Something other than money? What do you think the website owner should do instead? Close up shop and go back to a day job?
Sorry, I just don't find any part of IKEA's actions "admirable" here. "Relatively unsurprising in today's aggressively litigious and paranoid socioeconomic climate," maybe.
The only things you are adding are:
(1) Suggesting a multibillion dollar coroporation license its trademark to a stranger on the internet for free.
(2) Suggesting a company that is being infringed on host the infringing website.
(3) Suggesting a company give away insider information and free product as some sort of reward for using their company name to make money for themselves.
I'm just trying to be playful when I say that you have the negotiating skills of a 12-year-old, but seriously, nobody on Earth would agree to those terms or suggest them outright.
Do this. Make a website called McDonald's burgers, use the McDonald's logo everywhere, and then put up a bunch of burger recipes and google ads.
Let me know when you get a bunch of free stuff from McDonalds and they start hosting your website. ;)
>(1) Suggesting a multibillion dollar coroporation license its trademark to a stranger on the internet for free. //
Why not? It's not like someone's suggesting to hand over the trademark itself.
IKEAhackers is a fan site that is promoting IKEA - and has been widely, for several years - at no cost and probably countable benefit to IKEA. Why not reward your fans for doing marketing for you?
The equivalent for McDonalds - McDoHackers - would have a series of outstandingly good reviews of McDonalds meals, it would give menu suggestions for meals at McDonalds. The minimal advertising would be for cupholders for your car that only fit McDonalds drinks, or for carry bags that let you buy more McDonalds food, or for companies that will deliver McDo for you so you can eat more McDonalds rather than buy other people's food (or make your own). Terror of terrors ... yes McDo would probably use the extra revenue you brought them to sue you as well, but that doesn't make that the ethical line.
Good we're talking fiction here. Otherwise I'd conclude (pun intended) that you were 'out to lunch' ;)
What do you base this statement on? The only cases that I've heard about where a company lost their trademark were nothing like this one, at all.
If not, can the site stay up, and is Jules going to be able to invest the necessary time, without ads?
As the first commenter on the article says:
your site HELPED developers and designers create new
products, and not only that, the last catalog was nearly a
tribute to YOUR BLOG! Telling us how we could use our
creativity with their products to make our homes our own –
isn’t that what IH is all about?
The big difference from the current situation is that he/she will need to redo the website to stop using IKEA logos and the IKEA name. I mean if you look at the site, it would be very difficult for someone to determine whether or not this was actually a branch, offshoot, or official project of IKEA, of which it is none.
They are making money by using someone else's name, and that's the problem.
I'm sure IKEA loves the idea of people experimenting with their furniture, but every company on the planet knows you can't give your trademark away, or you lose it.
The resolution is OK but they must know that you can't break even on $0 revenue, so it's a death blow to this brand in the long term. It gives her time to rebrand and relaunch.
More specifically, "Evidence of Registration and Use in Bad Faith" can be demonstrated that "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location" (see https://archive.icann.org/en/udrp/udrp-policy-24oct99.htm). In this case, it seems that the domain name holder is using the IKEA name to attract users for commercial gain. In a UDRP proceeding, IKEA would most likely be able to gain control of the domain name.
On a side note, the site is great. I am glad I found out about it.
That's exactly the problem. See you you used it as a 'brand'?
On one hand, trademark preservation is important.
On another hand, how many companies would kill for a community of "Raving Fans" like this? And in addition to enthusiasm, the site seemed very high quality and thus complementary to Ikea's marketing.
All this would cost maybe one person per year, maybe one and a half. If I can raise a few hundred thousand dollars a year extra this way by heavily promoting products from the site, I can easily justify it. That shouldn't be too hard a target, given that Ikea is a massive multinational. That's maybe a few hundred extra sales per store per year.
It's possible that Ikea considered something like that already and it doesn't make sense to do. It's not presented like that though.
Buy the site and pay the owner to keep on running it. If it's owned by IKEA there's no trademark dilution problem...
I think that would send the wrong signal to would-be copycats. I think the chosen solution, allow them to continue but non-commercially is a pretty good one. If it's a fan site then it should be non-commercial.
IKEA Hackers wasn't just some site using the IKEA name, it was a high-quality and well-established community. If IKEA had purchased this establishment, I don't think a reasonable person would conclude they would give the same treatment to just any other trademark infringer.
And even non-profit sites need money to pay for hosting.
Buy the site. Acquisition style. Now they keep the community, the fan base, the long tail, and the passionate founder.
He gets to work on it full time and they get rid of other peoples ads.
Right now the majority of the OBL's on the site are to what appears to be his Amazon store:
Ikea could redirect all 18,000 of those links to Ikea.com product pages instead of his personal amazon store.
In addition that type of community that the webmaster built is gold! 100s of thousands of comments, a huge Facebook Page, a very well done Pinterest page along with other social media accounts all for the taking.
The problem with these suits is usually not the specific case at hand but everybody else that will use the opportunity if they no longer defend their trademark vigorously. And buying out a site like that would probably not qualify as defense but as reward.
If the price was $0 or the former owner would pay a token fine and the site would then be run by the former owner but under the IKEA umbrella then it might work. But an actual payment for something that leveraged a brand would be a big mistake imo.
Just exactly what wrong signals did Google send when they bough Youtube?
Unless we are blind and skip the fact youtube willingfully hosted 90% of ifringe content.
I don't know where the music would have stopped if this guy had chosen to fight. I don't blame him for not doing so, but I hope the outcome would have been that he was fully entitled to run his site as he chose, so long as he attempted to avoid anyone thinking the site was officially run by Ikea.
The bigger problem, possibly, is that the site as a whole generally echoes the Ikea brand (thought not particularly strongly). This, in conjunction with use of the word "Ikea" could possibly give rise to the overriding possibility of confusion. At most, Ikea should have asked ikeahackers to tweak the design of the site a bit (maybe use some different colors).
I am not a trademark lawyer, so I'm open to being corrected. But I think ikeahackers could probably have prevailed in court, especially after some design tweaks.
I disagree, especially in non-US courts, largely because of the "commercial" nature of the site. Any revenue makes it commercial, that doesn't obviate fair use but it makes extremely difficult to win on that claim. People arrive here because of Ikea's brand and products, they see Ikea livery and designs and then are forwarded to purchase other products to the gain of the site owners.
The "New Kids" case fits quite well with the case in hand and recapitulates the test for whether nominative use is infringing or not.
One might feel that the Volkswagenwerk AG vs Church case mentioned makes Ikeahackers a winner [see the footnote for key differences!] but the test stands that there is (ibid.)
>"a nominative fair use defense provided he meets the following three requirements: First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service;  and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder." //
1- The product or service in question is not readily identifiable without use of the mark.
2- Ikeahackers uses no more of the mark than it needs to to identify the products in question.
3- It is a closer question whether the design of the site implies endorsement (for the same reasons as I noted with respect to likelihood of confusion), but some cosmetic changes to the site could probably solve this problem.
They use the mark in the URL and site design, which is more than is necessary to identify the origin of the goods mentioned on the site. They use the livery and typefaces (or look-alikes) and the site style matches IKEAs - eg the line drawn cartoons are close in style - and I'd say all these factors suggest an endorsement that is not clearly and prominently disclaimed (it is disclaimed on the site however).
Now all that with no commercial aspects to the use (no advertising) and it's looking a bit thin on the plaintiff's side; but with the commercial use ... in short the use doesn't feel [!] purely referential (or "nominative" in the language of the US caselaw) to me.
Just run a Foundation / Charitable organization (Stichting) under Dutch law, which is not-for-profit. It's possible to gain money with ads, or sell products. So you can pay the hosting. It's even allowed to give people a monthly income. As long it's not making profit (in the end you'll need 0).
A Charitable organisation (Stichting) is always 'non commercial' under Dutch law.
Just to mention Inter IKEA Systems B.V. is a company from The Netherlands.
Not sure what would happen if someone would host IKEAhackers.net from The Netherlands. To sue someone in the USA over "intellectual property rights" is quite easy, our system works quite different.
We're allowed to use someones name (Reclame Code Commissie), Dreft is allowed to make ads which say Ajax makes bad dish-soap. But this falls under another category, since IKEAhackers is not advertising for DealExtreme products.
> Verwarring alleen is niet genoeg. Verwarring met een origineel merk is alleen inbreuk als het gebruik ook commercieel is.
> Ook nietcommercieel gebruik van een merk kan merkinbreuk zijn. Het gebruik moet dan afbreuk doen aan de reputatie van het merk. Hier loopt een merkparodie al snel tegenaan.
Which says in English, that parodies are forbidden if "commercial use" and has "undermine the reputation".
IKEAhackers is a non-commercial (ads to pay hosting is NON profit) parody, right? And gains IKEA customers.
Would IKEAhackers.net be safer in The Netherlands?
That's really interesting. Perhaps then on can set up a charitable organisation to bankrupt your competition and flip it to be a regular company ... even giving things away can be commercial as that can effectively destroy another companies market.
Just not making a profit doesn't make you a "charity" in UK. You have to have different company structure, different accounting; different terms and operating conditions apply.
>We're allowed to use someones name (Reclame Code Commissie), Dreft is allowed to make ads which say Ajax makes bad dish-soap. //
That's pretty standard it's in UK and USA (15 USC 1115(b)) law too usually it goes along with reporting and parody exclusions and parallels copyright in this respect.
IKEAhackers.net isn't a parody. Parody means comic entertainment. If the hacks comprised throwing away the instructions and having at it with a nail gun then perhaps you'd qualify as a parody site.
>Not sure what would happen if someone would host IKEAhackers.net from The Netherlands. //
I don't think that matters. If you're addressing people in a country (and they're arguably addressing people in all countries that IKEA operate in) then there's likely to be redress against [alleged] IP infringements allowed for in the country where those people reside.
Based on what I see, the domain name was registered in "bad faith", shown by: "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location".
That seems reasonable, up to a point. To me it seems difficult to argue that point when the brand is already so large that some rinky dink site could never measurably impact the company's brand recognition/reputation.
This community of raving fans is less than a drop in a bucket for IKEA.
The best course of action from a legal perspective is often not the best course of action from a business perspective.
They could have easily just allowed him use of the name and if Ikea was ever in some kind of trademark lawsuit could have stated so. They chose not to for their own reasons, but the idea that business is forced to act this way and that Ingvar Kamprad is this grandfatherly old man who loves cheap furniture and not the ruthless head of a major world-wide corporation is asinine.
My first association with Jules is male (the only Jules I know is a guy), but the image gave me second thoughts.
Strictly speaking ikeahackers.net is using the mark in a commercial way (because of the advertising) and so by UK/EU TM law seems to be infringing. There does also appear to be a strong possibility of confusion - the site is very "on message" for Ikea IMO and uses their livery and it's own design to imitate well the Ikea style.
From the sites perspective they can use a different [distinct!] name and make clear they're not legally associated but only a fan site, acknowledge Ikea's RTM in the footer for example and disclaim association. That seems sufficient to differentiate and avoid possibility of actual confusion (though they could still be sued of course). Adding in products from other suppliers would help here too ... that of course is bad for Ikea, but they're the ones pointing the gun at their own feet.
From Ikea's point of view. License the site, pay the content creator a nice fat salary to carry on and thank them sincerely for marketing your products so well for you. It can't possibly be cheaper in lost good will and lawyers salaries to sue "Jules".
I almost thought they would start their own DIY community, but running a community is a ton of work and I doubt it would increase their sales by a large enough percentage to warrant it.
Dumb idea all round to act like this, and good luck to IKEAHackers.net
It's unlikely nobody would be aware of this if this was over "months of negociations", though. Still, I think this is a case where a lot of bureaucracy has clouded what should be a very clear cut case. It's possible if a reasonable top-of-the-chain higher-up is told about all this and it is clearly demonstrated that (assuming this is at all what the site owner wants) IH could be acquired or affiliated and the whole thing could turn from bad PR to good PR, they would tell legal/laywers to sod off.
So when you do something with the IKEA brand and furniture all kinds of 'reasonably considerations' that would flow from brand being owned by the mothership go right out the window.
Likely the only kind of employee the brand company has is IP lawyers.
I can only imagine being an artist, finding someone has created a site about my work, and then deciding that I should attempt to sue or censor that person.
IKEA should acquire / host this community on their dime & domain