WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nokia Corporation vs. Private
Case No D2000-1271
1. The Parties
Complainant is Nokia Corporation, which is a corporation organised under the laws of Finland and with its principal place of business in Helsinki, Finland. Its address is indicated as P.O Box 226, FIN-00045 NOKIA GROUP, attn: K.J. Antila. Its authorised representative in this proceeding is Domain Network Limited, 2 East Poultry Avenue, London EC1A 9PT, United Kingdom, attn. Frida Fällman Rymo.
BulkRegisterīs Whois database indicates Respondent in this case as "Private" (i.e. no name of a company nor of an individual). Its postal address is indicated as Parkovaya Str. 12a-24, Moscow, RU 312022, Russia. No telephone or telefax numbers are available, nor any e-mail address.
2. The Domain Name and Registrar
The domain name at issue is "wwwnokia.com" and the registrar is BulkRegister.com. with postal address 7 East Redwood St, 3rd Floor, Baltimore, MD 21202, United States.
3. Procedural History
A Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the Center) on September 26, 2000, in e-mail form and on September 28 in hardcopy form. On September 28, 2000, the Center acknowledged receipt of the Complaint.
Having sent, on September 29, 2000, a Verification Request to the Registrar, the Center received the same day a Registrar Verification. That Verification indicated
(a) that a copy of the Complaint was received by the Registrar on September 29, 2000
(b) that the domain name at issue, "wwwnokia.com", is registered with BulkRegister.com
(c) that Respondent is the current registrant of the domain name
(d) that WHOIS Bulkregister.com indicates the domain name registrant as "PRIVATE (WWWNOKIA-COM-DOM) with the address in Moscow indicated above
(e) that the domain name at issue is "WWWNOKIA.COM"
(f) that Administrative Contact and Technical Contact is "Alex Vorot (AV6-BR), Free Domains Parking, Mira Prospect 120-14, Moscow, RU 180012, RU."
(g) that Record was created on 2000-02-22 when it was also last updated, and that it expires on 2001-02-22
(h) that domain servers in listed order are: "PENDULUM.MAXIM.NET 126.96.36.199" and "NS.NNW.NET 188.8.131.52."
(i) that the Uniform Domain Name Dispute Resolution Policy applies to the domain name at issue, and
(j) that the current status of the domain name is Registrar LOCK.
Having verified that the Complaint satisfied the formal requirements under the Policy and the Rules, the Center issued, on October 3, 2000, a Notification of Complaint and Commencement of Administrative Proceeding. This Notification, with enclosures, was sent by Post/Courier to Privateīs above-mentioned address in Moscow and to Alex Vorotīs address as also indicated above; the Complaint, without attachments, was also sent by e-mail to firstname.lastname@example.org and to Mr Vorotīs e-mail address. Furthermore, the Notification was e-mailed to Complainant, to ICANN and to the Registrar.
Having received no Response from Respondent, the Center issued, on October 24, 2000, a Notification of Respondent Default which was sent to Respondentīs two above-mentioned e-mail addresses and also to Complainant.
Having invited Mr. Henry Olsson to serve as a Sole Panelist in this case and having received, on November 2, 2000, Mr Olssonīs Statement of Acceptance and Declaration of Impartiality, the Center issued, on the same day, a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr Olsson was formally appointed as Sole Panelist. The Projected Decision Date was November 15, 2000.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.
4. Factual Background
In the Complaint, Complainant agrees, in accordance with Paragraph 3(b)(xiii) of the Rules, to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer the domain name "wwwnokia.com" to the jurisdiction of the courts in the United States where the Registrar BulkRegister is located.
Furthermore, Complainant asserts that no other legal proceedings have been commenced or terminated in connection with or relating to the domain name wwwnokia.com.
It appears from BulkRegisterīs Verification Response that the domain name at issue was registered on February 22, 2000, and that the Uniform Domain Name Resolution Policy applies to the domain name.
5. Party Contentions
As a general background, Complainant contends that it discovered the domain name registration and the site to which it is pointed in September, 2000. As the identity of Respondent is not revealed from the WHOIS database, Complainant has not been able to attempt to solve the matter amicably.
Complainant contends, that the three requirements of Paragraphs 4a(i), 4a(ii) and 4a(iii) of the Policy have been met and discusses each of those requirements as indicated below.
Confusing similarity with Complainantīs trademark
First, Complainant contends that the domain name at issue is confusingly similar to Complainantīs trademark "Nokia". That mark is registered in a great number of countries world-wide, including Russia where Respondent is located. The trademark is also registered in combinations with other words in a number of countries, for instance NOKIA-CONNECTING PEOPLE. The Complaint is, however, mainly based on the registration of Nokia as a word mark in Class 09 in Russia as of June 2, 1987, under number 81817. To support its contentions, Complainant has submitted copies of that registration and a list of all Nokiaīs trademark registrations worldwide.
According to Complainant Nokia is without doubt considered as a well-known mark according to Article 6bis of the Paris Convention for the Protection of Industrial Property in the majority of countries which are party to that Convention.
Complainant has established its main website under the generic top level domain name "nokia.com" (www.nokia.com) and has also established local websites under country-specific domain names in a number of countries.
Complainant contends that the domain name at issue consists of the trademark Nokia with the addition of "www" (acronym for "world wide web"). A Panel has in an earlier decision found that the letters "www" have no distinguishing capacity in the context of domain name; in fact they have the effect of focusing particular attention on the succeeding word and make casual readers to assume that the domain name is in fact comprised only of the succeeding word. It is, in the view of Complainant, obvious that the domain name is designed with the intention to take advantage of mistakes that Internet users are likely to make when intending to visit Complainantīs main website.
In the view of these circumstances, Complainant contends that the relevant part of the domain name at issue is "Nokia" and that the domain name registration "wwwnokia.com" is clearly confusingly similar to the trademark owned by Complainant
Rights or legitimate interests
Complainant contends that Respondent has no legitimate interest in the domain name "wwwnokia.com." Complainant has not licensed, expressly or implicitly, or otherwise permitted Respondent to use the trademark "Nokia" or to apply for any domain name incorporating the trademark "Nokia". Complainantīs investigation has not revealed any other facts or elements which could justify prior rights or a legitimate connection to the names "Nokia" and/or "wwwNokia". Respondent is not otherwise known to Complainant or to the public under the names in question, either in business or personally.
In addition, the domain name at issue is pointed at a Portal "best of the web" (www.bestoftheweb.com) which contains links to websites offering a wide range of products, among them electronics. Therefore, the underlying interest of Respondent must, in the view of Complainant, clearly be to attract customers to the site or alternatively to sell the domain name to Complainant. Nokia has registered its trademark both in Russia and elsewhere for, among other matters; such which are mentioned on Respondentīs website. Furthermore, as Nokia is a well known mark under the Paris Convention it has a protection which extends also to goods and services for which it is not registered.
In view of these circumstances, it is, according to Complainant, clear that Respondent has no legitimate interest in the domain name wwwnokia.com.
Registration and use in bad faith
As then regards registration and use in bad faith, Complainant first contends that Respondent must have been, and is, well aware of the notorious trademark Nokia and that this must have been the sole reason behind the registration and use of the domain name at issue. The trademark "Nokia" is the 5th most valuable brand in the world according to a recent survey, and for notorious trademarks there is always a risk of dilution; the existence of the domain name "wwwnokia.com" and the website to which it is pointed will most certainly contribute to the erosion of the reputation and goodwill of Complainantīs trademark on a global basis. Furthermore, the domain name is currently pointing at a number of websites offering products similar to those for which the trademark "Nokia" is registered; in the view of Complainant, Respondent uses the value of Complainantīs trademark to attract Internet users who for instance mistype or misspell Complainantīs trademark in this context. It is consequently clear that Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainantīs trademark as to source, sponsorship, affiliation or endorsement of the website at issue and/or a product on that website.
Complainant furthermore contends that the commercial relationship between Respondent and the website to which the domain name is currently pointed has not been clarified. It can, however, be assumed that Respondent is deriving financial benefits from the situation either by directing Internet users to the relevant site or by commercial arrangements with third parties owning websites to which the Portal is presently linked.
It is, according to Complainant, also possible that the registration and use of the domain name has been made with the purpose of interrupting the business of Complainant and thereby attempting to force Complainant to purchase the domain name for valuable consideration in excess of out-of-pocket costs directly related to the domain name.
For all these reasons, Complainant contends that Respondentīs activities constitute registration and use in bad faith of the domain name registration "wwwnokia.com".
Respondent has not submitted any Response and is in Default.
6. Discussions and Findings
Rule 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, these rules and any rules and principles of law that it deems applicable.
In the case of a Default by a Party, Rule 14 prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate. In this case Respondent has not submitted any Response and has consequently not, despite the opportunity given, contested any of the contentions by Complainant. The Panel will therefore have to operate on the basis of the factual circumstances contained in the Complaint and the documents available to support the contentions.
Applied to this case, Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(a) that the domain name registered by Respondent is identical or confusingly similar to a trademark or a service mark in which Complainant has rights,
(b) that Respondent has no rights or legitimate interests in the domain name, and
(c) that the domain name has been registered and is being used in bad faith.
In the following part of the decision, the Panel discusses each of these elements.
(a) Identity or Confusing Similarity
The domain name at issue is "wwwnokia.com".
The domain name incorporates the trademark Nokia with the addition of "www" and of the suffix "com." As has been noted in previous decisions, also by this Panel, the latter suffix is, at least in principle, meant to indicate that the domain name is intended to be commercial. As regards the notion "www" Complainant has referred to an earlier Panel decision according to which these letters have no distinguishing capacity in the context of domain names. This Panel agrees with this conclusion.
In view of these circumstances the Panel concludes that in fact the domain name at issue is confusingly similar to Complainantīs trademark "Nokia".
(b) Rights or legitimate Interests
Complainant has not licensed or otherwise authorised Respondent to use Complainantīs trademark or to apply for any domain name incorporating the trademark "Nokia" and there is no relationship between Respondent and Complainant in any sense relevant to the domain name at issue.
In addition, Respondent has failed to invoke any circumstances which could demonstrate, pursuant to Paragraph 4.c of the Policy, any rights or legitimate interests in the domain name at issue.
On the basis of those circumstances, the Panel considers that Complainant has sufficiently established that Respondent has no rights or legitimate interests in the domain name at issue.
(c) Registration and Use in Bad Faith
To show that bad faith exists, Complainant has to present evidence that such bad faith exists at least in one of the situations mentioned in paragraphs 4.b (i) to (iv) of the Policy.
In this respect Complainant has first invoked that "Nokia" is a notorious and internationally very well known mark and that the websites to which the domain name points offer products similar to those for which Complainantīs trademark is registered. Complainant has also contended that it can be assumed that Respondent is, directly or indirectly, deriving financial benefit from the use of the domain name at issue. The Panel concludes that these factors and other circumstances invoked by Complainant in fact indicate that Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or websites to which the domain name points, by creating a likelihood of confusion with Complainantīs trademark as to the source, sponsorship, affiliation or endorsement of Respondentīs website, as indicated in Paragraph 4.b.(vi) of the Policy.
By not submitting a Response, Respondent has failed to address these allegations.
It should be noted that Complainant has also suggested that it is possible that the registration and use of the domain name at issue has been made with the purpose of disrupting the business of Complainant and that his conduct therefore would be in violation of Paragraph 4.b.(i) of the Policy. The Panel finds, however, that at this point of time this suggestion is hardly supported by evidence.
On the basis of the findings as regards Paragraph 4.b.(vi) of the Policy, the Panel concludes that the registration and use of the domain name at issue has been registered and is being used in bad faith as mentioned in that Paragraph.
On the basis of the foregoing considerations the Administrative Panel concludes that the domain name wwwnokia.com is confusingly similar to Complainantīs trademark Nokia, that Respondent has no rights or legitimate interests in respect of the domain name and that Respondentīs domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4.i of the Policy and in accordance with the request by Complainant, the Administrative Panel requires that the domain name wwwnokia.com be transferred to Complainant.
Dated: November 3, 2000