WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Nokia Corporation v Nokia Ringtones & Logos Hotline

Case No. D2001-1101

 

1. The Parties

The Complainant is NOKIA CORPORATION, a corporation organised under the laws of Finland, having its principal place of business in Espoo (P.O. Box 226, 00045 Nokia Group), Finland and represented by Tuukka Airaksinen, ("the Complainant").

The Respondent is NOKIA RINGTONES & LOGO HOTLINE, an owner-operator business belonging to Mr. Glenn Clowes of 18 Portland Drive, The Rock, Telford, Shropshire TF3 5EW, United Kingdom and represented by D. Saunders Esq. ("the Respondent").

 

2. The Domain Name and Registrar

The domain name at issue is <worldnokia.com>. The Registrar is Melbourne IT, trading as Internet Names WorldWide (INWW), Level 2, 120 King Street, Melbourne, Victoria 3000, Australia ("the Registrar").

 

3. Procedural History

The complaint was submitted electronically with the World Intellectual Property Organization Arbitration and Mediation Center (The "WIPO Center") on September 5, 2001. The hardcopy under cover of a letter of the same date was received on September 10, 2001, ("the Complaint"). An Acknowledgement of Receipt was sent by the WIPO Center to the Complainant dated September 5, 2001.

On September 7, 2001, a Request for Register Verification was transmitted to the Registrar. On September 10, 2001, the Registrar confirmed by e-mail that the domain name <worldnokia.com> is registered with the Registrar and that the Respondent is the current registrant of that domain name.

On September 11, 2001, a Notification of Complaint and Commencement of Administrative Proceedings (the "Commencement Notification") was transmitted by email and by courier to the Respondent, setting a deadline of October 1, 2001, by which the Respondent could make a response to the Complaint.

On September 21, 2001, the Respondent submitted its response by email to the WIPO Center. The hard copy under cover of a letter of the same date was received on September 25, 2001, ("the Response"). An email was sent to the WIPO Center by Mr. Glenn Clowes on September 24, 2001.

On September 24, 2001, the case manager at the WIPO Center sent the Respondent a Response Deficiency Notification, stating that the Response did not contain the full statement specified in the Rules, paragraph 5 (b) (viii).

On September 25, 2001, Respondent submitted an amended Response by email.

On October 5, 2001, the WIPO Center sent a Notification of Appointment of Administrative Panel and projected decision date by email to the parties, in which Wolter Wefers Bettink was appointed as the Sole Panelist.

 

4. Factual Background

On the basis of the documents submitted by the parties the following facts can be established as agreed between parties or insufficiently disputed.

The Complainant is the owner of the trademark NOKIA, which has been registered worldwide, amongst others in the United Kingdom and the European Union (GB Reg. No. 1526042, registered February 6, 1993 and CTM Reg. Nos. 340836, registered September 9, 1998 and 871194, registered March 24, 2000).

Respondent is an owner-operator business selling ringtones and other products and services to mobile phone owners. Respondent has registered the domain name <worldnokia.com> on January 9, 2001.

The Complainant summoned the Respondent on April 2, 2001, to stop offering Nokia logos, to stop using the mark NOKIA as a name for his products and services and to transfer the domain name <worldnokia.com>. In reaction to this letter Respondent removed the infringing material from his website and redirected it to <dialatonez.com>. Respondent did not, however, transfer the domain name <worldnokia.com> to Complainant. On August 20, 2001, Complainant summoned Respondent once more to transfer the domain name <worldnokia.com>.

 

5. Applicable Rules

Paragraph 4 (a) of the Policy directs that Complainant must prove each of the following:

(i) the domain name in issue is identical or confusingly similar to Complainant's trademark, and

(ii) Respondent has no rights or legitimate interest in respect of the domain name, and

(iii) the domain name has been registered and is being used in bad faith.

Paragraph 4 (b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of Paragraph 4 (a) (iii) above.

Paragraph 4 (c) of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondentís rights or legitimate interest to the domain name for the purpose of Paragraph 4 (a) (ii) above.

 

6. Partiesí contentions

The Complainant states in the Complaint that it owns the trademark NOKIA, registered inter alia in the United Kingdom and the European Union. According to Complainant the trademark NOKIA is a well-known trademark within the meaning of article 6bis of the Paris Convention on the Protection of Industrial Property.

The grounds for the Complaint are:

(1) the domain name <worldnokia.com> is confusingly similar to Complainantís trademark NOKIA in accordance with Paragraph 4 (a) (i) of the Policy. The suffix of the domain is "nokia", which is identical to the Complainantís trademark. The prefix is "world", which is a common word and cannot be regarded as distinctive. The prefix refers to the global character of the Internet and to the fact that the services offered by the Respondent can be accessed from many countries. The combination of a well-known and distinctive trademark and a descriptive word (in this case "world") is sufficient to establish confusing similarity with the trademark for the purposes of the Policy. The addition of ".com" is a necessary element of any domain name registered under that root and is, therefore, not distinctive;

(2) the Complainant states that the Respondent has no rights or legitimate interests in respect of the domain name <worldnokia.com> as provided in Paragraph 4 (a) (ii) in connection with Paragraph 4 (c) of the Policy.

The Complainant has not licensed or otherwise permitted the Respondent to use the trademark NOKIA. There is no relationship between the Complainant and the Respondent. The Respondent is not commonly known by the name Nokia or World Nokia. The fact that the Registrantís name is NOKIA RINGTONES & LOGOS HOTLINE does not establish any rights to the domain name because the name is obviously adapted in order to refer to the fact that the Respondent offers logos, ringtones, software and other products and services to owners of NOKIA-marked phones. The domain name is in fact owned by a private individual hiding behind a false name (NOKIA RINGTONES & LOGOS HOTLINE).

(3) The Complainant states the domain name <worldnokia.com> was registered in bad faith as provided in Paragraph 4 (a) (iii) in connection with Paragraph 4 (b) of the Policy.

The Complainant alleges that Respondent intentionally attempts to attract users to his website by using the registered trademark NOKIA for his own commercial gain. This is done by creating the impression of association with the Nokia Corporation or similarly that the Complainant has approved of the content of the Respondentís website, which it has not. Because the services and products offered by the Respondent are in the field of mobile phones, and especially phones made by the Complainant, the likelihood of confusion exists between the Complainantís trademark and the goods and services of the Respondent. The unauthorised sale of NOKIA logos by the Respondent, is clearly an infringement of the Complainantís trademark and, as such, is evidence of bad faith. In reaction to Complainantís Cease and Desist Letter, Respondent removed the infringing material from the website and directed the domain to point to <dialatonez.com>. The domain name <worldnokia.com> is still used to direct customers to the Respondentís website. The re-direction illustrates that the Respondent has tried to "hide" behind a different domain while still being able to attract customers. In conclusion, the Complainant states that the domain name Registrant intentionally attempted to attract, for financial gain, Internet users to the Registrantís website or other on-line locations, by creating the likelihood of confusion with the Complainantís trademark as to the source, sponsorship, affiliation, or endorsement of the Registrantís website or location of the product or service on the Registrantís website or location.

In the Response, Respondent states that the domain name <worldnokia.com> is used by its proprietor Mr. Glenn Clowes for his business in the name of Ringtones & Logos Hotline. This name was used to enable Mr. Clowes to obtain a P.O. Box number in England, being unable to do this in his personal name.

Respondent states that the domain name <worldnokia.com> was not used in bad faith or for the purpose of misleading potential customers. The choice of the name <worldnokia.com> was the result of two factors, namely, the fact that Nokia Ringtones & Logos Hotline was set up to operate internationally, coupled with the fact that the scope of the service to be offered by the company was only compatible with Nokia mobile phones. The transfer of traffic from <worldnokia.com> to <dialatonez.com> was not done in bad faith, but to protect Respondentís livelihood should the decision of the Panel require that the domain name <worldnokia.com> be transferred to the Complainant. Respondent also states that he is concerned that the purpose behind the Complainantís attempt to deprive him of his domain name is not primarily to protect its name, but to eliminate or minimise effective competition in the market for Nokia ringtones and logos within the United Kingdom.

 

7. Discussion and Findings

a. Trademark rights

Complainant has provided sufficient evidence of its rights to the trademark NOKIA, well-known worldwide and in particular within the European Union and the United Kingdom.

b. Identical or confusingly similar

The domain name <worldnokia.com> is clearly confusingly similar to Complainant's trademark NOKIA. The domain name incorporates the well-known trademark NOKIA with the generic word "world" and the suffix ".com" (which indicates that the domain name is registered in the .com gTLD). It is clear that in this combination the well-known and distinctive trademark NOKIA stands out so that the public may think the domain name is somehow connected to the NOKIA trademark. (See e.g. WIPO Case No. D2000-1774 Nikon v Technilab (<nikondealer.com>, <nikondealers.com> and <niconcamera.com>); WIPO Case No. D2001-0733 SAP v Andrew Sparrow (<sap-ag.com>, <sap-world.com> and <sap-partners.com>); WIPO Case No. D2000-0464 Toshiba Corporation v Distribution Purchasing and Logistics Corporation (<toshibastore.com>) and WIPO Case No. D2001-0160 Daimler Chrysler AG v Donald Drummond (<mercedesshop.com>).

In view of the above, it is clear that the domain name and the trademark are confusingly similar. The ability of the word "world" to distinguish the domain name from Complainantís trademark is limited. The Panel finds that the Respondent does not create a new or different mark in adding the noun "world" and that this addition does not alter the likelihood of confusion with Complainantís trademark.

c. Rights or legitimate interests

Under paragraph 4 (c) of the Policy, Respondent may demonstrate that it has a right or legitimate interest to a domain name for the purpose of Article 4 (a) (ii), inter alia, by providing evidence of any of the following circumstances:

"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

The domain name <worldnokia.com> has been used by Respondent to offer logos, ringtones, software and other products and services to owners of mobile phones. Respondent has stated that the products offered by Respondent are only compatible with the Nokia mobile phone and that it was for this reason that the name "worldnokia" was used. As was held by the Panel in, inter alia, (WIPO Case No. D2000-0079 Motorola Inc. v NewGate Internet Inc.; WIPO Case No. D2000-0113 Stanley Works and Stanley Logistics Inc. v Camp Creek Co.; WIPO Case No. AF-0126 Mikimoto (America) Co. v Asanti Jewellers Ltd; WIPO Case No. D2000-1201 R.T. Quaife Engineering Ltd v Luton) a licensee or a dealer, agent or distributor of products of the trademark owner or of compatible products does not per se have a right to a domain name which includes that trademark. It follows that Respondent in this case would only have a right to the domain name <worldnokia.com> if Complainant had specifically granted that right. Respondent has not contested that Complainant has not licensed or otherwise permitted Respondent to use the trademark NOKIA. The mere fact that Respondent sells logos and ringtones compatible with NOKIA mobile phones is not sufficient for Respondent to claim a legitimate interest. As decided by the Panel in WIPO Case No. D2000-0079 Motorola Inc. v NewGate Internet Inc.:

"The use of a mark as a domain name clearly goes further that what is required merely to resell products."

Furthermore, Respondent initially used the domain name for a website on which it offered NOKIA logos - which had been illegally copied - to owners of mobile phones.

Moreover, the Panel found that Respondentís domain name <worldnokia.com> directs to <http://www.dialatonez.com>, which website - contrary to Respondentís statements - is not restricted to products for Nokia mobile phones, but also offers products which are compatible with Nokia phones, and also with Motorola, Sagem and Ericsson phones.

In light of the foregoing, the Panel finds that the Respondent has no rights or legitimate interest in the domain name.

d. Bad faith

Complainant is relying on Paragraph 4 (b) (iv) of the Policy, which provides that sufficient evidence of bad faith may consist of:

"(iv) By using the domain name, you have intentionally intended to attract for commercial gain, Internet users to your website or other on-line locations, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."

The Panel finds that Complainant has provided sufficient evidence in this regard. It is clear that Respondent does not (and as a business active in the mobile phone market could not) deny that it knew the trademark NOKIA when registering the domain name <worldnokia.com>. Respondent has deliberately included the well-known trademark NOKIA in the domain name <worldnokia.com> in order to attract business. Furthermore, Respondent, by registering and using the domain name <worldnokia.com> has created the (incorrect) impression of association with the Nokia Corporation, thereby creating a likelihood of confusion with that trademark. This shows that Respondent has intentionally used the goodwill of Complainantís trademark to create traffic to his website operating under the domain name <worldnokia.com>. (See also e.g. WIPO Case No. D2000-0413 Chanel Inc. v Estco.)

The Panel therefore concludes that there is sufficient evidence that Respondentís registration and use of the domain name <worldnokia.com> is in bad faith.

 

8. Decision

On the basis of the foregoing, the Panel decides that Complainant has provided the required evidence to request the transfer of the domain name from Respondent to Complainant. Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panel orders the registration of the domain name <worldnokia.com> be transferred to Complainant.

 


 

Wolter Wefers Bettink
Sole Panelist

Dated: October 18, 2001