WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Nokia Corporation v United Digital

Case No. D2001-1176

 

1. The Parties

1.1 The Complainant is Nokia Corporation, a company incorporated in Finland.

1.2 The Respondent is United Digital, which has a physical address in West Covina, California, United States of America. The administrative and technical contact for the domain names registered by the Respondent is Dewey Oakes.

 

2. The Domain Names and Registrars

2.1 Two domain names are at issue. They are as follows:

<nokiaringtones.com>
<nokiafaceplates.com>

2.2 The Registrar of the domain name <nokiaringtones.com> is Bulkregister.com, Inc., of Baltimore, Maryland, United States of America.

2.3 The Registrar of the domain name <nokiafaceplates.com> is eNom, Inc., of Redmond, Washington, United States of America.

 

3. Procedural History

Issuance of Complaint

3.1 On September 25, 2001, Nokia submitted a complaint to the World Intellectual Property Organization Arbitration and Mediation Center ("the WIPO Center") in respect of the domain name <nokiaringtones.com>. This complaint was submitted pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), both of which were approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999.

3.2 An Acknowledgement of Receipt of Complaint was sent to the Complainant on September 26, 2001.

3.3 On October 1, 2001, a Request for Registrar Verification was sent to Bulkregister.com, requesting it to:

(i) Confirm that a copy of the complaint had been received;

(ii) Confirm that the specified domain name had been registered with Bulkregister.com;

(iii) Confirm that the respondent was the current registrant of the domain name;

(iv) Provide the full contact details available in Bulkregister.comís WHOIS database for the domain name registrant, technical contact, administrative contact, and billing contact;

(v) Confirm that the Uniform Domain Name Dispute Resolution Policy applies to the domain name; and

(vi) Indicate the current status of the domain name.

3.4 On October 2, 2001, Bulkregister.com confirmed that the domain name <nokiaringtones.com> was registered with Bulkregister.com and the current registrant was United Digital. The physical and electronic addresses and telephone number were provided for the technical and administrative contacts.

3.5 On October 5, 2001, the Complainant submitted an amended complaint to the WIPO Center pursuant to the Policy and the Rules. The WIPO Center accepted the amended complaint as proceedings had not officially commenced at that stage. The amended complaint included a second domain name also registered by United Digital, <nokiafaceplates.com>. The Complainant bases its complaint in respect of domain name <nokiafaceplates.com> on the same grounds as its complaint in respect of <nokiaringtones.com>.

3.6 On October 5, 2001, a Request for Registrar Verification was sent to eNom, Inc., requesting it to supply the information listed in paragraph 3.3 above.

3.7 On October 15, 2001, eNom, Inc. confirmed that the domain name <nokiafaceplates.com> was registered with eNom, Inc. and the current registrant was United Digital. The physical and electronic addresses and telephone number were provided for the administrative, billing and technical contacts.

Notification of Complaint and Commencement of Proceedings

3.8 The complaint was deemed to comply fully with the formal requirements of the Policy and Rules. On October 22, 2001, a Notification of Complaint and Commencement of Administrative Proceeding was issued. The Notification required the Respondent to submit a response within twenty days, that is, by November 11, 2001.

Notification of Respondent Default

3.8 The Respondent failed to submit a response within the twenty-day period. On November 19, 2001, the WIPO Center issued to the Respondent a Notification of Respondent Default.

Appointment of Administrative Panel

3.10 On November 30, 2001, following receipt of the Statement of Acceptance and Declaration of Impartiality and Independence of David A. R. Williams Q.C., the WIPO Center issued a Notification of Appointment of Administrative Panel and Projected Decision Date, formally appointing David A. R. Williams Q.C. as Sole Panelist. Absent exceptional circumstances, the Administrative Panel was required to forward its decision to the WIPO Center by December 14, 2001.

 

4. Factual Background

4.1 The Complainant is a company incorporated in Finland. It is a leading international supplier of telecommunications products and has invested substantially in developing and promoting its brand name and products.

4.2 The Complainant has registered in excess of 300 trademarks containing the word "Nokia".

4.3 The Complainant enjoys an enviable international reputation and its brand mark has been recognised as one of the most valuable in the world.

4.4 The Respondent registered the domain name <nokiaringtones.com> with Bulkregister.com. This domain name resolves to a website promoting discount long-distance telecommunications services.

4.5 The Respondent registered the domain name <nokiafaceplates.com> with eNom. This domain name resolves to a website selling ringtones, voicemail messages and other products for mobile phones.

 

5. The Partiesí Contentions

5.1 The Complainant argues that the Respondentís domain names are confusingly similar to the Nokia trademark, and that the Respondent has no legitimate interest in the domain names and registered and is using them in bad faith.

5.2 The Complainant requests that the disputed domain names be transferred to the Complainant.

5.3 The Respondent has not replied to communications from the WIPO Center. It has not contested the Complainantís allegations or submitted evidence to the Panel.

 

6. Discussion and Findings

6.1 Bulkregister.com and eNom both use the Policy.

6.2 Clause 3 of Bulkregister.comís registration agreement states:

"You agree to be bound by our Domain Name Dispute Policy ("Dispute Policy") which is incorporated into this Agreement by reference."

6.3 Clause 4 of eNomís registration agreement states:

"If you request, reserved or registered a domain name through us, or transferred a domain name to us from another registrar, you agree to be bound by eNomís current Disclaimer ("Disclaimer") published on our site and our current Domain Name Dispute Policy ("Dispute Policy") which are incorporated herein and made part of this Agreement by reference."

6.4 The approach to be taken in deciding the outcome of this proceeding is contained in paragraph 15(a) of the Rules:

"A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".

6.5 The Panel has not received any statements or documents from the Respondent since the formal commencement of proceedings on November 30, 2001. The Respondent is in default pursuant to paragraph 5(a) of the Rules. The Panelís power to decide the dispute notwithstanding the Respondentís default is given by paragraph 5(e):

"If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint".

No exceptional circumstances have been brought to the attention of the Panel.

6.6 The Policy sets out the terms and conditions which bind the registrant upon registration of a domain name. Paragraph 4(a) provides that the registrant must submit to a mandatory administrative proceeding in the event that a third party (a complainant) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

(i) The registrantís domain name is identical or confusingly similar to a trademark in which the complainant has rights;

(ii) The registrant has no rights or legitimate interests in respect of the domain name; and

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

In the event of a proceeding, the Complainant must prove that each element is present.

Confusingly Similar

6.7 In the domain names <nokiaringtones.com> and <nokiafaceplates.com>, the Respondent uses "Nokia" in conjunction with words which have an association with the Complainantís business. The combination of "Nokia", an internationally recognised trademark, and "ringtones" or "faceplates" makes the domain names confusingly similar to the Nokia trademark.

6.8 The domain name <nokiafaceplates.com> resolves to a website headed "Nokia Ringtones". The website sells ringtones and other products for mobile phones. This adds to the impression that the Respondent and the website have some association with Nokia Corporation.

6.9 This conclusion is supported by the decision in Nokia Corporation v Nokiagirls.com a.k.a IBCC (WIPO Case No. D2000-0102), to which the Panel was referred by the Complainant. In that case, the Respondent had registered a domain name which combined "Nokia" and "girls" to form <nokiagirls.com>. The Panel held that the addition of a neutral noun did not distinguish the domain name from the trademark. Nokia has an even stronger argument in the present case because "ringtones" and "faceplates" are not neutral nouns but in fact evoke the Complainantís business.

6.10 It is the opinion of the Panel that the two domain names registered by the Respondent are confusingly similar to the Complainantís Nokia trademark.

Rights or Legitimate Interests

6.11 The Complainant has not licensed the mark "Nokia" to the Respondent.

6.12 The Respondent has not provided any evidence that it has rights to or legitimate interests in the domain names pursuant to paragraph 4(c) of the Policy.

6.13 In respect of paragraph 4(c)(i), there is no evidence that the Respondent had a history of using or preparing to use the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services.

6.14 In respect of paragraph 4(c)(ii), there is no evidence that the respondent has been commonly known by the domain names.

6.15 In respect of paragraph 4(c)(iii), the Respondent is not making a legitimate non-commercial or fair use of the domain names. The Respondent is using the domain names to sell products. The domain names create the false impression of an association with Nokia Corporation. By so doing they misappropriate the reputation and commercial value of the Nokia trademark for the Respondentís commercial advantage.

6.16 It is the opinion of the Panel that the Respondent does not have a legitimate interest pursuant to paragraph 4(c) of the Policy.

Registering and Using a Domain Name in Bad Faith

6.17 Paragraph 4(b) of the Policy sets out four circumstances which, if present, will support a finding of registration and use of a domain name in bad faith. The Complainant is required to prove at least one of these circumstances.

6.18 The Complainant, without referring to paragraph 4(b), argues (at paragraph 13.6 of the amended complaint) that bad faith is present on the ground that:

"[T]he RespondentÖhas chosen the domain names "NOKIARINGTONES.COM" and "NOKIAFACEPLATES.COM" purely to create an association with the Nokia Corporation or its products or with intent to misleadingly divert Internet users to its website for commercial gainÖ. [T]he Respondent merely uses the domain names complained ofÖto attract more custom to their website."

6.19 The Complainant is therefore invoking the ground contained in paragraph 4(b)(iv) of the Policy, which states that a Respondent has acted in bad faith if:

"By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, 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."

6.20 The references in the domain names to "ringtones" and "faceplates", which are closely associated with the Complainantís business, indicate that the Respondent knew of the Complainantís rights in the Nokia trademark at the time it registered the domain names. The content of the website to which the domain name <nokiafaceplates.com> resolves also indicates that the Respondent knew of the Complainantís trademark at the time it registered the domain names.

6.21 It is also significant that the Respondent is using the websites to promote telecommunications products and services. This indicates an attempt to divert internet users looking for Nokia-endorsed telecommunications products or services to the Respondentís websites.

6.22 Given the Complainantís valuable international reputation in the telecommunications industry, it would appear that the Respondent is attempting to suggest that its websites and/or the products and services offered for sale on its websites are in some way affiliated to or endorsed by the Complainant.

6.23 The Respondent has no reason to use the domain names other than to attract Internet users by suggesting that the Complainant is associated with the Respondent or has endorsed the Respondentís products. This is an attempt to misappropriate the Complainantís reputation for commercial gain.

6.24 This view is supported by the decision in Nokia Corporation v Nokiagirls.coma.k.a IBCC (WIPO Case No. D2000-0102), in which it was held (at paragraphs 6(c)(1) and 6(c)(3)) that:

"The trademark NOKIA is currently enjoying such fame internationally that it cannot reasonably be argued that [the] RespondentÖcould have been unaware of the trademark rights vested therein when registering the Domain NameÖ. The presence of the trademark NOKIA in the Domain Name isÖa key factor in the financially-driven attempt to draw internet users, some of which will be browsing for [the] Complainantís website(s), to [the] Respondentís websiteÖ. [The] Respondent is thereby taking a free ride on the goodwill of [the] Complainantís NOKIA trademark."

6.25 The Panel concludes that the Complainant has proved that the Respondent was acting in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

 

7. Decision

7.1 The evidence presented by the Complainant, which the Respondent has not contested, proves that, pursuant to paragraph 4(a) of the Policy:

(i) The domain names are confusingly similar to the trademark of the Complainant;

(ii) The Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) The domain names have been registered and are being used in bad faith.

7.2 Therefore, the Panel directs that the registration of the domain names <nokiaringtones.com> and <nokiafaceplates.com> be transferred to the Complainant.

 


 

David A.R. Williams, Q.C.
Sole Panelist

Dated: December 19, 2001