WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Nokia Corporation v. Nick Holmes t/a EType Media

Case No. D2002-0001

 

1. The Parties

The Complainant in this administrative proceeding is Nokia Corporation, a company incorporated in Finland.

The Respondent in this administrative proceeding is Nick Holmes, of Cambridge, CB4 3NG, England.

 

2. The Domain Name(s) and Registrar(s)

The domain name in dispute is <nokiaheaven-uk.com>.

The registrar with which the domain name is registered is CORE Internet Council of Registrars (hereinafter "the Registrar").

 

3. Procedural History

On January 2, 2002, the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail and in hard copy on January 9, 2002.

On January 15, 2002, the Center sent a Request for Registrar Verification to the Registrar and on January 18, 2002, the Registrar responded, confirming that it is the registrar of said domain name <nokiaheaven-uk.com>, that the Respondent is the current registrant of the said domain name, provided details of the Administrative contact, Technical Contact and Zone Contact for said registration, confirmed that the Policy is in effect in respect of said registration, that the language of the service agreement is English, and that the said registration was active at that time.

In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and paragraph 5 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") the Center reviewed the Complaint to ascertain whether it satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules and the Supplemental Rules and that payment in the required amount had been made by the Complainant.

On January 24, 2002, the Center sent a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent. Said Notification was sent to the Respondent by courier (with enclosures), by facsimile (Complaint without enclosures) and by e-mail (Complaint without attachments). A copy of said Notification was sent to the authorised representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar by e-mail (without enclosures).

Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceeding had commenced on January 24, 2002, and that the Respondent was required to submit a Response to the Center on or before February 13, 2002.

The Respondent submitted a Response by e-mail on February 13, 2002.

On February 20, 2002, after having received a Statement of Acceptance and Declaration of Impartiality from him in accordance with paragraph 7 of the Rules, the Center proceeded to appoint James Bridgeman as Administrative Panel. On the same day the case file was transmitted to the Administrative Panel.

Subsequently on February 21, 2002, the Respondent sent an e-mail to the Center, to which a further Response was attached. The Respondent stated that the Response initially filed has been a draft only and requested that the new document should be substituted therefore. In the circumstances, this Administrative Panel has allowed the Respondentís application and has accepted the Response filed on February 21, 2002.

In the view of the Administrative Panel, proper procedures were followed and this Administrative Panel was properly constituted.

 

4. Factual Background

The Complainant is the proprietor of 309 registered trademarks throughout the world which comprise the word NOKIA or of which the word NOKIA is the dominant feature. Nokiaís registered trademarks include, amongst others, the following:

- Community Trade Mark registration number 000 340 836, NOKIA, registered in classes 9, 35, 38;

- Community Trade Mark registration number 000 871 194, NOKIA, registered in classes 9, 11, 14, 16, 18, 24, 25, 28, 30, 34, 35, 37, 38, 41 and 42;

- Community Trade Mark 000 323 386 registration number NOKIA+Device, registered in classes 9, 35 and 38; and

- United Kingdom trademark registration number 1 526 042, NOKIA registered in class 9.

The Respondent carries on an Internet based business trading as "EType Media". The Respondentís www site accessible at said domain name <nokiaheaven-uk.com> inter alia offers information about mobile phones, offers ring-tones for mobile phones and carries third party advertising.

 

5. Partiesí Contentions

A. Complainant

The Complainant claims that said domain name <nokiaheaven-uk.com> is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of said domain name; and that said domain name was registered and is being used in bad faith. The Complainant requests this Administrative Panel to direct that said domain name be transferred to the Complainant.

The Complainant submits that the trademark NOKIA is used by the Complainant in connection with the manufacture of telecommunications products including inter alia mobile telephones and accessories related to mobile telephones, mobile phone networks and all business management, promotion and advertising in connection with the sale and marketing of such products. The Complainant has furnished this Administrative Panel with true copies of the registration certificates for the registered trademarks described supra.

The Complainant submits that it is the world leader in mobile communications having 31.6 % of the world market in the sale of mobile phones in the year 2000. NOKIA branded products are sold in 119 countries throughout the world. It is the leading supplier of mobile phones and a leading supplier of mobile, fixed and Internet Protocol networks.

The Complainant has spent a substantial amount of money developing, advertising and promoting its products throughout the world and has furnished this Administrative Panel with details of its substantial world wide sales and its market capitalisation in the year 2000.

The Complainant claims to enjoy extensive and widespread goodwill and repute in its trade marks worldwide. The trade mark NOKIA is one of the worldís best known trademarks for mobile phones and is rated as the 5th most valuable brand in the world in Interbrandís Annual Survey Ė "The Worldís Most Valuable Brands 2000", a copy of which the Complainant has furnished as an annex to the Complaint.

The Complainant claims that said domain name <nokiaheaven-uk.com> is identical or confusingly similar to the Complainantís trademark. This is especially the case having regard to the fact that said domain name is merely comprised of the Complainantís trademark and the words "heaven-uk". Given that the trademark NOKIA is such a strong mark, it is the distinctive feature of the domain name, to which the words "heaven-uk" add little or nothing. The Complainant therefore submits that if said domain name <nokiaheaven-uk.com> is not identical to the Complainantís trade mark, it is at least confusingly similar to the Complainantís trade mark.

The Complainant states that it has not licensed or otherwise permitted the Respondent to use either said domain name or the trademark NOKIA. The Respondent has no rights or legitimate interests in respect of said domain name because the Respondentís business has no connection with the name NOKIA. The Complainant submits that the Respondent does not trade under said domain name or the name NOKIA neither does he offer goods or services under said domain name or the name NOKIA. Furthermore the Respondent has not been and is not commonly known by said domain name or the name NOKIA.

The Complainant submits that said domain name should be considered as having been registered and used in bad faith by the Respondent because the domain name is used solely to attract, for commercial gain, Internet users to a www site, by creating a likelihood of confusion with the Complainantís trade mark as to the source, sponsorship, affiliation or endorsement of the Respondentís www site. It is submitted that the Respondent has made illegitimate use of said domain name, and has chosen said domain name purely to create an association with the Complainant or its products or with intent to misleadingly divert Internet users. In addition, the Respondent must have known of the existence of the Complainant prior to registering said domain name.

The Complainant refers to correspondence between the Complainant and its representative with the Respondent. The Complainant has furnished this Administrative Panel with copies of letters written to the Respondent on October 2, 2001, and October 23, 2001, a reply in writing received from the Respondent on October 25, 2001, and a response sent to the Respondent by the Complainantís representative on November 15, 2002. The Complainant has furnished this Administrative Panel with true copies of this correspondence as annexes to the Complaint.

The Complainant submits that the www site established by the Respondent to which said domain name resolves, is a commercial site in that it sells advertising space and runs a premium-rate line for offering mobile phone ring-tones. The Respondent has furnished this Administrative Panel with true copies of pages from said www site that were downloaded on December 18, 2001.

In support of its claims the Complainant refers to the decisions of the administrative panels in Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102 and Nokia Corporation v. Phonestop, WIPO Case No. D2001-1237 both of which were decided in favour of the Complainant and submits that the instant case is virtually identical to these cases as the domain name that is the subject of this Complaint consists of the trademark of the Complainant to which the elements "heaven-uk" are added.

B. Respondent

The Respondent states that the Complainantís request should be refused because the disputed domain name is not identical or confusingly similar to a service mark in which the Complainant has rights, the Respondent has rights and a legitimate interest in said domain name, and the Respondent did not register and use the domain name in bad faith.

With regard to the question of whether the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the Respondent states that the Complainant clearly owns the trademark NOKIA, but that its registration is limited to the mark NOKIA and device. Therefore the domain name <nokiaheaven-uk.com> is by no means identical to the Complainantís trademark. Said domain name only incorporates the word NOKIA to legitimately describe the content of the Respondentís www site.

The complaint that the domain name <nokiaheaven-uk.com> is confusingly similar to the trademark in question is rejected by the Respondent and he argues that this claim is somewhat belittled by the fact that exceptionally few businesses operate with the words "heaven" attached to their trademark. The presence of an abstract noun would no doubt add a degree of ambiguity to any service mark, making it a rare choice for business owners. This information is reflected in the title, literally translating to a "heaven for Nokia users". No legal or economic relationship is insinuated in the domain.

As a separate point, the Respondent asks if the Respondent had, as the Complainant suggested, been intending to "misleadingly divert internet users", why would he have chosen the name "nokiaheaven-uk"? The Respondent submits that it would have made more sense to register a domain including words such as "Nokiaproducts" or "Nokiahandsets", which could indeed mislead Internet users. It is submitted by the Respondent that the addition of the elements "heaven-uk" eliminates virtually all chance of users finding the site by mistake while searching for <nokia.com>.

As to whether the Respondent has rights or a legitimate interest in said domain name the Respondent claims that he operates on a small profit margin designed only to pay for the content and upkeep of the www site. The Respondent claims to be supplied by some of the largest names in the mobile phone industry and is "proud to serve well over 500,000 page impressions every month". The Respondent states that thousands of Internet users rely on the Respondentís impartial reviews and extra information to help them gain the most from their NOKIA handset. The Respondent therefore claims to have a legitimate claim to the domain name and states that the domain name only serves to enhance the success of the Complainantís name.

The Respondent states that it has never claimed to trade as, to represent or to have a commercial relationship with the Complainant. The Respondent has never claimed to represent the Complainant, neither has he claimed to have a commercial relationship with the Complainant. It is clearly stated on the Respondentís said www site that all opinions are that of the Respondent.

The Respondent states that thousands of mobile communications retailers use the word NOKIA to accurately describe goods or services, many ring-tone providers even trade under the name "Nokia Tones" or the like. The Respondent argues that the Complainant does not protect its trademarks from resellers because they further enhance the Corporationís success as the "5th most valuable brand in the world".

The Respondent claims to have offered goods and services from the Complainant itself at the www site established at the <nokiaheaven-uk.com> address. For a short period during 1999/2000 the Respondent actively distributed NOKIA handsets and equipment in close partnership with a named third party mobile phone reseller. The Respondent claims that over a period of roughly 6 months, the Respondent took orders for the Complainantís telephones and these orders were filled by said third party re-seller.

The Respondent submits that this activity establishes that the Respondent has rights or a legitimate interest in said domain name as it falls within the meaning of paragraph 4(c)(ii) of the Policy viz. that it demonstrates:

"Your use of the domain nameÖ in connection with a bona fide offering of goods or services"

The Respondent states that contrary to the comments of the Complainant in correspondence, the Respondent maintains a trading relationship with the UKís largest independent telecommunications store. The Respondent states that he emphasized this to the Complainant in correspondence and he pointed out that if the largest reseller of the Complainantís phones in the UK works with him, it stands to reason that the Respondent has a legitimate claim to the NOKIA name and is offering bona fide goods through said independent telecommunications store.

The Respondent states that the Complainant responded by contacting said independent telecommunications store and requested that they withdraw co-operation with the Respondent, but shortly afterwards this independent telecommunications store contacted the Respondent once again through their agents and offered another advertising program for the Respondentís www site.

As to the question of the alleged bad faith, the Respondent claims that his www site has existed since 1999 to provide free reviews of the Complainantís equipment. The Respondent states that its www site began as a free homepage and said domain name was registered by the Respondent in order to cater for the growing amount of traffic seeking such content.

At no point has the Respondentís said www site attempted to imitate or replicate the brand itself. It has only sought to provide fair and accurate opinions on products. The majority of the reviews of the Complainantís equipment are positive, and the Respondent questions the applicability of Paragraph 4(c)(iii) of the Policy: "or to tarnish the trademark". The Respondent relies on and enhances the reputation and awareness of the brand, and is well respected as the best source of information on the Complainantís latest equipment. Additionally, the Respondent states that he includes numerous links to the Complainantís www site, clearly marked as <nokia.com>.

The Respondent denies that this amounts to the Respondent intentionally aiming to create a "likelihood of confusion with Nokia Corporationís registered trademark as to the source, sponsorship, affiliation or endorsement" of the Respondentís www site as alleged by the Complainant.

 

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

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

Identical or Confusingly Similar

This Administrative Panel accepts the Complainantís submission that said domain name <nokiaheaven-uk.com> is confusingly similar to the Complainantís NOKIA trademark. NOKIA is the dominant element of the domain name and the addition of the word "heaven" is a laudatory non-distinctive element that would not reduce any risk of confusion among Internet users. Furthermore the addition of the letters "uk" will be interpreted as a reference to the activities of the Complainant in the United Kingdom as these letters are an important element in the ccTLD for the United Kingdom.

This Administrative Panel rejects the Respondentís arguments that the Complainant has rights only in a device mark. It is clear that the Complainant has rights in the trademark NOKIA both at common law and through its registrations.

The Complainant has therefore succeeded in establishing the first element in the test in paragraph 4(a) of the Policy.

Rights or Legitimate Interest

The essence of the Respondentís claim to have rights or a legitimate interest in said domain name would appear to be based on the defence set out in paragraph 4(c)(i) of the Policy viz that before any notice to the Respondent of the dispute, the Respondentís used, or had made demonstrable preparations to use, said domain name in connection with a bona fide offering of goods or services.

While the Respondent clearly has established a www site offering goods or services, it can not be said that the use or the domain name in connection with the offering of goods or services was bona fide. The Respondent was clearly aware of the Complainantís extensive goodwill and reputation in its trade mark NOKIA. The Respondent has clearly adopted the Complainantís trademark for his own use and incorporated it into the said domain name without the authority of the Complainant.

On the print-out of the Respondentís www site furnished by the Complainant, it is clear that in addition to offering mobile phones manufactured by the Complainant, the Respondent is also purporting to offer mobile phones from other manufacturers viz. Ericson R380, Motorola Accompli and Sagem WA 3050.

The Respondentís arguments that he has secured some rights or legitimate interest in the use of the trademark NOKIA due to the Complainantís failure to prevent third parties from using the trademark is not sustainable in these proceedings. Neither can this Administrative Panel accept the Respondentís claim to have secured rights or a legitimate interest in said domain name through some association the Respondent has now or has in the past had with a re-seller of the Complainantís products.

This Administrative Panel found assistance in the decision of the administrative panel in Nokia Corporation v Nokia Ringtones & Logos Hotline (WIPO Case No. D2001-1101, October 18, 2001) in which the administrative panel stated:

"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.:

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

This Administrative Panel adopts the reasoning of the administrative panel in said WIPO Case No. D2001-1101 and finds that the Complainant has established that the Respondent has no rights or legitimate interest in said domain name and has therefore satisfied the second element of the test in paragraph 4(b) of the Policy.

Bad Faith

On the question of bad faith, it is clear that the Respondent knew of the Complainant, its goodwill and its trademark NOKIA, prior to registering said domain name.

The Respondent has admitted that he has chosen said domain name because of its association with the Complainantís products, but he denies that he registered said domain name with to intent to misleadingly divert Internet users.

The Complainant on the other hand submits that said domain name should be considered as having been registered and used in bad faith by the Respondent because the domain name is used solely to attract, for commercial gain, Internet users to a www site, by creating a likelihood of confusion with the Complainantís trade mark as to the source, sponsorship, affiliation or endorsement of the Respondentís www site.

The Complainant submits that the present case is virtually identical to Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102 and Nokia Corporation v. Phonestop WIPO Case No. D2001-1237 both of which were decided in favour of the Complainant. However, both of the cases cited by the Complainant were undefended and the decision of the administrative panel in said Nokia Corporation v Nokia Ringtones & Logos Hotline (WIPO Case No. D2001-1101, October 18, 2001) is more helpful.

In that case, as in the present administrative proceedings, the Complainant relied on Paragraph 4(b)(iv) of the Policy, which provides that sufficient evidence of bad faith may exist where:

"(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 administrative panel found:

" 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.)"

This Administrative Panel accepts the submissions of the Complainant in this regard and adopts the reasoning of the administrative panel in said WIPO Case No. D2001-1101. In the view of this Administrative Panel therefore the Complainant has satisfied the third element of the test in paragraph 4 of the Policy and has on the balance of probabilities established that the Respondent has registered and is using said domain name in bad faith.

 

7. Decision

With specific reference to paragraph 4 (i) of the Policy and paragraph 15 of the Rules it is the decision of this Administrative Panel that the Complainant has established that said domain name <nokiaheaven-uk.com> is confusingly similar to the trademark NOKIA in which the Complainant has rights, that the Respondent has no rights or legitimate interest in said domain name and that the Respondent has registered and is using said domain name in bad faith.

This Administrative Panel therefore directs that said domain name <nokiaheaven-uk.com> shall be transferred to the Complainant.

 


 

James Bridgeman
Sole Panelist

Dated: March 6, 2002