WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nokia Corporation v. Marlon Sorken
Case No. D2002-0276
1. The Parties
The Complainant is Nokia Corporation, Keilalahdentie 4, FIN Ė 02150 Espoo, Finland.
The Respondent is Marlon Sorken, 11 Dovecote Court, Chilham Castle Estate, Canterbury, Kent CT4 8DB, United Kingdom.
2. The Domain Name and Registrar
The domain name at issue is <nokialand.com>.
The Registrar is Melbourne IT Ltd, Level 2, 120 King Street, Melbourne, Victoria 3000, Australia.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complaint on March 22, 2002 (electronic version) and on March 25, 2002 (hard copy). The Center acknowledged receipt of the Complaint on March 27, 2002. On the same date the Center sent a Request for Verification of registration data. The date for Registrar Verification was March 28, 2002. It was confirmed that Marlon Sorken is the Registrant and that administrative and technical contact is Jeremy Lewis of 5 Jaxons Court, Hallgate, Wigan, WN1 1L, United Kingdom.
On March 28, 2002, the Center verified that the Complaint satisfies the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy and that payment was made by the Complainant. On the same date the Center notified the Respondent of the Complaint and that administrative proceedings had been commenced according to the Rules, paragraph 2(a).
On April 9, 2002, the Complainant notified the Center according to the Rules paragraph 2(j) that a notification of non-delivery of both the fax copy and the hard copy of the Complaint was received, but that the Respondent has received the Complaint by courier.
On April 19, 2002, the Center sent to the Respondent a Notification of Respondent Default. There has also been e-mail communication with the administrative and technical contact for the domain name to get more details about the Registrant. No response has been received up to the date when the Administrative Panel has been appointed.
On April 30, 2002, the Center notified the parties that an Administrative Panel, consisting of a single member, Jette Robsahm, had been appointed, and that the Panelist had submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
The Administrative Panel must issue its decision at the latest on May 14, 2002.
4. Factual Background
The Complainant is Nokia Corporation, a company incorporated in Finland. Nokia is the world leader in mobile communications having 31.6% of the world market in the sale of mobile phones in 2000. NOKIA branded products are sold in 119 countries throughout the world. It is the leading supplier of mobile phones and accessories therefore.
Nokia Corporation 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:
CTM 000 340 836
Classes 9, 35, 38
CTM 000 871 194
Classes 9, 11, 14, 16, 18, 24, 25,28, 30, 34, 35, 37, 38, 41 and 42
CTM 000 323 386
Classes 9, 35 and 38
1. 1 526 042
The marks are registered for not only telecommunication products, but also for a wide range of other goods and services, and are used 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 Respondent registered the domain name in question on February 19, 2000.
5. Partiesí Contentions
The Complainant states, inter alia, as follows:
"Nokia has been extremely successful worldwide and in 2000, achieved annual net sales
of its branded products of approximately EUR m 30.376. Market capitalization for the year 2000 was EUR m 222,876. Nokia has spent a substantial amount of money developing, advertising and promoting their products throughout the world.
As such Nokia enjoys extensive and widespread goodwill and repute in their trade marks worldwide. The 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 for 2001Ė "The 100 Top Brands", a copy of which is attached to this Complaint as Annex 4.
The Complainant has rights in the trade mark NOKIA and in so far as the whole of the mark NOKIA appears in the Respondentís domain name it is submitted that the domain name is identical or confusingly similar to the Complainantís trademark. This is especially the case having regard to the fact that the rest of the domain name is comprised merely of the non-distinctive word "land" which adds nothing to the mark NOKIA. Given that the mark NOKIA is such a strong mark, it is the distinctive feature of the domain name, to which the word "land" adds nothing, or very little, and which would not reduce the risk of confusion among Internet users. The Complainant therefore submits that if the domain name is not identical to the Complainantís trade mark, it is at least confusingly similar to the Complainantís trade mark. Further it gives rise to a likelihood of confusion as to the source, affiliation and endorsement of the website.
The Complainant has not licensed nor otherwise permitted the Respondent to use the domain name nor the trademark. The Respondent has no rights or legitimate interests in respect of the domain name because the Respondentís business has no connection with the name NOKIA - the Respondent does not trade under this name nor offer goods or services under this name and has not been and is not commonly known under this name.
The 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 website, by creating a likelihood of confusion with Nokia Corporationís registered trade mark as to the source, sponsorship, affiliation or endorsement of the Respondentís website. By doing so the Respondent has misappropriated the reputation and commercial value of the NOKIA trade mark for the Respondentís commercial advantage.
Further it is also significant that the Respondent is using the website to promote telecommunication products and services. This indicates an attempt to divert to the Respondentís website, Internet users looking for Nokia-endorsed telecommunications products or services.
It is submitted that the Respondent has made illegitimate use of the domain name, and has chosen the domain name <nokialand.com> purely to create a false impression of an association with Nokia Corporation or its products or with intent to misleadingly divert Internet users. In addition, the Respondent must have known of the existence of Nokia prior to registering its domain name.
The Complainantís representative wrote to the Respondent on January 15, 2002 alleging infringement of the Complainantís trade mark NOKIA (for example by use of "NOKIA TONES" and "strictly NOKIA" on the site) and by use of the mark within the domain name, and requested a transfer of the domain name. The Respondent telephoned the Complainantís Representative on January 28, 2002 and indicated that he required an extension of time to consider the Complainantís representativeís letter until February 11, 2002, which was agreed. No further response was received and a further letter was sent to the Respondent on March 1, 2002 to which no response has ever been received (true copies of the letters of January 15, 2002 and March 1, 2002 are attached as Annex 5).
This website is a commercial site in that it advertises for download ringtones and logos for use on mobile phones. True copies of pages from the website found under the domain name <nokialand.com> downloaded on January 11 and March 21, 2002 are attached as Annex 6. As can be seen, the site offers logos, including "NOKIA" logos, for download at a cost of 10 kroner, or 10 koster.
The Complainant refers to the Administrative Panelís Decision in Nokia Corporation v. Nokia Ringtones & Logos hotline, WIPO Case No. D2001-1101 (October 18, 2001) and Nokia Corporation v. Nick Holmes t/a Etype Media, WIPO Case No. D2002-0001, (March 6, 2002) 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 trade mark of the Complainant to which the word "land" is added."
The Respondent has not submitted a response.
6. Discussion and Findings
In accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy), paragraph 4(a), the Complainant must prove that (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and (ii) that the Respondent has no rights or legitimate interests in respect of the domain name, and (iii) that the domain name has been registered and is being used in bad faith.
In the administrative proceeding, the Complainant must prove that each three of these elements are present.
The Complainant has provided sufficientl evidence of his rights to the trade mark NOKIA.
(i) Identical or confusingly similar
It is clear that the domain name is not identical to the trade mark. However it must be considered confusingly similar to the trade mark owned by the Complainant. The domain name incorporates the trade mark NOKIA which is a well-known mark, and to add the word "land", which is a common word, does not change the overall expression of a mark with strong likelihood with the mark NOKIA. Most consumers probably know that NOKIA is a Finnish trade mark, and "nokialand" in a way suggests the geographical origin of the mark and the products for which it is registered and used.
Numerous ICANN decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trade mark. See for example earlier decisions involving the Complainant and his trade mark, Nokia Corporation v. Phonestop, WIPO Case No. D2001-1237 (December 6, 2001), Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102 (April 18, 2000), Nokia Corporation v. Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101 (October 18, 2001), Nokia Corporation v. Nick Holmes t/a EType Media, WIPO Case No. D2002-0001 (March 6, 2002). The same view is also common trade mark theory.
(ii) Rights or legitimate interests in respect of the domain name
The domain name is being used to attract consumers to a website named http://www.talk-talk.com where the Respondent offers SMS services for the Nordic Region, for example, offers to download ringtones and logos for use on mobile phones at a cost of 10 kroner. Many of the logos offered incorporate the trade mark NOKIA. The Complainant has not given permission to use the logos. As stated in several cases before WIPO Panels, inter alia, WIPO Case No. D2001-1101 mentioned above, a licensee, dealer, agent or distributor of products of a trade mark owner does not per se have a right to a domain name which includes the trade mark. In the present case the Respondent is not in any respect related to the Complainant, and has not been given any right to use the mark NOKIA in any form.
On this background the Administrative Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name.
(iii) Bad faith
It is obvious that the Respondent knew of the Complainant and the trade mark NOKIA prior to registering the domain name. The mere fact that the website to which consumers are led to when typing <nokialand.com> has another domain name, is a proof. The Administrative Panel can see no other reason to choose the domain name in question than a wish to attract consumers to his website for commercial gain.
Paragraph 4 (b) (iv) of the Policy 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 therefore concludes that the Complainant has provided sufficiently evidence that Respondentís registration and use of the domain name <nokialand.com> is in bad faith.
With specific reference to Paragraphs 4(i) of the Policy and 15 of the Rules it is the decision of this Administrative Panel that the Complainant has provided the required evidence to request the transfer of the domain name from Respondent to Complainant, and that accordingly the domain name <nokialand.com> shall be transferred to Complainant.
Dated: May 8, 2002