WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nokia Corporation v. Liquid SMS Limited
Case No. D2002-0292
1. The Parties
The Complainant is Nokia Corporation, a Finnish Corporation. The Complainant is represented by Laytons, Solicitors, of Guilford, Surrey, United Kingdom.
The Respondent is Liquid SMS Limited of Leeds, United Kingdom. The Respondent is represented by a director, Mr. R. Clark.
2. The Domain Name and Registrar
The domain name at issue is <mynokiastuff.com >.
The domain name is registered with Easyspace Limited, of London, United Kingdom. ("the Registrar"). The domain name was registered by the Respondent on November 10, 2000.
3. Procedural History
The Complaint submitted by the above Complainant was received on March 27, 2002, (email) and March 27, 2002 (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center").
On April 2, 8, 12 & 18, 2002, requests for Registrar verification were transmitted by the WIPO Center to the Registrar, requesting it to:
- Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), Paragraph 4(b).
- Confirm that the domain name <mynokiastuff.com> is registered with it.
- Confirm that the Respondent is the current registrant of the domain name.
- Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.
- Confirm that the Uniform Name Domain Dispute Resolution Policy applies to the domain name.
- Indicate the current status of the domain name.
- Indicate the specific language of the registration agreement as used by the registrant for the domain name.
- Indicate whether the domain name registrant has submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising form the use of the disputed domain name.
By email dated April 18, 2002, the Registrar advised the WIPO Center as follows:
- It is the Registrar of the domain name registration <mynokiastuff.com> and had received a copy of the Complaint.
- Mr. R. Clark is shown as the administrative and billing contact.
- The domain name registration is currently in Ďregistrar-lockí status.
- The Registrar has currently incorporated in its agreements the Uniform Domain Name Dispute Resolution Policy ("UDRP") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").
- The language of the Registration agreement is English.
-The domain name registrant has submitted its Registration agreement to the jurisdiction of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of domain names.
By virtue of the registration agreement, the Respondent is bound by the provisions of the Policy.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), the WIPO Center on April 22, 2002, transmitted by post-courier and by email the Notification of the Complaint and Commencement of Administrative Proceedings to the Respondent as named in the Complaint.
The Complainant elected to have its Complaint resolved by a sole panelist; it has duly paid the amounts required of it to the WIPO Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by courier with one original and four copies and by email. After several exchanges between the Center and the Respondent, a Response was accepted from the Respondent on May 15, 2002, in electronic form only.
The WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
The Panelist duly advised acceptance and forwarded to the WIPO Center an executed Declaration of Impartiality and Independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules. On May 22, 2002, the Complainant sought to file further submissions in reply to the Respondentís Response. The Panel has determined not to receive these submissions in the exercise of its discretion.
On May 27, 2002, the WIPO Center forwarded to the Panel by courier the relevant submissions and the record. The projected decision date was June 11, 2002, which has been extended to June 14, 2002.
The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
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. Its registered trademarks include 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
CTM 000323 337
Classes 9, 35 and 38
1 526 042
1 525 459
NOKIA Ė CONNECTING PEOPLE
The marks are used in connection with the manufacture of telecommunications products including 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.
Complainant is a world leader in mobile communication, achieving 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. Complainant is the leading supplier of mobile phones and of mobile, fixed and Internet Protocol ("IP") networks.
In 2000, Complainant achieved annual net sales of its branded products of approximately EUR m 30.376. Its market capitalization for the year 2000 was EUR m 222,876. It has spent a substantial amount of money developing, advertising and promoting its products throughout the world.
5. Partiesí Contentions
The Complainant has rights in the trade mark NOKIA. Insofar as the whole of the mark NOKIA appears in the disputed domain name, 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 of the descriptive or generic words "MY" and "STUFF". These words add nothing to the domain name to distinguish it from the Complainantís mark, and the NOKIA mark is the distinctive feature of the domain name.
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, does not offer goods or services under this name nor has it been 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 the Respondentís website, by creating a likelihood of confusion with Complainantís registered trade marks as to the source, sponsorship, affiliation or endorsement of the Respondentís website. The Respondent is making illegitimate use of the domain name and has chosen the domain name <mynokiastuff.com> to create an association with Complainant, its products or with intent to misleadingly divert Internet users to its website for commercial gain. The Respondentís site at <www.onmymob.com> offers for sale ringtones, logos and picture messages to be downloaded on to mobile telephones. The Respondent uses the disputed domain name to attract custom to its website.
As a result of the correspondence between the parties, the disputed domain name no longer resolves directly to the Respondentís website. Since at least March 11, 2002, on typing "MYNOKIASTUFF", an Internet user is directed to the Respondentís website via a hypertext link from the webpage at <www.mynokiastuff.com>, rather than the previous direct resolution to the Respondentís site. The Respondent is thereby continuing to use the domain name complained of in bad faith to attract customers to its website for commercial gain.
The Complainant has been in contact with the Respondent since an unknown date in 2001, in an attempt to resolve this matter without recourse to WIPO proceedings. The Complainantís solicitors wrote to the Respondent on January 18, 2002, setting out the Complainantís reasons for complaining about inter alia the Respondentís use of the disputed domain name. The Complainantís solicitors sent a "follow-up" letter to the Respondent on February 7, 2002, requesting a response to its letter of January 18, 2002, which crossed in the post with the Respondentís letter of February 1, 2002. The Respondent refused to transfer the disputed domain name to the Complainant. It intends to continue using the hypertext link as located on the "website moved" page at <www.mynokiastuff.com> to divert Internet users onto its website at <www.onmymob.com>. Internet users searching for Nokia products on Internet search engines are still directed to the Respondentís website through the disputed domain name and may be confused as to the Respondentís affiliation with or endorsement by the Complainant.
The Complainant refers to the WIPO Panel Decisions in:
- Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102; (<nokiagirls.com>);
- Nokia Corporation v. Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101 (<nokiaworld.com>);
- Nokia Corporation v. United Digital, WIPO Case No. D2001-1176; (<nokiaringtones.com> and <nokiafaceplates.com>); and
- Nokia Corporation v. Nick Holmes t/a EType Media, WIPO Case No. D2002-0001; (<nokiaheaven-uk.com>).
All these cases were resolved in favor of the Complainant. The instant case is similar, as the domain name that is the subject of this Complaint consist of the Complainantís NOKIA trademark to which the descriptive words "MY" and "STUFF" are added.
In WIPO Case No. D2002-0001, the Panel held that <nokiaheaven-uk.com> was confusingly similar to the Complainantís trademark because NOKIA was the dominant element of the domain name. The addition of HEAVEN, being a laudatory non-distinctive element, would not reduce any risk of confusion among Internet users. The Panel in the same case also considered the rights or legitimate interests of the Respondent, and held that the mere fact that the Respondent sold logos and ringtones compatible with Nokia mobile phones was not sufficient for the Respondent to claim a legitimate interest in the domain name.
The Panel in the <nokiaheaven-uk.com> case found the Respondent had acted in bad faith based on the comments in Nokia Corporation v. Nokia Ringtones & Logos Hotline (supra) relating to the domain name <worldnokia.com>. In that case, it was held that the Respondent, by registering and using the domain name <worldnokia.com>, had created the impression of an association with Nokia, which showed that he had intentionally used the goodwill of Nokiaís trademarks to create traffic to its website.
It originally registered <mynokiastuff.com> to "share and sell items specifically for Nokia mobile phones". The domain name was chosen because it accurately portrayed the items sold.
It was not Respondentís intention that the word ĎNokiaí in the disputed domain name should mislead or maliciously create confusion. The website states quite clearly on the bottom of each page that it is not associated with the Complainant. The relevant website is neither branded nor designed in a similar manner to any of Complainantís own domains.
A recent questionnaire on Respondentís website asked people who had searched for "Nokia Ringtones", "Nokia Operator Logos" or "Nokia Picture Messages" (which are three of their most common click through search engine results) a set of questions pertaining to the use of the word ĎNokiaí on the Respondentís website. There were 8,047 responses: out of those responses, 94.5% stated that:
1.They knew that the website was not connected with the Complainant;
2.That the Respondentís products were Ďcompatibleí with Nokia products but not owned, designed, composed or sold via the website by the Complainant.
(5.5% of responses were not completed correctly).
47% of respondents purchased a Nokia mobile phone because of its capabilities for downloadable ringtones and logos: 8% purchased or upgraded their mobile phone to a Nokia, as a direct result of the website (644 respondents @ c.£250 per mobile phone = c.£161,000 extra revenue generated for the Nokia Corporation).
Respondent acknowledges that Complainant is very protective of its brand "which we respect". Complainant also offers ringtones and logos for its range of mobile phones. The real reasons behind the Complainantís request for ĎAbusive Registrationí is not one to guard consumers or companies, as the Nominet Regulations are aimed at, but to act in an anti-competitive manner Ė stopping smaller companies selling ringtones, operator logos or picture messages using the mark Nokia to identify its products.
The Respondent summarizes its submissions thus:
1. <mynokiastuff.com> sells products aimed mainly for Nokia mobile phones.
2. <mynokiastuff.com> is Respondentís main consumer website and is not a doorway or gateway website.
3. <mynokiastuff.com> includes a disclaimer, voluntarily included by the Respondent, stating that it is not associated with Nokia Corporation, but that the term is used to determine compatibility only.
4. Consumers are not misled by the design or use of the word <mynokiastuff.com>. This has been shown by a poll of 8047 people.
5. Commonsense dictates that the wording of the domain is not confusing with any website owned or operated by the Complainant, neither is it a misspelling, mispronunciation or language variant.
6. Respondent has not unfairly or maliciously damaged or affected the Nokia brand or website by using the word ĎNokiaí within its domain name.
Respondent has withdrawn <mynokiastuff.com> as an act of goodwill, whilst this matter is resolved. It is re-branded temporarily to <onmymob.com>: it is not Respondentís intention to keep this domain unless <mynokiastuff.com> is permanently withdrawn from its operation.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under Paragraph 4(a) of the Policy, is to show:
- That the domain name registered by the Respondent 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 the domain name; and
- That the domain name has been registered and is being used in bad faith.
The disputed domain name is confusingly similar to the Complainantís registered trademarks. The words Ďmyí and Ďstuffí are geared to the word ĎNokiaí which is the principal expression in the domain name. Indeed, Respondent appears to acknowledge Complainantís rights to its Nokia mark. See Biersdorf A.G. v Nivea International (WIPO Case No. D2001-0178) <niveainternational.com> held confusingly similar to mark Nivea).
The Panel considers the first criterion proved.
As to the second criterion, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the domain name. Paragraph 4(c) of the Policy sets out matters which a Respondent is entitled to raise which, if found by a Panel to be proved based on an evaluation of all evidence presented, should demonstrate a Respondentís rights or legitimate interests to a domain name.
The Respondent appears to rely upon Paragraph 4(c)(ii) i.e. that before notice of the dispute, it used the domain name in connection with a bona fide offering of goods and services. It is difficult to see how this defence can succeed. Respondent, on its own admission, is selling ring tones and logos for Nokia phones Ė an activity of the Complainantís. Respondent must have known of the Complainantís trademark rights because of the disclaimers on its website to the effect that it is not associated with the Complainant. This is not the case of a person conducting a legitimate business under a domain name who finds to his/her surprise that the domain name associated with that business happens to be identical or confusingly similar to a registered trademark. The disclaimer cannot help the Respondent Ė rather it is an acknowledgement by the Respondent that the Complainant has rights. In the Panelís view, the second criterion is proved.
As in the other WIPO cases cited involving the Complainant, the mere fact of selling ringtones compatible with Complainantís phones was insufficient to bring a Respondent within Paragraph 4(c)(ii). The Respondent has not alleged any particular licensing arrangement with the Complainant. The situation is similar to that in The Stanley Works and Stanley Logistics, In. v. Camp Creek, Inc. (WIPO Case No. D2000-0113) when the Panel held:
"Ö [E]ven if Respondent is a retail seller of Complainantís products, the collateral trademark use necessary to allow resell of Complainantís products is not enough to give Respondent proprietary rights in Complainantís trademarks, and certainly not enough to confer the right to use these trademarks as domain names. Many famous trademarks designate goods that are manufactured and sold through numerous retail stores. But this, without something more such as authorisation in a licensing agreement or other special circumstances, does not give the retail sellers rights of domain name magnitude over the manufacturerís trademarks."
As to bad faith registration and use both are proved. The Respondent clearly knew of the fame of the Complainantís mark when it registered the disputed domain name. Persons accessing the Respondentís website wishing to buy ringtones, etc. could easily think there was some connection between the Complainant and the Respondent. Correspondence shows that the Respondent still intends to continue to use the website. As in WIPO Case No. D2001-1101 supra, Respondentís registration of the disputed domain name has created an impression of association with Complainantís mark which has evidenced an intentional use of Complainantís goodwill in the mark in order to generate traffic to Respondentís website.
The third criterion is therefore proved and the Complainant must succeed.
For the foregoing reasons, the Panel decides:
(a)That the domain name <mynokiastuff.com> is identical to the trademark to which the Complainant has rights; and
(b)That the Respondent has no rights or legitimate interests in respect of the domain name; and
(c)That the domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <mynokiastuff.com> be transferred to the Complainant.
Hon. Sir Ian Barker QC
Dated: June 12, 2002