WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nokia Corporation v. Vincent Entertainment Ltd.
Case No. D2003-0322
1. The Parties
The Complainant is Nokia Corporation, of Finland, represented by Venable, Baetjer, Howard & Civiletti, LLP of United States of America.
The Respondent is Vincent Entertainment Ltd., London, of United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrars
The disputed domain names <nokiamo.com> and <suonanokia.com> are registered with Tucows, Inc., of Canada
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 24, 2003. On April 25, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain names at issue. On April 25, 2003, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 29, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on May 20, 2003.
The Center appointed Madeleine De Cock Buning as the sole panelist in this matter on May 27, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The following information is derived from the Complaint and supporting evidence submitted by the Complainant.
Nokia is a well-known supplier of mobile phones and accessories, holding 38% of the world market in the sale of mobile phones in 2002. The NOKIA trademarks are used in connection with the manufacture and sale of telecommunications and accessories related to mobile phones, mobile phone networks, and the marketing, sale and promotion thereof. The trademark NOKIA is registered in several countries (incl. European Community Registration No. 340836 and UK Registration No. 1526042).
Both disputed domain names <nokiamo.com> and <suonanokia.com> were registered on October 12, 2001.
The disputed domain names are both connected to Italian-language web sites that offer for sale ring tones and logos. By clicking on the web sites, the user is automatically connected to other web sites offering pornography.
The Respondent has not filed any response to the Complaint or answered the Complainant's factual assertions or evidence in any other manner.
5. Partiesí Contentions
The Complainant contends as follows.
(i) The Complainant is the owner of the NOKIA trademark. The disputed domain names are confusingly similar to the Complainant's trademark because the Respondent's domain name incorporates Complainant's entire trademark in connection with a generic term. The likelihood of confusion is enhanced because the trademark NOKIA is famous. Since Nokia provides ring tones and logos under its trademark consumers are particularly likely to be confused.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
(iii) The Respondent registered and is using the disputed domain name in bad faith essentially because:
a. Respondent is well aware of Complainant's rights;
b. The web sites featuring adult content are evidence of bad faith intent to profit. The domain names are used solely to attract, for commercial gain, Internet users to a web site by creating a likelihood of confusion with Complainantís registered trademark as to the source, sponsorship, affiliation or endorsement of Respondentís web sites;
c. Respondent misuses the NOKIA trademark on the web sites to promote telecommunications products, since Respondent is thus directing Nokia customers from purchasing services also offered by Nokia through the misuse of Nokiaís trademarks;
d. Respondent has deliberately provided misleading contact information.
As indicated, the Respondent has not filed any response to the Complaint and has not answered the Complainantís contentions in any other manner.
6. Discussion and Findings
The Respondent was given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under Rules paragraph 2(a) to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint.
However, as previously indicated, the Respondent failed to file any reply to the Complaint and has not sought to answer the Complainantís assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given a fair opportunity to present its case, and the Panel will proceed to a decision on the Complaint.
The Respondentís default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove the elements required by Policy paragraph 4(a). In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant must prove that each of the three following elements are satisfied:
1. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.A);
2. The Respondent has no rights or legitimate interests in respect of the Domain Name (see below, section 6.B); and
3. The Domain Name has been registered and is being used in bad faith (see below, section 6.C).
Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from the Respondentís failure to reply to the Complainantís assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panelís decision is based upon the Complainantís assertions and evidence and inferences drawn from the Respondentís failure to reply.
A. Identical or Confusingly Similar
The Complainant has provided sufficient evidence of its rights to the trademark NOKIA, that it uses world wide and has registered in several countries, including the European Community and the UK.
The disputed domain names are <nokiamo.com> and <suonanokia.com>.
The Policy requires that the disputed domain name be 'identical or confusingly similar' to the Complainant's NOKIA trademark. The domain names in dispute and the Complainantís NOKIA trademarks are not identical, and the issue is therefore whether the domain names and the NOKIA trademarks are confusingly similar.
The domain names are combinations of the NOKIA trademark and the generic terms amo (love) and suona (ring tone). In this combination the well-known trademark NOKIA is the distinctive element, therefore creating the likelihood of confusion as to the origin of the domain names and to possible affiliations between Respondent and Complainant. The public may think that the disputed domain names are connected to the NOKIA trademark.
In view of the above, the Panel finds that the domain names are confusingly similar to the trademark NOKIA.
B. Rights or Legitimate Interests
Even though the Respondent has not filed any reply to the Complaint and has not contested the Complainantís assertions, it is upon the Panel to consider whether the Respondentís use of the disputed domain name demonstrates rights or legitimate interests in the domain name. According to Policy paragraph 4(c), the following circumstances, if proved, demonstrate a registrantís rights or legitimate interests in a domain name:
(i) the registrant used or demonstrably prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;
(ii) the registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) the registrant is 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 complainantís mark.
To satisfy the requirements of Policy paragraph 4(c)(i), the Respondentís use of the disputed domain name must be in connection with a "bona fide" offering of goods or services. In the circumstances of this case the Respondentís use of the disputed domain name is not "bona fide" within the meaning of Policy paragraph 4(c)(i) since there is no apparent legitimate justification for the Respondentís registration and use of the <nokiamo.com> and <suonanokia.com> domain names that are confusingly similar to the Complainantís trademark. The Respondent would only have a right to register and use the disputed domain names if Complainant had specifically granted that right. Complainant has not licensed or otherwise permitted Respondent to use the trademark NOKIA. The mere fact that a Respondent sells logos and ring tones compatible with NOKIA mobile phones is not sufficient for Respondent to be able to claim a legitimate interest in the domain names.
In addition, the Panel draws an adverse inference from the Respondentís failure to provide any explanation or rationale for its use of the disputed domain names for its web sites.
Policy paragraph 4(c)(ii) is not applicable. The Respondent does not contend, and there is no evidence that, the Respondent has been commonly known by the disputed domain name or that the disputed domain name is derived from one of Respondentís trademarks or trade names.
Policy paragraph 4(c)(iii) is not applicable. The Respondent is using the domain names for web pages with commercial links and advertisements.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Policy paragraph 4(a)(iii) requires the Complainant to prove that the Respondent registered and has used the disputed domain name in bad faith. The language of Policy paragraph 4(a)(iii) requires that both bad faith registration and bad faith use be proved.
Policy paragraph 4(b) provides that the following circumstances are deemed to be evidence that a registrant has registered and used a domain name in bad faith:
(i) circumstances indicating that the registrant has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant does not rely on Policy paragraphs 4(b)(i), 4(b)(ii) or 4(b)(iii) but relies upon Policy paragraph 4(b)(iv), which requires the Complainant to establish that the Respondent registered and is using the disputed domain names in order to confuse and divert Internet traffic to its web sites for commercial gain.
The Panel finds that the Respondent apparently knew of the Complainantís NOKIA trademark and registered and is using the disputed domain names in order to confuse and divert Internet traffic to the Respondentís web sites, based upon the following circumstances:
It is clear that Respondent as a business active in the mobile phone market, knows or at least should have known the trademark NOKIA when registering the disputed domain names <nokiamo.com> and <suonanokia.com>. Respondent has deliberately included the well-known trademark NOKIA in the disputed domain names in order to attract business to its web sites. By registering and using the disputed domain names Respondent has created a likelihood of confusion with the NOKIA trademark as to the affiliation or endorsement of its web sites.
The panel therefore concludes that there is sufficient evidence that Respondent's registration and use of the domain names <nokiamo.com> and <suonanokia.com> is in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <nokiamo.com> and <suonanokia.com> be transferred to the Complainant.
Madeleine De Cock Buning
Dated: June 10, 2003