WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nokia Corporation, Navteq Corporation v. Juha Vainio
Case No. D2008-0772
1. The Parties
The Complainant is Nokia Corporation, Finland; Navteq Corporation, United States of America, Finland, both represented by Benjon Ltd,, Finland.
The Respondent is Juha Vainio, Turku, Finland.
2. The Domain Name and Registrar
The disputed domain name <nokianavteq.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2008. On May 16, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name(s) at issue. 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 May 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2008. The Response was filed with the Center on June 9, 2008.
The Center appointed George R. F. Souter as the sole panelist in this matter on June 24, 2008. 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 Complainants have drawn the Panel’s attention to a long list of registrations of the trade mark NOKIA in the name of one of the complainants in over 170 countries, and to the registration of NAVTEQ as a European Community trade mark by the other Complainant.
The Complainants have also drawn the Panel’s attention to the 2007 evaluation of the trade mark/brand NOKIA, by the well-known brand evaluation company, Interbrand Corporation, as the 5th most valuable in the world.
The Complainants have further drawn the Panel’s attention to a Nokia Corporation Press Release, dated October 1, 2007, announcing Nokia’s intention to acquire Navteq Corporation.
The domain name at issue was registered by the Respondent two days later, on October 3, 2007.
5. Parties’ Contentions
The Complainants contend that a series of prior decisions by panels in previous proceedings under the Policy establish the right of complainants owning trade mark rights in separate trade marks to succeed in proceedings in which their trade marks have been conjoined by a Respondent in a domain name (Danisco A/S and Genencor International, Inc. v. Bong-Gyu Jeong, WIPO Case No. D2005-0973; Aventis SA, Aventis Pharma SA. v. Nicki On, WIPO Case No. D2003-0899; Vivendi S.A., The Seagram Company Ltd., Joseph E. Seagram & Sons, Inc., Universal Studios, Inc., and Universal City Studios, Inc. v. CPIC NET, WIPO Case No. D2000-0685; AT&T Corp v. Beomjoon Park, WIPO Case No. D2001-0133; Viacom International Inc. v. Beomjoon Park, WIPO Case No. D2001-0220; L'Air Liquide v. MIC, WIPO Case No. D2001-1246, Pharmacia & Upjohn AB v. Monsantopharmacia.com Inc., WIPO Case No. D2000-0446; Repsol YPF, SA v. COMn.com, WIPO Case No. D2001-0741; Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142; Société des Produits Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118; Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC, WIPO Case No. D2003-0112; Time Warner Inc. and EMI Group plc v. CPIC Net, WIPO Case No. D2000-0433).
The Complainants also contend that “[t]he use and registration of the names of two well-known multinationals shortly after the announcement of their merger by someone with no connection with either of the firms is a classic example of opportunistic cybersquatting”, and have particularly drawn the Panel’s attention to the decision in Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC, WIPO Case No. D2003-0112.
The Complainants further contend that the status of NOKIA as a well-known mark has been accepted by panels in many previous decisions under this Policy.
The Complainants allege that the Respondent has no rights or legitimate interests in the domain name at issue, and that the Respondent has registered the domain name at issue in bad faith, and, under the doctrine established by Telsta Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (the “Telstra” decision), can be deemed to satisfy the requirement of use of the domain name in bad faith.
The Respondent states he is a businessman and in essence explains his reasons for choice of the domain name at issue, by splitting the domain name thus: Nokian (which is the genitive form of Nokia) + AV (for audio-visual equipment) + TEQ (presumably for “technology” etc). He says his intention is to establish a company called “Nokian AV-TEQ”. He justifies the use of the “Nokia” component by pointing out that Nokia is the name of a town in Finland, which “which would be the place where my company should start and operate”, and refers to a number of Finnish companies which include the town name Nokia. The Respondent states that he does not want any money from the Complainant for the domain name, but rather than they give any such money to charity.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that a complainant must prove to merit a finding that the domain name of Respondent be transferred to the complainant or be cancelled:
(i) the domain name is identical or confusingly similar to a trademark or service mark (“mark”) in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the domain name at issue is confusingly similar to marks in which the Complainants have rights. The disputed domain name is the mere conjoining of the individual trade marks of the Complainants that were in merger negotiations at the time of the domain name registration. The Panel’s finding is also consistent with the previous decisions brought to its attention establishing the right of owners individual marks conjoined in a domain name to succeed under the first element of the Policy.
Accordingly, the Panel finds that the Complainants have satisfied the test of Paragraph 4(a)(i) referred to above.
As of the date of the registration of the domain name at issue, the Respondent has not presented any viable connection with either the word “nokia” or the word “navteq”.
The Panel also finds that the NOKIA trade mark is so well-known that its use in a domain name would require considerably more justification than the Respondent has offered. The Panel notes by contrast, as an example of an acceptable level of justification, that the town of Nokia operates the web site <nokiankaupunki.fi> (“town of Nokia”.fi, in English). In particular, the Panel notes that the Respondent has not provided dispositive evidence of demonstrable preparations to set up a company called “Nokian AV-TEQ”. The Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests, which the Respondent has not in this Panel’s view adequately rebutted.
Accordingly, the Panel finds that the Complainants have satisfied the test of Paragraph 4(a)(ii) above.
The Respondent states that he has been a businessman for many years. As an experienced businessman, it should have been natural to him to seek professional advice on adoption of a domain name, and had he taken professional advice, the Panel is convinced that he would have been dissuaded from registering the domain name at issue.
In any event, it is not disputed that the NOKIA mark is well-known globally, and the Panel considers it inconceivable that the Respondent (particularly as a Finnish Resident) would not have been aware of that mark. Nokia is also the name of a town in Finland. The crux of the matter here is therefore whether the Respondent registered the disputed domain name because of its perceived value as a domain name confusingly similar to the Complainants marks, or because of its association with the town of Nokia. The Panel believes on the present record that the former is the more likely explanation. The Panel finds it curious in this regard that although the Respondent points to a number of companies which it says contain the word “Nokian” (presumably as a geographic reference to the town of Nokia), the Respondent himself appears to be located not in Nokia the town, but in Turku. As noted, other than his stated intent, there is little evidence before the Panel of the Respondent having taken demonstrable steps to set up, let alone operate a genuine business, under the name “Nokian AV TEQ”.
The Nokia announcement of the proposed merger with Navteq on October 1st 2007, which would certainly have been widely reported in the Finnish media, and the Respondent’s registration of the domain name at issue a mere two days later, raises inevitable suspicions as to the Respondent’s bona fides in this matter (which the Respondent, in his submissions, did nothing to allay). It is in the Panel’s view also likely that the Respondent, a businessman, would have been aware at least of the possibility of the Complainants seeking to obtain rights in a trademark combination of NOKIA and AVTEQ. See e.g. ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669.
Taking everything into consideration, the Panel finds that the Complainants have satisfied the “registration in bad faith” requirement of Paragraph 4(a)(iii) above.
In connection with the “use in bad faith” requirement of Paragraph 4(a)(iii) above, the Panel notes that the website at the disputed domain name (headed “Nokian AV-TEQ”) appears to contain a number of links and product advertisements for audio-visual related products. However the website itself gives the appearance of being largely inactive (for example, many of the links do not function). In short, it is not a website that gives the impression of being connected to an active, bona fide business (although the Panel does not exclude the possibility of revenue being generated from it in some way). To the extent that the website is inactive and in effect being passively held by the Respondent, the Panel proposes to apply the “Telstra” doctrine referred to above. The NOKIA mark is clearly well known, and the Panel finds it difficult on the present record to conceive of any use of the disputed domain name by the Respondent that would not impinge upon the Complainants’ rights. To the extent that the website is being actively used, given the Panel’s finding that the domain name was registered by the Respondent due to its confusing similarity to the Complainants mark or marks, any subsequent use by the Respondent would also likely be in bad faith. The fact that the Respondent himself states that he will accept no money for the domain name, but that any such money should rather be directed to charity, however laudable in principle, does not suffice to offset a finding of bad faith in the instant proceeding. Accordingly, the Panel finds that the Complainants have satisfied the “use in bad faith” requirement of Paragraph 4(a)(iii) above.
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 name <nokianavteq.com> be transferred, as requested by the Complainants, to Nokia Corporation.
George R. F. Souter
Dated: July 8, 2008