The Complainant is Nokia Corporation of Espoo, Finland, represented internally.
The Respondent is Urmas Saask, Moscandle Ltt of Tallinn, Estonia.
At the time of the filing of the Complaint, the disputed domain name <vertuboutique.com> was registered with Instra Corporation Pty Ltd.; subsequently the disputed domain name <vertuboutique.com> became registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2009. On October 13, 16, 20, 22, and 26, 2009, the Center transmitted by email to Instra Corporation Pty Ltd. a request for registrar verification in connection with the disputed domain name. Finally, on October 27, 2009, Instra Corporation Pty Ltd. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 October 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 18, 2009.
It came to the Center's attention subsequent to the Respondent's default that the registration of the disputed domain name <vertuboutique.com> had changed from the Registrar of record, Instra Corporation Pty Ltd., to GoDaddy.com, Inc. The Center duly transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. GoDaddy.com transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details.
The Center appointed J. Christopher Thomas, Q.C. as the sole panelist in this matter on November 25, 2009. 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.
The Complainant is a manufacturer of telecommunications products, including mobile phones and accessories therefor.
In addition to selling such goods under the NOKIA trademark, the Complainant sells luxury mobile phones under the VERTU and stylized “V” trademarks. Such trademarks have been registered throughout the world. Copies of the Complainant's trademark registration certificates such as Community Trademark Registration No. 002486603, WIPO International Registration Nos. 771391 and 759086, and United States Registration Nos. 2,816,057 and 2,868,362 were annexed to the Complaint.
VERTU brand mobile phones were introduced in 2002 and garnered publicity due to their design, craftsmanship and the materials from which they were made. For example, precious stones are often used to adorn them. Each VERTU handset is built by hand in England, using high end materials and precision-engineered components such as aerospace-grade titanium. In 2005, VERTU launched a collection of phones adorned with diamonds along the sides of the handset. The Complainant submitted press releases and advertisements relating to these handsets with its Complaint.
The Complainant owns numerous domain names consisting of or comprising the term VERTU, including the domain names, <vertu.com>, <vertu.mobi>, <vertu.cn>, <vertu.de>, <vertu.ro>, etc.
The Complainant also submitted evidence showing that the Respondent's web site to which the disputed domain name resolves states that it is the “Home Of High Quality Replica Phones” and further that: “Our copies of VERTU have original-like logos and are labeled VERTU.” The web site states further that while VERTU phones “sell for upwards of $300,000” its phones “come at a pittance in comparison” but “they look, feel and function exactly, precisely like the originals.” The evidence is that the prices of the VERTU branded goods offered for sale at “www.vertuboutique.com” are a fraction of the prices charged for authentic VERTU products.
Upon becoming aware of the Respondent's website, the Complainant commenced an investigation by arranging for the purchase of a sample product from the site on November 14, 2008. The handset, purchased for $350.00 including shipping, arrived on December 3, 2008.
The Complainant confirmed that the handset bore the VERTU trademark, but that it had not been manufactured by it. For example, while authentic VERTU handsets are manufactured in England, the purchased handset had been shipped from a return address of “M. L. K., Shanghai” (remainder of address in Chinese). The Complainant concluded that the product was counterfeit. A copy of the investigation report was submitted with its Complaint.
On February 12, 2009, the Complainant sent a cease and desist letter to the Respondent. A copy of this was annexed to the Complaint. No reply was received.
The Complainant was unable to find either the name or organization as listed in the information identified by Respondent in its domain name registration in the Estonia telephone book.
The Complainant began by asserting that the disputed domain name is identical or confusingly similar to its VERTU trademark. The disputed domain name includes the Complainant's VERTU mark in its entirety and adds the generic term “boutique”. In the Complainant's view, this does not add any distinctive features to the disputed domain name that would be capable of overcoming a claim of confusing similarity.
Numerous UDRP panel 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 trademark. In this regard, the Complainant referred to decisions involving itself and its NOKIA trademark (such as 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); and Nokia Corporation v. Nick Holmes t/a EType Media, WIPO Case No. D2002-0001 (March 6, 2002)). All of these cases have found that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark.
Turning to the issue of rights or legitimate interests, the Complainant asserted that it has not authorized, licensed or permitted the Respondent to register or use the disputed domain name or its VERTU mark. The web site to which the disputed domain name resolves offers for sale counterfeit goods under the VERTU mark. Reference was made to prior panel decisions that have found that there can be no legitimate interest in the sale of counterfeit goods.
It was observed that the Respondent has no rights to any trademark consisting of the term “Vertu” in any country. The disputed domain name has no apparent relationship to Respondent's name “Urmas Saask” or organization “Moscandle Ltt” or to any other information identified by Respondent in its Domain Name registration. Prior panels have held under the UDRP that once the complainant makes a prima facie showing that the registrant does not have rights or legitimate interests in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name.
Turning to the third issue, namely whether the disputed domain name has been registered and used in bad faith, the Complainant asserted that since it is plain that the web site to which the domain name resolves offers for sale counterfeit goods under the VERTU mark, this constitutes bad faith under the Policy. It pointed to prior UDRP cases that have reached that conclusion.
Moreover, the disputed domain name is so confusingly similar to Complainant's name and VERTU mark that an Internet user is likely to believe that the “www.vertuboutique.com” web site is authorized by the Complainant, when it in fact is not, and Internet users searching for authentic and authorized VERTU brand products will be diverted to the Respondent's site instead of the Complainant's authorized web site. This is disrupting the Complainant's business and the intentional registration of a confusingly similar domain name is evidence of bad faith pursuant to UDRP paragraph 4(b)(iv).
It was contended that given the distinctive nature of the Complainant's VERTU mark, there could be no doubt that the Respondent was aware of the Complainant's mark at the time that it registered the disputed domain name. Indeed, the explicit reference to Nokia's VERTU handsets on the Respondent's web site is, in the Complainant's view, irrefutable evidence of knowledge of the VERTU mark.
Finally, the Complainant noted that it was unable to find either the name or organization as listed in the information identified by the Respondent in its domain name registration in the Estonia telephone book. It suggests that since it is unlikely that a legitimate business would choose to be unlisted in a local directory, this may indicate that the disputed domain name information provided by the Respondent is false. If so, this too supports a finding of bad faith.
In accordance with paragraph 4(i) of the Policy, the Complainant requests the Administrative Panel to issue a decision that the domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions.
The Panel has reviewed the Complaint and the documents annexed thereto. In light of these materials this Panel finds that the Complainant has made out its case.
The disputed domain name <vertuboutique.com>, incorporating as it does the VERTU mark, is confusingly similar to the registered trademarks of the Complainant. The addition of the generic word “boutique” does not serve to change this finding.
The disputed domain name <vertuboutique.com> appears to refer to the presence on the Internet of the Nokia Corporation under its trademark VERTU, or suggests the existence of a legal or economic relationship between the Respondent and the Complainant. The Complainant has pled substantial un-rebutted evidence to show that no such relationship exists and further that the telephone handsets that the Respondent has marketed through the website are counterfeit. The evidence is overwhelming that the Respondent does not hold any rights or legitimate interests in the disputed domain name.
There is also no doubt that the disputed domain name has been registered and is being used in bad faith. The name is being used with the express intention to attract, for commercial reasons, Internet users to a web site through which counterfeit handsets bearing the Complainant's mark are marketed. The only connection the Respondent has to the Complainant is an illicit intention to exploit its intellectual property rights. This constitutes registration and use in bad faith within the meaning of the Policy.
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 <vertuboutique.com> be transferred to the Complainant.
J. Christopher Thomas, Q.C.
Dated: December 15, 2009