The Complainant is Nokia Corporation of Espoo, Finland, represented by Brendan J. Reilly, United States of America.
The Respondent is Ara Guloglyan of Los Angeles, California, United States of America.
The disputed domain names <vertuemail.com> and <vertumail.com> are registered with Melbourne IT Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2009. On December 21, 2009, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain names. On December 23, 2009, Melbourne IT 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 December 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2010. The Response was filed with the Center on January 13, 2010.
The Center appointed Alan L. Limbury as the sole panelist in this matter on January 25, 2010. 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 well-known manufacturer of telecommunications products, including luxury mobile phones which it has sold under the trademark VERTU since 2002. The Complainant holds WIPO International trademark registrations for the mark VERTU, Nos. 771391 dated November 30, 2001 and 75086 dated June 7, 2001.
The disputed domain names were registered on October 11, 2006. They resolve to web sites powered by AT&T Yahoo! Web Hosting, listing sponsored links for various products, including cell phones, which themselves resolve to sites offering some Nokia but mostly competitor products. No links resolve to sites offering the Complainant's VERTU products.
The Complainant says the disputed domain names are identical or confusingly similar to the Complainant's VERTU trademark and that the Respondent has no rights or legitimate interests in respect of the disputed domain names, which have been registered and are being used in bad faith.
The Respondent says he purchased the disputed domain names in 2006 for the sole purpose of creating and maintaining virtual email websites for independent and amateur artists, the idea being to allow artists to be able to send emails, post and show to the world their creations, such as music videos, clips, paintings, sculptures and other art creations. The word “vertu” was chosen for its dictionary meaning of “Fine Arts & Visual Arts”, “The artistic way”. However, he has not been able to implement this project due to lack of funds, having regard to the large investment required.
The Respondent says that the disputed domain names have never been linked to active websites but he is retaining them until he will be able to move forward with this project financially. This is taking longer than anticipated due to current financial hardships. In the meantime he has never used them in any other ways to generate income. Furthermore, the Respondent says he had never heard, seen or held a telephone called “Vertu” until the notice he received concerning these domain names. His business has nothing to do with Nokia and its products.
Following up this issue, the Respondent has discovered that there are others conducting business under the name “Vertu” such as a jewelry store in Denver.
In conclusion the Respondent stresses the point that his future websites are not intended to interfere with the Complainant's products and type of business. That is not the Respondent's business model or plan.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this 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.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
The Complainant has registered trademark rights in the mark VERTU. Although the Complainant exhibited registration certificates in additional to the WIPO international registrations mentioned above, these were in the name of a United Kingdom company, Vertu Limited, to which it appears one of those registrations was assigned by the Complainant. No explanation for this is given in the Complaint and, rather than speculate as to any possible relationship between the Complainant and that company, the Panel has disregarded those registrations.
The disputed domain names wholly incorporate the Complainant's VERTU mark. The additions do nothing to detract from the distinctiveness of that mark. Accordingly the Panel finds that the disputed domain names are identical or confusingly similar to the Complainant's mark.
The Complainant has established this element of its case.
The Complainant has not given the Respondent permission to incorporate its mark in the disputed domain names. They lead to a parking page at which the disputed domain names are offered for sale and at which there are numerous “pay-per-click” links to other sites, including those of the Complainant's competitors in the mobile phone market.
These circumstances establish a prima facie case of absence of rights or legitimate interests in the disputed domain names on the part of the Respondent, to whom the onus therefore shifts to establish, by concrete evidence, that he does have such rights or legitimate interests.
The Respondent's bare assertions do not suffice. The Respondent provides not one piece of evidence to support his claimed plan to use the disputed domain names as a means to enable artists to show their works. The only evidence before the Panel shows that the domain names are being used to divert potential customers of the Complainant to its competitors, through sites designed to generate revenue in which the Respondent, as the owner of the disputed domain names, can be expected to share.
These circumstances do not demonstrate any rights or legitimate interests in the disputed domain names on the part of the Respondent. The Complainant has accordingly established that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant's trademark rights arose prior to the registration by the Respondent of the disputed domain names, so it is possible that he Respondent had the Complainant's mark in mind when he registered the disputed domain names.
The use of parking pages operated by a third party does not absolve a registrant from responsibility for the content those pages.
The use to which the disputed domain names are being put is use of the kind contemplated in the Policy, paragraph 4(b)(iv). This constitutes evidence of both bad faith registration and bad faith use within the Policy, paragraph 4(c)(iii).
In the absence of any countervailing evidence tending to establish registration for a permissible purpose, the Panel finds that the disputed domain names were registered and are being used by the Respondent in bad faith.
The Complainant has established this element of its case.
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, <vertuemail.com> and <vertumail.com> be transferred to the Complainant.
Alan L. Limbury
Dated: February 4, 2010