The Complainant is Nokia Corporation of Espoo, Finland, represented by Lovells, France.
The Respondent is Javier Campana of Madrid, Spain.
The disputed domain name <booklet-nokia.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2010. On February 18, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On February 19, 2010, GoDaddy.com, Inc. 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 February 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2010. The Respondent sent informal email communications to the Center on February 21, February 26, and March 5, 2010. However, no formal Response was submitted.
The Center appointed Ian Lowe as the sole panelist in this matter on March 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 the world's largest manufacturer of mobile phones with over 128,000 employees in 120 countries, sales in more than 150 countries, global annual revenue in 2008 of Euros 50.7 billion and operating profit of Euros 5.0 billion. It announced the launch of a new product, the Nokia Booklet 3G mini laptop on August 24, 2009. The Complainant is the proprietor of numerous registered trademarks comprising NOKIA in more than 170 countries including United States trademark number 2630022 NOKIA registered on October 8, 2002 and Community Trademark number 000340836 NOKIA registered on September 9, 1998.
The Complainant is also the proprietor of registered trademarks BOOKLET including International Registration number 1009612 registered on June 30, 2009 and Community Trademark number 008395832 registered on January 12, 2010.
The Domain Name was registered on October 23, 2009. At the date of the Complaint the Domain Name resolved to a website at “www.ebookreaderscentral.com” containing information and advertisements about electronic products such as Amazon Kindle and the Apple iPad, as well as various links to third party commercial websites.
A summary of the principal submissions made by the Complainant is as follows:
1) The Complainant is the proprietor of numerous registered trademarks around the world comprising NOKIA. These include United States trademark NOKIA registration number 2630022 registered on October 8, 2002 in classes 14, 21, 24, 34, 35, 36 and 41 and Community trademark NOKIA registration number 340836 registered on September 9, 1998 in classes 9, 35 and 38.
2) The Complainant is also the proprietor of a number of registered trademarks in respect of BOOKLET, including International trademark BOOKLET registration number 1009612 registered on June 30, 2009 in class 9 and Community trademark BOOKLET registration number 8395832 in class 9 filed on June 30, 2009 and registered on January 12, 2010.
3) The explosive popularity and consumer recognition of the NOKIA brand have made NOKIA one of the most famous companies and brands in the world.
4) The Domain Name is confusingly similar to the Complainant's trademark NOKIA as it wholly incorporates that trademark. The Domain Name is differentiated only by the prefix “booklet” in which the Complainant also has rights. As a result, the Domain Name is confusingly similar to both the Complainant's NOKIA trademark and to the Complainant's BOOKLET trademark.
5) The Complainant announced the launch of its Nokia Booklet product on August 24, 2009.
6) The Respondent has no rights or legitimate interests in the Domain Name. There is no suggestion that the Respondent could possibly invoke any of the circumstances listed in paragraph 4(c) of the Policy which sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name. The Respondent is not commonly known by the term “Nokia” or “Booklet” and has not made any legitimate noncommercial or fair use of the Domain Name. There are commercial activities taking place on and in connection with the Respondent's website such as advertisements for commercial enterprises and links to commercial businesses. These include businesses providing products and services in competition with the Complainant and websites corresponding to other domain names owned by the Respondent.
7) The Domain Name was registered and is being used in bad faith. The Complainant's NOKIA trademark is highly distinctive and famous and has been continuously used for at least 40 years. It is inconceivable that the Respondent did not have the Complainant's trademark in mind when registering the Domain Name. It could not reasonably have been chosen for any reason other than to seek benefit and derive advertising revenue from the huge goodwill and reputation attaching to the Complainant's famous NOKIA trademark and to attract for commercial gain Internet users to the Respondent's website. This is further evidenced by the fact that the Domain Name reproduces the term “Booklet” in which the Complainant also has rights and that the Respondent registered the Domain Name very shortly after the announcement of the launch of the Complainant's new product, the Nokia Booklet.
8) Given Nokia's worldwide prominence, it is clear that the Respondent registered the Domain Name in bad faith, with full knowledge that including the Complainant's famous trademark would likely cause an Internet user visiting the website to which the Domain Name redirects to believe that it is somehow sponsored by, associated with or affiliated with Nokia. The Respondent is intentionally attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion among Internet users between the Complainant's famous trademarks and the source, sponsorship, affiliation or endorsement of the Respondent's website.
9) It is not plausible to conceive of a circumstance in which the Respondent could legitimately use the Domain Name.
10) The Respondent has recently registered numerous other domain names reproducing well-known names or trademarks in which the Respondent has no apparent rights, including:
This is a further indication of the Respondent's intention to register domain names reproducing famous trademarks with a view to unduly benefiting from the reputation and goodwill established by legitimate businesses and thus a further indication of bad faith.
The Respondent did not file any Response to the Complaint. However, on February 21, 2010 the Respondent sent an email to the Center after being notified of the Complaint stating: “Regarding the domain <booklet-nokia.com> I'm willing to transfer it to the other party, please let me know how to proceed.”
That offer was not accepted by the Complainant who elected to proceed with the Complaint. In further email exchanges with the Respondent, the Respondent stated that the website associated with the Domain Name had been inactive and did not have any content that breaches trademark laws or harms the Nokia brand in any way. The Respondent also denied that there was any proof of trying to monetize the Domain Name taking advantage of the Nokia brand. He claimed that “the domain was intended as a non commercial fan page and place for discussion for the domain”.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service 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.
The Complainant has adduced uncontroverted evidence of numerous registrations in respect of the widely-known trademark NOKIA and of further registrations for BOOKLET. The Domain Name comprises the entirety of both the Complainant's marks. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
The Respondent has not formally replied to the Complainant's contentions by filing a Response. He has not displaced the assertion on the part of the Complainant that the Respondent does not and cannot have any rights or legitimate interests in the Domain Name. The Respondent's email reaction to the Complaint was simply to accept that the Domain Name should be transferred to the Complainant. His later emails to the Center and the Complainant claimed that the Domain Name was registered with a view to a noncommercial fan site but the Respondent still did not file a Response and there is no support for his statement. He did not deal at all with the fact that the Domain Name resolved to a website featuring advertisements and commercial links including competitors of the Complainant. The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
It is inconceivable that the Respondent could have registered the Domain Name without having in mind the Complainant and its trademarks NOKIA and BOOKLET. The Domain Name was registered shortly after the Complainant announced the launch of its new product the Nokia Booklet. The Domain Name resolved at the time of the Complaint to a website containing information and advertisements about competing electronic products such as the Amazon Kindle and the Apple iPad. The website included links to other commercial enterprises and to websites corresponding to other domain names owned by the Respondent.
The inescapable conclusion is that the Respondent registered and has used the Domain Name with the intention that users would be confused into believing that the website to which it resolved was operated by or with the consent of the Complainant or was authorised by or associated with the Complainant. The Respondent's exploitation of the Complainant's trademarks and goodwill with a view to commercial gain including through advertising revenue and sponsored links clearly amounts to bad faith use for the purposes of the Policy.
In the circumstances the Panel finds that the Domain Name was registered and is being used 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 name <booklet-nokia.com> be transferred to the Complainant.
Dated: April 8, 2010