WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nokia Corporation v. Kaustubh Bhandari
Case No. D2010-0972
1. The Parties
Complainant is Nokia Corporation of Espoo, Finland, represented by Brendan J. Reilly, United States of America.
Respondent is Kaustubh Bhandari of Maharashtra, India.
2. The Domain Name and Registrar
The disputed domain name <ovigames.net> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2010. On June 14, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On June 15, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2010. Respondent sent an e-mail communication to the Center on July 5, 2010 stating that Respondent was ready to transfer the disputed domain name. In light of said e-mail communication, Complainant requested a 30-day suspension. On July 13, 2010 the administrative proceeding was suspended until August 12, 2010. On August 18, 2010 Complainant requested that the Center resume the administrative proceeding. On August 25, 2010 the Center notified Respondent that the administrative proceeding had been re-instituted and that the due date for Response was August 30, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 1, 2010. On September 2, 2010 Respondent sent an e-mail to the Center stating again that Respondent was willing to transfer the disputed domain name to Complainant.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on September 17, 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.
4. Factual Background
The trademark upon which the Complaint is based is OVI. According to the documentary evidence and contentions submitted, Complainant owns a number of trademark registrations for the OVI trademark around the world, including for instance in the United States Trademark Registration No. 3,554,304, Community Trade Mark Registration No. 6049035, WIPO International Trademark Registration No. 933807, the People’s Republic of China Trademark Registration No. 933807, and Benelux Trademark Registration No. 832026, as per the chart below:
TM NUMBER TYPE REG.DATE CLASSES
3554304 USPTO December 30, 2008 9, 41
6049035 CTM June 25, 2008 9, 28, 35, 38, 41
933807 Madrid Protocol June 29, 2007 9, 28, 35, 38, 41
933807 CN June 29, 2007 9, 35, 41
832026 Benelux October 25, 2007 41
According to the documentary evidence and contentions submitted, Complainant is a well-known manufacturer of telecommunications products, including mobile phones, accessories, devices and solutions for imaging, games, and other businesses. In addition to selling mobile phones and accessories under the NOKIA trademark, Complainant offers a range of Internet services under the trademark OVI. Complainant’s website “www.ovi.com” is the gateway to Nokia’s Internet services, including OVI Maps, OVI Music Store, OVI Messaging (email), OVI Contacts, OVI Share, OVI Files, various applications, games, and other media.
Complainant owns numerous domain names consisting of or comprising the term “ovi”, including, for instance, the domain names, <ovi.com>, <ovi.mobi>, <ovi.com.cn>, <ovi.jp>, and <ovi.ru>.
The disputed domain name was originally registered on May 13, 2008. According to the evidence filed by Complainant, Respondent acquired the disputed domain name on or about January 27, 2009.
5. Parties’ Contentions
Complainant argues that the disputed domain name is confusingly similar to the OVI trademark because (i) it includes Complainant’s OVI mark in its entirety, (ii) the addition of the generic term “games” does not add any distinctive features to the disputed domain name that would be capable of overcoming a claim of confusing similarity since games are a significant part of the Internet services offered by Complainant on its ”www.ovi.com” website, and (iii) the top-level domain “.net” is not to be taken into consideration.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Respondent is not an authorized dealer, distributor or licensee of the Complainant, (ii) Respondent has no rights to any trademark consisting of the term “ovi” in any country, (iii) the history of the domain name registration and of its use does not show that Respondent may claim any rights corresponding to the disputed domain name; and (iv) there is no legitimate reason for Respondent to have registered the disputed domain name other than to trade off the goodwill established in Complainant’s OVI mark by creating a false association with Complainant.
Finally, Complainant contends that Respondent registered and uses the disputed domain name in bad faith because (i) the domain name <ovigames.net> is so confusingly similar to Complainant’s OVI trademark that an Internet user is likely to believe that the website to which the disputed domain name resolves is authorized by Complainant so that Internet users searching for authentic and authorized OVI products using Internet search engines will be diverted to Respondent’s site instead of to the Complainant’s authorized website; (ii) Respondent knew of the existence of the OVI trademark in view of its reputation, and (iii) the website to which the disputed domain name resolves is a commercial site by reason of the banner ads appearing on it.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Respondent's Consent to Transfer
Respondent has stated twice Respondent’s willingness to transfer the disputed domain name. Upon receipt of the Center’s Notification of the Complaint, Respondent stated that “I am ready to surrender or transfer this domain. (currently domain is with reselleclub.com). Please let me know how we should go ahead. I am not interested in retaining domain as it's not giving me any commercial or logical benefit. A bit of commercial gain (few ten dollars as registration / transfer fees) is expected.“ As a result, the administrative proceeding was suspended and then later re-instituted as no amicable solution was achieved. Upon receipt of the Center’s Notification of Respondent Default, Respondent sent an e-mail stating that “as i said earlier i am agreed to handover domain to nokia. they haven't get back and i am not interested in retaining that domain. domain is already suspended long ago.”
In light of Respondent's consent to transfer the disputed domain name, the Panel should decide how to proceed. In Bharat Sanchar Nigam Limited (BNSL) v. Domain Hostmaster, WIPO Case No. D2007-1800, the panel reviews this issue by summarizing previous decisions:
“As analyzed by the panel in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, “panels, when faced with a “unilateral consent to transfer,” have taken three different approaches. Some panels have granted the relief requested on the basis of Respondent's consent without a review and analysis of the facts supporting the claim. Williams Sonoma, Inc. v. EZ Port, WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri, WIPO Case No. D2000-0195. Others have held that the consent to transfer is effectively a concession that the three elements of the Policy have been satisfied, and ordered transfer on this basis. Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398. Still other panels have proceeded to analyze whether the evidence submitted satisfies the three elements of the Policy. Société Française du Radiotéléphone-SFR v. Karen, WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co., WIPO Case No. D2003-0745.”
The Panel notes the existence of conflicting conduct on the part of Respondent. While Respondent originally expressed his willingness to transfer the disputed domain name, the Panel infers from his email that Respondent wished to retrieve a “bit of commercial gain”. Upon receipt of the notice of default, Respondent expressed a sort of unilateral consent to transfer. The Panel also notes that the website to which the disputed domain name formerly resolved contained links and ads to products which were similar to those offered by Complainant under the OVI trademark. Therefore, there are reasons to suspect that Respondent's motive to unilaterally consent to transfer is to conceal Respondent's bad faith conduct. In such cases, some panels have felt it appropriate to proceed to a decision (President and Fellows of Harvard College v. Texas International Property Associates - NA NA, WIPO Case No. D2008-0597).
Therefore, the Panel is of the view that this is not an appropriate case to order transfer without consideration of the merits.
A. Identical or Confusingly Similar
The disputed domain name <ovigames.com> incorporates the OVI mark in its entirety. Previous WIPO UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd, WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r. l., WIPO Case No. D2001-1206; Utensilerie Associate S. p. A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282.
In the instant case, Respondent has registered a domain name which combines the word “ovi” with the suffix “games”. It has been consistently decided that the addition of generic or descriptive terms to an otherwise distinctive trademark is often insufficient to avoid a finding of confusingly similarity to the registered trademark. The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2006-1137; Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Cologne Zone, WIPO Case No. D2001-1039; The Elisabeth Taylor Cosmetics Company v. NOLDC, Inc., WIPO Case No. D2006-0800; Accor v. Yossi Hasidim, WIPO Case No. D2001-0392.
That is particularly true where the generic term reflects a significant part of the business which is carried out by the trademark owner. This is the case here where Complainant offers inter alia games on its “www.ovi.com” website. This creates an obvious association with the OVI trademark and Complainant’s businesses. The Panel also notes that other WIPO UDRP decisions have held that the combination of a generic term with one of Complainant’s trademarks was insufficient to differentiate the domain name from the registered trademark. While some of those previous decisions relate to the NOKIA trademark, the reasoning is the same.
Also, the addition of the suffix “.net” is non-distinctive because it is required for the registration of the domain name: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.
Therefore, the Panel finds that the disputed domain name <ovigames.net> is clearly confusingly similar to the OVI trademark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The Panel finds as reasonable inter alia Complainant’s contentions that (i) Respondent is not an authorized dealer, distributor or licensee of the Complainant, and that (ii) Respondent has no rights to any trademark consisting of the term “OVI” in any country. In fact, Respondent’s communication to the Center and Respondent’s consent to transfer may be regarded as an effective concession that Respondent lacks rights or legitimate interests in the disputed domain name.
It has been established by previous WIPO UDRP decisions that, “while the overall burden of proof rests with the complainant, the burden of proof shifts to the respondent where the complainant establishes a prima facie case showing lack of rights and legitimate interests of the respondent to the disputed domain name”. Caixa D´Estalvis I Pensions de Barcelona v. Young N, , WIPO Case No. D2006-0406; Croatia Airlines dd v. Modern Empires Internet Ltd., WIPO Case No. D2003-0455). The Panel finds in this case that Complainant has satisfied its burden of providing sufficient evidence to show that Respondent lacks rights to or legitimate interests in the disputed domain name.
The consensus view in the WIPO UDRP panel decisions has been that once a complainant makes out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name; respondent then carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. (See also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.1).
In short, Complainant has satisfied its burden of providing sufficient evidence to make a prima facie case showing that Respondent lacks rights to or legitimate interests in the disputed domain name, and the Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
In view of the particulars of the instant case, the Panel finds that Respondent was undoubtedly aware of the existence of Complainant and of its trademark OVI when Respondent registered the disputed domain name. That finding is reinforced by the fact that Respondent chose to combine the word “ovi” with “games”, a term which describes one of the businesses in which Complainant is engaged.
As a matter of fact, in the case of a domain name so clearly connected to a registered mark, its use by someone with no legitimate interest in respect of the registered domain name constitutes what has been called “opportunistic bad faith”. See SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Perfumes Christian Dior v. Javier Garcia Quintas and Christian Dior. net, WIPO Case No. D2000-0226; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
The fact that Respondent acquired a domain name originally registered by another person does not change the reasoning applicable to the instant case. “It is well established that a transfer of a domain name to a third party amounts to a new registration under the Policy.” No Zebra Network Ltda v. Baixaki.com,Inc., WIPO Case No. D2009-1071. See also BWR Resources Ltd v. Waitomo Adventures Ltd, WIPO Case No. D2000-0861 (“The Panel accepts that ‘registration’ in the case of this Respondent refers to the date when it acquired the name from the person who first registered it.”); and Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. 2000-1406 (“there are several prior Panel decisions in which it has been held more generally that ‘registration’ extends to subsequent acts of acquisition”).
In addition, paragraph 4(b)(iv) of the Policy provides that if, by using the domain name the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location, that circumstance shall be evidence of the registration and use of a domain name in bad faith.
The Panel accepts as reasonable Complainant’s contention that Internet users searching for authentic and authorized OVI products using Internet search engines will be diverted to Respondent’s site instead of to the Complainant’s authorized website. In fact, a consumer encountering Respondent’s website accessed via the <ovigames.net> domain name would be likely to be confused as to the source, sponsorship, or approval of the content. The mere fact of diverting users in this misleading manner is evidence of bad faith. See The Gap, Inc. v. YongHoon Lee, SofTech, WIPO Case No. D2007-0386.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 <ovigames.net> be transferred to Complainant.
Manoel J. Pereira dos Santos
Dated: October 1, 2010