WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nokia Corporation v. Nokia-girls.com
Case No. D2000-0912
1. The Parties
Complainant is Nokia Corporation which is a corporation organised under the laws of Finland and with its principal place of business in Helsinki, Finland. Its address is indicated as P.O Box 86, FIN-24101, Salo, Finland. In this case Complainantīs contact details are Paul Juhasz, Esq. Director IPR Americas, Nokia, Inc, 6000 Connection Drive, Irving, Texas 75039, United States. His telephone number is (972) 894-5000 and its fax number is (972) 894 5050; the e-mail address is "email@example.com" Complainantīs authorised representative in this case is John Paul Reiner, Esq. Shannon M. Jost, Esq. White and Case LLP, 1155 Avenue of the Americas, New York, NY 10036. His telephone number is (212) 819 8200 and fax number (212) 354-8113; the e-mail address is "firstname.lastname@example.org"
Respondentīs identity is by Complainant indicated as "Nokia-girls.com (a/k/a IBCC a/k/a Nokiagirls.com), 2 Shengan Rd, Wuxi, Jianshu 214035,CN 86-510 3090155 (Fax)86-510-3709272." As Respondentīs e-mail addresses are given "tailake@PUBLIC1.WX.JS.CN" and "admin@WEBPROVIDER.COM"
2. The Domain Name and Registrar
The domain name at issue is NOKIA-GIRLS.COM which is registered with Network Solutions, Inc., 505 Huntmar Drive Part, Herndon, VA 20170, United States.
3. Procedural History
A Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the Center) on August 1, 2000, in e-mail form and on August 3, 2000, in hard-copy form. On August 7, the Center acknowledged receipt of the Complaint.
Having sent, on August 10, 2000, a Verification Request to the Registrar, a Registrar Verification was received by the Center on August 15, 2000. That Verification indicated:
a) that Network Solutions was in receipt of the Complaint sent by Complainant,
b) that Network Solutions is the Registrar of the domain name registration at issue,
c) that Registrant is "nokia-girls.com (NOKIA-GIRLS-DOM) 2 Shengan RD, Wuxi, Jiangsu 214035 CN"
d) that the domain name is "NOKIA-GIRLS.COM",
e) that Administrative Contact, Billing Contact is "gaitskell, zhu (ZG496) tailake@PUBLIC1 WX.JS.CN, ibcc 2Shengan RD, wuxi, jiangsu 214035 CN 86 510-370-9272 (FAX) 86 510 370 9272",
f) that Technical Contact, Zone Contact is "webmaster, WPP Inc (WIW14)admin@WEBPROVIDER.COM WWP Inc 10103 Baltimore Ave. Apt#2203, College Park, MD 20740 301-977 6000",
g) that Network Solutions 5.0 Service Agreement is in effect, and
h) that the domain name registration NOKIA-GIRLS.COM is in "Active" status.
Having verified that the Complaint satisfied the formal requirements under the Policy and the Rules, a Notification of Complaint and Commencement of Administrative Proceeding was transmitted, on August 18, 2000, to Complainant by e-mail and to Respondent (to the Registrant, to Administrative Contact, Billing Contact, to Technical Contact, Zone Contact and to "postmaster@NOKIA-GIRLS.COM, by mail and e-mail respectively)
Having received no response from Respondent, the Center issued, on September 11, 2000, a Notification of Respondent Default.
Having invited Mr. Henry Olsson to be a Panelist in this case and having received Mr. Olssonīs Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed, on October 18, 2000, a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Olsson was formally appointed as Sole Panelist. The Projected Decision Date was October 31, 2000.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.
4. Factual Background
In the Complaint, Complainant agrees, in accordance with Paragraph 3(b)(xiii) of the Policy, to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name at issue to the jurisdiction of the courts in the principal office of the concerned Registrar, Network Solutions.
Complainant furthermore indicates that no previous legal proceedings have been commenced or terminated by Complainant in connection with, or relating to, the domain name that is the subject of the Complaint.
According to the 5.0 Service Agreement, which incorporates the Policy, Respondent is required to submit to a mandatory administrative proceeding according to the provisions in Paragraph 4.a of the Policy, the details of which are discussed below.
5. Parties Contentions
As a general background, Complainant refers to a decision by an Administrative Panel of April 18, 2000, in Case D2000-0102 between Complainant and IBCC/Nokiagirls.com, where the Panel ordered the cancellation of the domain name NOKIAGIRLS.COM. According to Complainant, that decision was officially released to the Parties on April 20, 2000, and four days thereafter Nokia-girls.com registered the virtually identical domain name NOKIA-GIRLS.COM; IBCC, Nokiagirls.com and Nokia-girls.com have the same address at 2 Shengan Rd, Wuxi, Jiangsu 214035. Complainant contends that the web site now located at the NOKIA-GIRLS.COM domain name retained as of June 27, 2000, duplicates or substantially duplicates the content previously posted at the website and domain name NOKIAGIRLS.COM and also features various references to IBCC and includes a claim of IBCCīs ownership of copyright in the site purportedly owned by Nokiagirls.com. Therefore, Complainant believes that Nokia-girls.com is the same entity as, or a successor in interest in, IBCC and Nokiagirls.com or that, in any event, the companies are related entities.
As regards Complainantīs trademarks, Complainant indicates that it owns registrations for NOKIA as a trademark and a service mark in the United States and in a number of other countries, including Finland and most industrialised countries. Also, NOKIA is a strong and famous international mark as a result of Complainantīs activities as a world leader in digital technologies, including mobile telephones, and the extensive media attention given to those activities. Nokia Corporation has operations in more than 45 countries with sales in 130 countries, including China. Nokiaīs fixed network systems are in use in more than 50 countries. In summary, Complainant alleges that the Nokia trademark is universally recognised and is relied upon as identifying Complainant as the sole source of NOKIA products and services; as a result the trademark NOKIA is an extremely valuable commercial asset.
As regards Respondentīs Internet exploitation of the NOKIA brand, Complainant contends that Respondent, without Complainantīs consent and with full knowledge about the famous NOKIA trademark and of the prior Administrative Panel decision concerning the NOKIAGIRLS.COM" domain name, Respondent registered immediately thereafter the domain name NOKIA-GIRLS.COM on April 24, 2000. This domain substantially replicates Complainantīs NOKIA trademark and Complainant contends that, upon information and belief, Respondent is in the process of establishing a commercial website at this domain name, possibly with pornographic or other adult-oriented content. Complainant refers in this context to the conclusion in the above-mentioned previous Administrative Panel Decision to the effect that "it can reasonably be presumed that Respondent (in that case) has entered into commercial agreements whereby he benefits financially from visitors to his website who "click" on the different banner ads Respondent (in that case) is thereby taking a free ride on the goodwill of Complainantīs trademark NOKIA."
Complainant furthermore refers to various unsuccessful attempts to cease Respondentīs exploitation of the trademark NOKIA. As valid grounds for cancellation under ICANN Rules Paragraph 3(b)(ix) Complainant asserts that Respondent has consciously and intentionally endeavoured to foster a false identification and association with Complainant for commercial gain. Complainant contends that such activities are trademark infringement and unfair competition, dilution of a famous and distinctive mark, cybersquatting and deceptive practices in violation of the United States Lanham Act and state statutory and common law.
As then regards identity or confusing similarity, Complainant refers to the previous Administrative Panel decision mentioned above where it is stated that the domain name in that case "consists of the trademark of the Complainant to which the general noun "girls" is added. The ability of this work "girls" to distinguish the Domain Name from the trademark of the Complainant is limited." Complainant contends that like NOKIAGIRLS.COM" the domain name "nokia-girls.com" is confusingly similar to Complainantīs NOKIA trademark.
As regards rights or legitimate interests, Complainant contends that Respondent has no legitimate interests in the domain name at issue in view of Complainantīs prior common law rights in trademark and the trade name NOKIA, which rights were established by Complainantīs use in commerce of NOKIA prior to Respondentīs acquisition of NOKIA-GIRLS.COM and because of Complainantīs priority as regards its rights in the trademark and the trade name NOKIA. Respondent is also not making a legitimate non-commercial fair use of the domain name NOKIA-GIRLS.COM; upon information and belief, Respondent is using the famous and distinctive mark NOKIA to draw Internet users to its site so that it can promote the site to advertise and thus make a profit from the sale of advertising space.
As regards registration and use in bad faith, Complainant contends that, upon information and belief, Respondentīs wholesale incorporation of Complainantīs famous and distinctive trademark into the contested domain name is a wilful and intentional bad faith attempt to attract Internet users to its site, for commercial gain, by creating a likelihood of confusion as to the source, sponsorship, affiliation and endorsement of its site. Complainant refers in this context to a conclusion in the previous above-mentioned Administrative Panel decision to the effect that "(t)he trademark NOKIA is currently enjoying such fame internationally that it cannot be reasonably argued that Respondent/IBCC could have been unaware of the trademark rights therein when registering the Domain Name." According to Complainant, Respondentīs bad faith is also indicated by its registration of the virtually identical domain name NOKIA-GIRLS.COM and posting of virtually identical content to the NOKIA-GIRLS.COM just four days after the publication of the Administrative Panel decision cancelling the NOKIAGIRLS.COM domain name. Complainant furthermore contends that as determined in that previous administrative proceeding, Respondentīs bad faith is exemplified by its systematic registration of additional domain names that incorporate famous trademarks of other parties, as apparent from, inter alia, its registration of DELLGIRLS.COM.
Respondent has not submitted any Response and is in Default.
6. Discussion and Findings
Rule 15 of the Rules prescribes that the Panel shall decide a complaint on the basis of the statements made and document submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
In the case of Default by a Party, Rule 14 prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate. In this case, Respondent has not submitted any Response and has consequently not, despite the opportunity given, contested any of the contentions by Complainant. The Panel will therefore have to operate on the basis of the factual statements contained in the Complaint and the documents available to support these contentions. The Panel notes in this context that Complainant has submitted a number of Exhibits to support its contentions referred to above; the Panel has taken those into consideration but has not, however, found it necessary to make express references to these Exhibits in the description of the contentions.
Applied to this case, Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
a) that the domain name registered by Respondent is identical or confusingly similar to a trademark or a service mark in which Complainant has rights,
b) that Respondent has no rights or legitimate interests in the domain name, and
c) that the domain name has been registered and is being used in bad faith.
In the following part of the decision, the Panel discusses each of these elements.
a) Identity or Confusing Similarity
The domain name at issue is NOKIA-GIRLS.COM.
The domain name incorporates the trademark NOKIA with the addition of "GIRLS" and of "COM." As has been noted in earlier Panel decisions the later suffix is, at least in principle, meant to indicate that the domain name is intended to be commercial. In the view of this Panel this is an insignificant addition which does not change the likelihood of confusion. This Panel furthermore agrees with the statement by the Panel in the decision in the Case D2000-0102 to the effect that "the ability of this word "girls" to distinguish the Domain Name of the Complainant is limited." In the view of this Panel also the fact that a hyphen is put between "NOKIA" and "GIRLS" does not change the likelihood of confusion.
The Panel thus concludes that there is a confusing similarity between the domain name "NOKIA-GIRLS.COM" and Complainantīs trademark NOKIA.
b) Rights or Legitimate Interests
Complainant has not licensed or otherwise authorised Respondent to use Complainantīs trademark in a domain name registration, and there is no relationship between Respondent and Complainant.
Complainant contends that Respondent has no legitimate interest in the domain name at issue in view of Complainantīs prior rights in the trademark and trade name NOKIA but is, according to Complainantīs information and belief, using the domain name for the purpose of attracting Internet customers to its web site so as to promote it to advertisers and thus draw a profit.
By not submitting a Response, Respondent has failed to invoke any circumstance, which could demonstrate, pursuant to Paragraph 4.c of the Policy, any rights or legitimate interests in the domain name.
Consequently, on the basis of the arguments and the evidence brought by Complainant, the Panel finds that Complainant has sufficiently established that Respondent has no rights or legitimate interests in the domain name.
c) Registration and Use in Bad Faith
The Panel notes that the domain name at issue was registered on April 24, 2000, i.e. immediately after the decision by the Administrative Panel ordering the cancellation, in the Case D2000-0102 between Complainant and Nokiagirls.com.a.k.a.IBCC, of the domain name "nokiagirls.com".
Complainant contends, and has submitted some evidence to support this contention, that Respondent in the case just mentioned and Respondent in this case are the same entity, or is a successor in interest to IBCC or that, at least, the companies are related entities. Thus, for instance, the address is the same and the web site located at the NOKIA-GIRLS.COM" domain name substantially duplicates the contents of the web site previously posted at the domain name in the previous case.
By not submitting a Response, Respondent has failed to address these allegations.
In view of the circumstances, the Panel finds that Complainant has sufficiently proved that Respondent has, by using the domain name at issue, intentionally attempted to attract, for commercial gain, Internet users to its web site , by creating a likelihood of confusion with Complainantīs trademark as to the source, sponsorship, affiliation or endorsement of the web site at issue. Thus, the Panel finds that the domain name at issue has been registered and is being used in bad faith as indicated in Paragraph 4.b.(iv) of the Policy.
On the basis of the foregoing considerations, the Administrative Panel concludes that the domain name NOKIA-GIRLS.COM is confusingly similar to Complainantīs trademark NOKIA, that Respondent has no rights or legitimate interests in respect of the domain name and that the domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4.i of the Policy and in accordance with the request by Complainant, the Panel requires that the domain name NOKIA-GIRLS.COM be transferred to Complainant.
Dated: October 20, 2000