WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nokia Group. v. Mr. Giannattasio Mario
Case No. D2002-0782
1. The Parties
The Complainant is Nokia Corporation, of Finland ("Complainant") and the Complainant�s authorized representative is Buzzi, Notaro & Antonielli d�Oulx, of Torino, Italy.
The Respondent is Mr. Giannattasio Mario, of Napoli, 80014, Italy ("Respondent").
2. The Domain Names and Registrar
The dispute concerns the domain names:
The Registrar is Network Solutions, Inc., Herndon, VA, United States of America.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complainant�s Complaint in electronic form on August 20, 2002 and in hard copy on August 22, 2002. A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator on August 22, 2002. The Administrative Panel has independently determined and agrees with the assessment of the Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999, (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999, (the "Supplemental Rules").
The required fee for a single-member Administrative Panel was timely paid by the Complainant to the Center.
On August 21, 2002, a Request for Registrar Verification was transmitted to the Registrar.
On August 21, 2002, the Registrar confirmed that the domain names at issue were registered with the Registrar and that the Respondent was the current registrant of the names. The Registrar also forwarded the requested WHOIS details, confirmed that the Policy was in effect and stated that the domain names were in "Active" status.
The Complaint is filed in the language of the registration agreement as confirmed by the Registrar.
The formal date of the commencement of this administrative proceeding is August 22, 2002.
On August 22, 2002, the Center transmitted Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, to the Respondent via e-mail and via post/courier to the address identified in the Registrar verification response. The Center advised that a) the Respondent�s Response was due by September 11, 2002, b) in the event of default the Center would still appoint an Administrative Panel to review the facts of the dispute and to decide the case, c) the Administrative Panel may draw such inferences from the Respondent�s default as it considers appropriate, d) the Complainant had elected for the matter to be decided by a single Panelist.
The Respondent did not submit a timely Response. Accordingly, the Center sent to the Respondent a Notification of Respondent Default on September 12, 2002.
On September 19, 2002, in view of the Complainant�s designation of a single Panelist the Center invited Mr. Johan Carl Sjöbeck to serve as a Panelist.
Having received Mr. Sjöbeck�s Statement of Acceptance and Declaration of Impartiality and Independence, the Center, on September 20, 2002, transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Sjöbeck was formally appointed as the sole Panelist.
4. Factual Background
The Complainant in this administrative proceeding, Nokia Corporation, is one of the major suppliers of mobile phones in the world. The Complainant has based its Complaint on the Community Trademarks NOKIA (Registration No. 340836 dated September 9, 1998), NOKIA (Registration No. 871194 dated March 24, 2000) and NOKIA Device (Registration No. 323386 dated September 9, 1998). Copies of Registration Certificates for the above mentioned trademarks were submitted as Annex 5 of the Complaint.
The Respondent registered the following domain names on October 5, 2001:
Copies of relevant whois searches results were submitted as Annex 1 of the Complaint.
Because no Response has been submitted, there exist no detailed information about the Respondent�s business activities, apart from the above mentioned domain name registrations.
5. Parties� Contentions
A. Complainant
The Complainant is the proprietor of numerous registered trademarks throughout the world that contain the word NOKIA or where the word NOKIA is the dominant feature. The marks are registered not only for telecommunication products, but also for a wide range of other goods and services and are used in connection with the manufacture of telecommunications products including, inter alia, mobile telephones and accessories related to mobile telephones, mobile phone networks and all business management, promotion and advertising in connection with the sale and marketing of such products.
The Complainant argues that the domain names registered by the Respondent containing the whole of the trademark NOKIA are to be considered identical or confusingly similar to the Complainant�s trademark. Furthermore, the Complainant maintains that this is especially the case when additions such as "E", "LOGHI" (logos), "SUONERIE" (ring tones), "SMS", "CELLULARI" (mobile phones) are used, which add nothing to the trademark NOKIA. The Complainant subscribes to the opinion that because the trademark NOKIA is such a strong mark, it automatically becomes the distinctive feature of the domain names. The non-distinctive words add nothing to the domain names that would reduce the risk of confusion among Internet users. The disputed domain names give rise to a likelihood of confusion as to the source, affiliation and endorsement of the websites.
The Complainant argues that several ICANN decisions have recognized that incorporation of a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark and refers to earlier decisions involving the Complainant and the NOKIA trademark, Nokia Corporation v. Phonestop, WIPO Case No. D2001-1237, Nokia Corporation v. N a.k.a. IBCC, WIPO Case No. D2000-0102, Nokia Corporation v. Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101, Nokia Corporation v. Nick Holmes t/a EType Media, WIPO Case No. D2002-0001.
The Complainant has not licensed or in any other way permitted the Respondent to use any of the domain names at issue nor the NOKIA trademark. The Respondent has no rights or legitimate interests in respect of the disputed domain names because the Respondent�s business has no connection with the name NOKIA, the Respondent does not trade under this name nor offer goods or services under this name and has not been and is not commonly known under this name.
Furthermore, the Complainant argues that on the website connected with the domain name , the Respondent offers for sale logos and ring tones for other valuable brands (such as Motorola, Ericsson, Panasonic, Samsung, Sony, Alcatel) and that Internet users are attracted to this site due to the fact that the domain name incorporates the well-known trademark NOKIA.
In addition to this, the Complainant points out that the Respondent�s domain name , includes names of competitors of the Complainant and that the website to which the domain name is directed is a pornographic site.
The Complainant contends that evidence of bad faith registration and use or intent to use is established by circumstances such as:
- The trademark NOKIA is a well-known trademark worldwide and it is inconceivable that the Respondent would be unaware of this fact.
- The Complainant is the world leader in mobile communications having 31.6% of the world market in the sale of mobile phones in year 2000. NOKIA branded products are sold in 119 countries throughout the world. The Complainant is not only a leading supplier of mobile phones but also for accessories therefore. The Complainant has spent a substantial amount of money developing, advertising and promoting their products throughout the world and as a result, the Complainant enjoys extensive and widespread goodwill and repute in their trademarks worldwide. The mark NOKIA is one of the world�s best-known trademarks for mobile phones and is rated as the 5th most valuable brand in the world in Interbrand�s Annual Survey for 2001� "The 100 Top Brands" (a copy is attached to the Complaint as Annex 6).
- The disputed domain names should be considered as having been registered and/or used in bad faith by the Respondent because the domain names are used solely to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant�s registered trademark as to the source, sponsorship, affiliation or endorsement of the Respondent�s website. By doing so the Respondent has misappropriated the reputation and commercial value of the NOKIA trademark for the Respondent�s commercial advantage. Furthermore, the Complainant points out the significance of the fact that the Respondent is using the websites to promote, inter alia, telecommunication products and services. This indicates an attempt to divert Internet users looking for Nokia-endorsed telecommunications products or services to the Respondent�s websites.
- The Complainant alleges that the Respondent has made illegitimate use of the domain names and has chosen the disputed domain names purely to create a false impression of an association with the Complainant or its products or with intent to misleadingly divert Internet users. Furthermore, the Respondent is using the word Nokia as metatags (printouts of the relevant source files are attached to the Complaint as Annex 7).
The Complainant claims that the disputed domain names , and contain exclusively pornographic material (printouts of the websites are attached to the Complaint as Annex 2).
Furthermore, the Complainant alleges that the domain name not only contains pornographic material but also provide links to other pornographic websites.
Finally the Complainant points out that although registered almost a year ago, the domain names and are still not pointing towards any websites.
The Complainant requests, in accordance with Paragraph 4(i) of the Policy, that the Administrative Panel issue a decision that the domain names be transferred to the Complainant.
B. Respondent
The Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
According to Paragraph 4 (a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondent�s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
Identical or confusingly similar to the Complainant�s trademark
The Complainant is, according to the Registration Certificates, the owner of the Community Trademarks NOKIA (Registration No. 340836 dated September 9, 1998), NOKIA (Registration No. 871194 dated March 24, 2000) and NOKIA Device (Registration No. 323386 dated September 9, 1998). The Administrative Panel finds it is clear that the Complainant has rights in the trademark NOKIA.
It goes without saying that the disputed domain names , , , , , , , and incorporate the Complainant�s registered trademark NOKIA in full. Due to the fact that the disputed domain names contain not only the Complainant�s trademark but also non-distinctive words such as "e", "loghi" (logos), "suonerie" (ring tones), "sms", "cellulari" (mobile phones), the Administrative Panel concludes that the domain names cannot be considered identical with the Complainant�s registered trademark NOKIA.
However, as recognized by numerous prior ICANN Administrative Panels, a domain name that wholly incorporates a Complainant�s registered mark may be sufficient to establish confusing similarity for purposes of the Policy. See e.g. Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; Nikon, Inc. and Nikon Corporation v. Technilab., Inc, WIPO Case No. D2000-1774; Lancôme Parfums et Beauté & Cie v. SL, Proteccion de Dominios, WIPO Case No. D2001-0910; Nokia Corporation v Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101. The ability of the non-distinctive additions "e", "loghi", "suonerie", "sms" and "cellulari" to distinguish the domain names from the Complainant�s trademark is limited.
Having the above in mind, the Administrative Panel therefore is of the opinion that the disputed domain names and the Complainant�s trademark are confusingly similar with the exception of the domain name . Although the Complainant�s trademark NOKIA is incorporated in the domain name it is obvious to the Administrative Panel that the domain name contains two additional well-known and distinctive trademarks, causing the Complainant�s trademark to appear less distinguishable in the domain name as a whole.
Nevertheless, according to previous Panel decisions, a domain name consisting of more than one famous trademark may satisfy the requirement in Paragraph 4(a)(i) of the Policy and thus be held to be confusingly similar.
However, the Administrative Panel finds that the situation in this dispute differs from situations described in previous Panel decisions. For example, there is no proposed or completed merger between the concerned trademark owners as in Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142; Framatome, Siemens Aktiengesellschaft and Framatome ANP v. Manu&Gil, WIPO Case No. D2001-1424; Perfetti S.p.A., Van Melle N.V. and Van Melle Nederland B.V. v. MIC, WIPO Case No. D2001-0400 and Société des Produits Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118. Furthermore, there is no letter of support from the other concerned trademark owners as in L�Air Liquide v. MIC, WIPO Case No. D2001-1246. In addition to this, the concerned trademark holders have not come together and jointly filed a Complaint as in Allianz AG and Dresdner Bank AG v MIC, WIPO Case No. D2001-1298.
Having the previous Panel Decisions in mind and due to the fact that the Complaint is solely based upon one of the three concerned trademarks and the Complainant has not submitted any evidence indicating that the Complainant either is the legitimate owner of the other two trademarks or acting on behalf of their respective owners or equivalent, the requirement of confusingly similarity between the domain name and the trademarks is not fulfilled by the Complainant. However, the Administrative Panel subscribes to the opinion that should the Complainant have provided sufficient evidence indicating that the Complainant either was the legitimate owner of all the trademarks at issue, or acting on behalf of or in conjunction with the other trademark owners, the requirement of confusingly similarity between the domain name and the trademarks would have been fulfilled.
Rights or legitimate interests in respect of the Domain Names
The Respondent has not contested the Complainant�s declaration that the Complainant has not licensed or otherwise permitted the Respondent to use the domain names or the trademark NOKIA. Furthermore, the Respondent has not objected to the Complainant�s claim that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The domain names , , and have been used by the Respondent to offer logos, ring tones etc for the Complainant�s products as well as for other third party products. The domain names , and have been used by the Respondent solely to display pornographic material or provide links thereto. The domain names and have not yet been redirected towards any websites.
It is the opinion of the Administrative Panel that the mere fact that the Respondent provides logos and ring tones compatible with the products of the Complainant is not sufficient to claim a right or legitimate interest to domain names being confusingly similar to the Complainant�s registered trademark. Also, the act of displaying pornographic material in connection with the Complainant�s registered trademark cannot be sufficient to claim a right or legitimate interest. The Respondent has not presented any evidence proving otherwise and therefore, the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain names at issue.
Registration and Use in Bad Faith
The Complainant claims that the registration and/or use of the domain names are made in bad faith as described in Paragraph 4 (b) (iv) of the Policy. The submitted Interbrand Annual Survey for 2001 ("The 100 Top Brands") states that the Complainant�s trademark was rated the world�s 5th most valuable brand at the time when the Respondent registered the nine domain names. The pattern of registering multiple domain names consisting not only of the Complainant�s well-known trademarks but also of other companies� trademarks suggest that the Respondent was well aware of the Complainant�s trademarks at the time of registration and thus registered the domain names in bad faith. The Respondent use of the Complainant�s trademark NOKIA as metatags in the html documents found in connection with the domain names , , and imply that the Respondent is striving to attract Internet users searching for telecommunication products or services endorsed by the Complainant. In addition to this, the Respondent is selling telecommunication accessories such as logos and ring tones on the websites associated with the above mentioned domain names. Furthermore, the Respondent is displaying pornographic material and links to such adult material on the websites connected with the domain names , and . The Administrative Panel finds that the Respondent registered the domain names in bad faith and is deliberately using the domain names with the aim to attract, for commercial gain, Internet users to websites, by creating a likelihood of confusion with the Complainant�s registered trademark as to the source, sponsorship, affiliation or endorsement of the Respondent�s website or location or of a product or service on the Respondent�s website or location.
According to the evidence submitted by the Complainant, the domain names and are not pointing towards any website despite the fact that the domain names have been registered for almost a year. As WIPO case law suggests (See for example Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003), using a domain name in bad faith is not limited solely to positive actions, as inaction is regarded as being within the concept of use if sufficient evidence is present indicating bad faith. The Respondent has engaged in a pattern of conduct preventing the trademark owner from reflecting the trademark in a corresponding domain name and has failed to make good faith use of the domain names and for its business for a substantial period of time and therefore the Administrative Panel finds that the domain names have been used in bad faith.
Having all of the above in mind, the Administrative Panel finds that the Respondent registered and used the domain names in bad faith.
7. Decision
On the basis of the foregoing, the Administrative Panel decides that a) all of the disputed domain names but are confusingly similar to the Complainant�s trademark NOKIA, b) the Respondent has no rights or legitimate interests in the domain names at issue, and c) the Respondent registered and used the domain names in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy and 15 of the Rules, the following domain names shall be transferred to Complainant:
.
The remedy requested by the Complainant pursuant to paragraph 4(i) of the Policy regarding the domain name is denied.
Johan Sjöbeck
Sole Panelist
Dated: October 4, 2002
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