WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Nokia Corporation v. Jameela Seif Case No. D2009-1665 1. The Parties
The Complainant is Nokia Corporation of Espoo, Finland, represented by Lovells, France.
The Respondent is Jameela Seif of Abouna Sounga, French Guiana, Overseas Department of France. 2. The Domain Names and Registrars
The disputed domain names , , , , , , and are registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the”Center”) on December 14, 2009 in complete electronic form under WIPO's new paperless filing facility (which was announced by the WIPO Center on December 11, 2009, see “WIPO launches paperless UDRP Proceedings []”. The Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names, in reply to which eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On December 14, 2009, the Center transmitted by email to eNom a request for confirmation that the disputed domain names will remain under “lock” status so as to prevent any transfers or changes to the registration information during the proceedings. On December 14, 2009, the registrar confirmed that the disputed domain names had been placed under registrar lock and would remain so pending the resolution of the proceedings.
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 (as approved by the ICANN Board of Directors on October 30, 2009) (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (in effect as of December 14, 2009) (the “Supplemental Rules”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 15, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was January 4, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 5, 2010.
The Center appointed Brigitte Joppich as the sole panelist in this matter on January 8, 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 paragraph 7 of the Rules. The Panel finds that the Complaint has been duly notified to the Respondent in accordance with paragraph 2(a) and 4(a) of the Rules. In particular, the Panel is satisfied that the Center has correctly forwarded a complete copy of the Complaint (including any annexes) to the Respondent by email to the registrar-confirmed email addresses of record and that Written Notice (as defined under paragraph 1 of the Rules) of the Complaint has been sent to any available postal addresses and facsimile addresses. 4. Factual Background
The Complainant is engaged in the manufacturing of mobile devices and in converging Internet and communications industries, with 128,445 employees in 120 countries, sales in more than 150 countries and global annual revenue of EUR 50.7 billion as of 2008. NOKIA is the world's largest manufacturer of mobile telephones and has been carrying on business activities under this name since 1865. The NOKIA brand is listed as the fifth most valuable global brand in the Interbrand Best Global Brand 2009 list.
The Complainant is the proprietor of numerous trademark registrations for NOKIA in more that 170 countries, inter alia United States trademark registration no. 2630022, NOKIA, registered on October 8, 2002; United States trademark registration no. 2667758, NOKIA, registered on December 31, 2002; International trademark registration no. 771539, NOKIA, registered on February 15, 2001; Community trademark registration no. 000340836, NOKIA, registered on September 9, 1998; Community trademark registration no. 000871194, NOKIA, registered on March 24, 2000; Community trademark registration no. 004035663, NOKIA, registered on January 3, 2006; and French trademark registration no. 1389997, NOKIA, registered on January 19, 1987 (the “NOKIA Marks”). The NOKIA Marks have been considered as being well-known by many previous panels (cf. inter alia, Nokia Corporation v. Uday Lakhani,WIPO Case No. D2000-0833; Nokia Corporation v. Private,WIPO Case No. D2000-1271; 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; Nokia Corporation v. Vincent Entertainment Ltd., WIPO Case No. D2003-0322; Nokia Corporation v. Firdaus Adinegoro/Beli Hosting,WIPO Case No. D2004-0814; Nokia Corporation v. durmus dalda,WIPO Case No. D2006-0931; Nokia Corporation v. Kai Oeistaemoe,WIPO Case No. D2007-1738; Nokia Corporation, Navteq Corporation v. Juha Vainio,WIPO Case No. D2008-0772).
The Complainant also owns several trade mark registrations in the term “E50”, being the name of one of the Complainant's products, inter alia International trademark registration no. 915542, E50, registered on December 18, 2006.
All of the disputed domain names were first registered between July 27, 2005 and July 28, 2007. When the Complainant discovered the existence of the disputed domain names they were registered in the name of a certain N Carlton. On November 12, 2009, the Complainant's lawyers sent a cease and desist letter to such registrant which was left unanswered. Shortly thereafter, the disputed domain names were transferred to the Respondent.
The disputed domain names have been and are presently used in connection with parking websites. 5. Parties' Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain names are identical or confusingly similar to the NOKIA Marks because they comprise the Complainant's famous NOKIA Marks and are merely differentiated from such marks by the inclusion of the words “sex”, “gat”, “get”, “theams”, “e50”, “company”, “suite”, and “waplab2”. The Complainant contends that neither these additional words nor the top level domain name “.com” hinders a finding of confusing similarity.
(2) The Respondent has no rights to or legitimate interests in the disputed domain names. The Complainant contends that the Respondent is not commonly known by the term “Nokia” and has not secured or sought to secure any trade mark rights in the term “Nokia”, that the Respondent has not made any legitimate noncommercial or fair use of either of the disputed domain names, that the Respondent is not an authorized dealer, distributor, or licensee of the Complainant, and that it has not been otherwise allowed by the Complainant to make any use of its highly distinctive and famous NOKIA Marks. The Complainant further contends that the Respondent cannot claim any demonstrable preparations to use either of the disputed domain names prior to notification of this dispute by the Complainant in connection with a bona fide offering of services.
(3) The Complainant finally claims that the domain names were registered and are being used in bad faith. With regard to bad faith registration, the Complainant states that it is inconceivable that the Respondent did not have the NOKIA Marks in mind when registering the disputed domain names as these marks are highly distinctive and famous. With regard to bad faith use, the Complainant contends that the Respondent is intentionally attempting to attract for commercial gain, Internet users to its websites or other on-line location by creating a likelihood of confusion among Internet users between the Complainant's famous trade marks and the source, sponsorship, affiliation or endorsement of the Respondent's website or location, or of a product or service on the website or location and intending to free ride on the goodwill of the highly famous and distinctive NOKIA Marks in which the Complainant enjoys exclusive rights. The Complainant further contends that the fact that the Respondent registered eight domain names reproducing the NOKIA Marks is not a coincidence and constitutes a pattern of bad faith registrations targeting the famous NOKIA brand. Finally, the Complainant submits that the Respondent's bad faith is further evidenced by the fact that it acquired the disputed domain names shortly after the Complainant's lawyers had sent a cease and desist letter to the previous registrant, such transfer constituting an attempt to avoid or delay UDRP proceedings by changing domain registration details after being threatened with legal action, which is supposed to constitute an additional and strong indication of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain names are identical or confusingly similar to the Complainant's trade mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) the domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The disputed domain names fully incorporate the Complainant's well-known NOKIA Marks in which the Complainant has exclusive rights.
The additional words following the term “Nokia” in the disputed domain names are in each case either common or generic (“suite”, “company”, “sex”, and “get”), or consist of another term in which the Complainant has trade mark rights (“e50”), or reflect a misspelling of generic words or acronyms or abbreviations or a combination thereof (“gat”, “theams”, and “waplab2”). It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (cf. Nokia Corporation v. Horoshiy, Inc., LaPorte Holdings,WIPO Case No. D2004-0851; Robert Bosch GmbH v. Marketing Total S.A., NAF Claim No. FA888552; Google Inc. v. Raffaele Bassano, NAF Claim No. FA232958; Kaspersky Lab, Inc. v. Jianjun Wang,WIPO Case No. D2008-1533) or other trademarks (cf. Intuit Inc. v. Pioneer Enterprises Ltd.,WIPO Case No. D2009-1439).
Furthermore, it is well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant's trademark and the disputed domain name (cf. 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; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfil the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has asserted that the Respondent, to the Complainant's knowledge, is not commonly known by the term “Nokia”, has not secured any trade mark rights in the term “Nokia”, has not made any legitimate noncommercial or fair use of either of the disputed domain names, is not an authorized dealer, distributor, or licensee of the Complainant, and has not otherwise been allowed by the Complainant to make any use of its highly distinctive and famous NOKIA Marks, and that the Respondent cannot claim any demonstrable preparations to use either of the disputed domain names in connection with a bona fide offering of services prior to the notification of this dispute by the Complainant. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed disputed domain names.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain names under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 the respondent's website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive. The Complainant must show that the domain names were registered in bad faith and are being used in bad faith (cf. Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Telstra Corporation Limited v. Adult Web Development and Telstraexposed,WIPO Case No. D2002-0952; Prada S.A. v. Mr. Chuan Sheng Wang,WIPO Case No. D2003-0758).
The Panel is satisfied that the Respondent registered the disputed domain names with full knowledge of the Complainant and its rights in the NOKIA Marks for the following reasons: The Complainant is well-known internationally and has been carrying on business activities under the NOKIA Marks since 1865. NOKIA is listed as the fifth most valuable global brand in the Interbrand Best Global Brand 2009 list. Given the high distinctiveness of the NOKIA Marks in connection with the Complainant's products, it is inconceivable that the Respondent registered the disputed domain names without knowledge of the Complainant's rights. This finding is supported by the fact that one of the disputed domain names also comprises the term “E50”, the name of one of the Complainant's products. The Panel is therefore satisfied that the Respondent registered the disputed domain names with full knowledge of the Complainant's marks and therefore in bad faith under paragraph 4(a)(iii) of the Policy.
As to bad faith use, by fully incorporating the NOKIA Marks into the disputed domain names and by using the websites at such domain names as parking websites, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant's website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users constitutes bad faith under paragraph 4(b)(iv) of the Policy (cf. L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623, with further references). The Panel is therefore satisfied that the Respondent has also used the disputed domain names in bad faith. In sum, the present matter has the hallmarks of a fairly typical case of abusive use and registration of the type against which the Policy is intended to provide a remedy.
Consequently, the Panel finds that the Respondent registered and used the disputed domain names in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
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 , , , , , , and be transferred to the Complainant.
Brigitte Joppich
Sole Panelist
Dated: January 18, 2010
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