WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nokia Corporation v. David Wills
Case No. DWS2001-0004
1. The Parties
The Complainant is Nokia Corporation, a corporation organised under the laws of Finland, having its principal place of business in Espoo (Keilalahdentie 4, 02150), Finland and represented by Tuukka Airaksinen, ("the Complainant").
The Respondent is Mr David Wills, a private person domiciled in the United Kingdom and residing at 105 Obree Ave, Kings Meadow, Prestwick, Ayrshire KA9 2NQ, United Kingdom, ("the Respondent").
2. The Domain Name and Registrar
The domain name at issue is . The Registrar is WebS, having its offices at 701 Palomar Airport Rd, Suite 300, Carlsbad, CA 92009, United States of America ("the Registrar").
3. Procedural History
The complaint was submitted electronically with the World Intellectual Property Organization Arbitration and Mediation Center (The "WIPO Center") on November 15, 2001. The hardcopy under cover of a letter of the same date was received on November 20, 2001, ("the Complaint"). An Acknowledgement of Receipt was sent by the WIPO Center to the Complainant on November 20, 2001.
On November 26, 2001, a Request for Registrar Verification was transmitted to the Registrar. On December 3, 2001, the Registrar confirmed by e-mail that the domain name is registered with the Registrar and that the Respondent is the current registrant of that domain name.
On December 11, 2001, the WIPO Center informed the Complainant that the name of the Registrar as set out in the Complaint was incorrect and requested that the Complaint be amended.
On December 11, 2001 the WIPO Center received an Amended Complaint by email. (A hard copy version was received on December 18, 2001.)
On December 19, 2001 a Notification of Complaint and Commencement of Administrative Proceedings (the "Commencement Notification") including a hard copy of the Amended Complaint was transmitted by email and by courier to the Respondent, setting a deadline of January 8, 2002, by which the Respondent could make a response to the Complaint.
On December 19, 2001, the Respondent submitted its response by email to the WIPO Center ("the Response").
On February 11, 2002, the WIPO Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date by email to the parties, in which Mr Wolter Wefers Bettink was appointed as Sole Panelist.
4. Factual Background
On the basis of the documents submitted by the parties the following facts can be established as agreed between parties or insufficiently disputed.
The Complainant is the owner of the trademark NOKIA, which has been registered worldwide, amongst others in the United Kingdom and the European Union (GB Reg. No. 1526042, renewed February 6, 2000 and CTM Reg. Nos. 340836, registered September 9, 1998 and 871194, registered March 24, 2000).
Respondent registered the domain name on March 10, 2000.
The Complainant contacted Respondent when Complainant became aware of Respondent�s registration of the domain name . It was agreed between Complainant and Respondent that the domain name be transferred to Complainant by Respondent for an amount of GBP 65. This transfer did not take place. When Complainant contacted Respondent again, Respondent no longer wanted to transfer the domain name for the amount of GBP 65, but demanded an amount of USD 1000.
5. Applicable Rules
Paragraph 4 (a) of the Uniform Domain Name Dispute Resolution Policy directs that Complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to Complainant's trademark, and
(ii) 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.
Paragraph 4 (b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of Paragraph 4 (a) (iii) above.
Paragraph 4 (c) of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondent�s rights or legitimate interests to the domain name for the purpose of Paragraph 4 (a) (ii) above.
6. Parties� Contentions
(a) Complainant
The Complainant states in the Complaint that it owns the trademark NOKIA, registered inter alia in the United Kingdom, the United States and the European Union. According to Complainant the trademark NOKIA is a well-known trademark within the meaning of article 6bis of the Paris Convention on the Protection of Industrial Property.
The grounds for the Complaint are:
(1)the domain name is identical to Complainant�s trademark and company name. The domain name wholly incorporates Complainant�s registered well-known trademark NOKIA. The addition of ".ws" is a necessary element of any domain name registered under that root and is therefore not distinctive;
(2)Complainant states that Respondent has no rights or legitimate interests in respect of the domain name as provided in Paragraph 4 (a) (ii) in connection with Paragraph 4 (c) of the Policy.
Respondent has not registered NOKIA as a trademark or a service mark anywhere in the world. Complainant has not licensed or otherwise permitted Respondent to use the trademark NOKIA. There is no relationship between Complainant and Respondent. Respondent is not commonly known by the name Nokia. Although Respondent is a member of the Nokia Academy and sells Nokia goods, this does not give Respondent any rights to the domain.
(3)Complainant states that the domain name was registered in bad faith as provided in Paragraph 4 (a) (iii) in connection with Paragraph 4 (b) of the Policy.
Complainant alleges that Respondent has registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of his documented out-of-pocket expenses directly related to the domain name. This is substantiated by the fact that that Respondent has offered the domain name for sale at his website. The fact that the domain name was publicly for sale and that Respondent invited offers, indicates that Respondent�s intention was to receive the highest possible price for the domain name. After the first contact between Complainant and Respondent, parties agreed that the domain name be transferred to Complainant for an amount of GBP 65, which was considered sufficient to cover the out-of-pocket expenses directly related to the domain name. Complainant�s representative informed Respondent of the particulars required to effect the transfer and stated that the amount would be paid after the transfer was completed. The correspondence between parties ended there. Later, when Complainant again contacted Respondent, Respondent stated that he was only prepared to transfer the domain name for USD 1000. Respondent also stated that paying him USD 1000 would be simpler and cheaper that using any domain dispute resolution services. These communications by Respondent show his intention to sell the domain name for a valuable consideration in excess of his out-of-pocket expenses directly related to the domain name.
Respondent cannot have acted in good faith when registered a domain name identical to the well-known trademark and understood it as belonging to Complainant, especially as he has acknowledged that he was aware of the trademark NOKIA at the time of registering the domain name .
Complainant further states that by using the domain name Respondent has intentionally intended to attract, for commercial gain, internet users to his website by creating a likelihood of confusion with Complainant�s trademark as to the source, sponsorship, affiliation or endorsement of his website or location or of a product or service on his website or location.
(b) Respondent
In the Response, Respondent states that the domain name is used by his company Elm Telecom. Respondent states that he does have rights or legitimate interests in the domain name . The domain name is used to sell Nokia products which in turn represents income for Nokia. Respondent states that Elm Telecom is a Nokia Academy certified supplier, trained by Nokia at their Academy sessions. Respondent states that the domain name at no time was for sale. The domain name pointed to the Nokia product section shop of the Elm Telecom shop, with the header that Respondent was not Nokia but an Academy certified supplier, trained by Nokia at their Academy sessions.
Respondent states that the domain name was not used in bad faith as it was used to sell Nokia products which, in turn, represents income for Nokia.
Respondent states that he had doubts as to whether the representative of Nokia who contacted him, was indeed Nokia�s representative.
Respondent further states that he was willing to comply with Nokia�s summons. Respondent states that he sought legal advice after Nokia threatened legal action, which increased his costs in excess of USD 1000.
Respondent states that he is perfectly willing to release the domain name provided that Nokia covers his purchase, transfer and legal costs.
7. Discussion and Findings
a.Trademark rights
Complainant has provided sufficient evidence of its rights to the trademark NOKIA, well-known worldwide and in particular within the European Union and the United Kingdom.
b. Identical or confusingly similar
The domain name is identical to Complainant's well-known trademark NOKIA. The suffix ".ws" indicates that the domain name is registered in the .ws ccTLD.
c. Rights or legitimate interests
Under paragraph 4 (c) of the Policy, Respondent may demonstrate that he has a right or legitimate interest to a domain name for the purpose of Article 4 (a) (ii), inter alia, by providing evidence of any of the following circumstances:
"(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
Respondent has stated that the domain name was used to sell Nokia products. Respondent has also stated that he is a certified supplier of Nokia goods and a member of the Nokia Academy, trained by Nokia at their Academy sessions.
However, Respondent has not provided evidence that he in fact resells Complainant�s products according to specific sale conditions agreed between parties. Even if Respondent is an authorised retailer of Complainant�s products, this in itself is not sufficient to give Respondent a right to use these trademarks as domain names.
As held by the Panel in, inter alia, WIPO D2000-0079 Motorola Inc. v Newgate Internet Inc.; WIPO D2000-0113 Stanley Works and Stanley Logistics Inc. v Camp Creek Co.; WIPO D2000-1201 R.T. Quaife Engineering Ltd v Luton, WIPO D2001-0262 Ferrero SpA v Fistagi SrL; WIPO D2001-1101 Nokia Corporation v Nokia Ringtones & Logos Hotline a licensee or a dealer, agent or distributor of (among others) products of the trademark owner or of a compatible products does not per se have a right to a domain name which includes that trademark.
Respondent has not submitted that Complainant has expressly permitted Respondent to use the trademark NOKIA or register the domain name using the trademark NOKIA. Respondent has stated that the domain name was pointing to the Nokia product section of the Elm Telecom shop with the header that he was not Nokia, but an Academy certified supplier, trained by Nokia at their Academy sessions. Respondent has however failed to provide evidence of this contention which, in the opinion of the Panel would not, even if correct, qualify as (sufficient basis for) an own right or legitimate interest.
In the light of the foregoing the Panel finds that Respondent has no rights or legitimate interests in the domain name.
d. Bad faith
Complainant is relying on Paragraph 4 (b) (i) and (iv) of the Policy, which provide that sufficient evidence of bad faith may consist of:
"(i) Circumstances indicating that you have registered or that you have required 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 trademark or service mark or to a competitor of that Complainant for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name";
(iv) By using the domain name, you have intentionally attempted to attract for commercial gain, Internet users to your website or other on-line locations, 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."
The Panel finds that Complainant has provided sufficient evidence in this regard.
Initially, Respondent used the domain name for a website on which this domain name was offered for sale. Although the parties apparently agreed that the domain name would be transferred to Complainant for an amount of GBP 65, this transfer did not take place. When Complainant again contacted Respondent to remind him of the abovementioned agreement, Respondent replied:
"That was then, this is now and I need payment up front. I agree the cost is up but if you consider the potential fees and hassle involved, this, is a far simpler option than using any domain name dispute resolution service. Are you willing to make an offer in the region of USD 1000 after considering this?"
Respondent�s email makes apparent that Respondent intended to sell the domain name in question in excess of his documented out-of-pocket expenses directly related to the domain name. Respondent has stated in the Response that the price of USD 1,000 includes the costs for legal advice he sought, but has submitted no evidence thereof. Furthermore, the email quoted above does not make any mention of such costs, but compares the price of USD 1,000 to the costs that Complainant would have to make to obtain the domain name if he did not pay that price.
For completeness� sake it should be mentioned that in the Panel�s view the facts indicate that Respondent, by registering and using the domain name has intentionally used the goodwill of Complainant�s trademark to create traffic to his website operating under the domain name . (See also e.g. WIPO Case No. D2000-0413 Chanel Inc. v Estco.)
The Panel therefore concludes that there is sufficient evidence that Respondent�s registration and use of the domain name is in bad faith.
8. Decision
On the basis of the foregoing, the Panel decides that Complainant has provided the required evidence to request the transfer of the domain name from Respondent to Complainant. Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panel orders the registration of the domain name be transferred to Complainant.
Wolter Wefers Bettink
Sole Panelist
Dated: February 25, 2002
Full & Egal Universal Law Academy