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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Nokia Corporation vs. Uday Lakhani

Case No D2000-0833

 

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 P.O Box 226, FIN-00045, NOKIA GROUP. As regards the contact details in this case its telephone number is indicated as +358 9 1807 265, its fax number as +358 9 1807 593 and its contact e-mail address as "helena.hattinen@nokia.com". Its authorised representative in this case is Domain Network Limited, attention Frida Fällman Rymo, 2 East Poultry Avenue, London EC1A 9PT, United Kingdom. Representativeґs telephone number is +44 20 7549 4201 and fax number is +44 20 7236 4780; her e-mail address is "frida@domainnetwork.co.uk" Ms. Fällman Rymo was later replaced as representative by Ms. Jenny Settergren.

Respondent. According to Network Solutionґs WHOIS Database, respondent in this case is Mr. Uday Lakhani, 235 High Road, New Southgate, London N11 1PZ, United Kingdom. His telephone number/work is indicated as +44 (0)20 88815750 and his telefax number/work is +44(0)20 88817700. Complainant has informed that Respondentґs private telephone number is unlisted at Respondentґs request. In discussions with Complainant Respondent has been represented by an Attorney, Mr. Prakash Patel of Magwells Solicitors, with postal address 6 Angel Gate, City Road, London EC1 2PB, United Kingdom, with e-mail address "magwells@compuserve.com"

 

2. The Domain Name and Registrar

The domain name at issue is "nokias.com" which is registered with Network Solutions Inc, 505 Huntmar Drive Park, 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 July 20, 2000, in e-mail form and on August 1, 2000, in hardcopy form. On August 1, 2000, the Center acknowledged receipt of Complaint and also sent a Verification Request to Network Solutions Inc.

On August 9, 2000, the Center received the Verification Response. That Response indicated:

a) that Network Solutions was not in receipt of the Complaint

b) that Network Solutions is the Registrar of the domain name at issue

c) that Registrant is Uday Lakhani(NOKIAS4-DOM), 235 High Road, New Southgate, London N11 1PZ, GB

d) that the domain name at issue is "NOKIAS.COM"

e) that Administrative Contact is "Domain Administrator (SV46-ORG) "admin@DMPRIEST.COM", D M Priest & Company Ltd, 12, Cheadle Wood, Cheadle Hulme, Stockport, Cheshire, GB. 44 161 486 1110, Fax 44 161 486 9936"

f) that Technical Contact, Zone Contact is "Pielorz, Karl (PJ79-ORG) "technical@ DMPRIEST.COM", DM Priest & Company Limited", with the same address and telephone and fax numbers as indicated under e)

g) that Billing Contact is "Priest John (PJ200-ORG) billing@DMPRIEST.COM". with the same address, telephone and fax numbers as indicated under e)

h) that Network Solutionsґ5.0 Service Agreement is in effect, and

i) that the domain name registration "NOKIAS.COM" is in "Active" status.

The Centre transmitted on August 5, 2000, a Notification of Complaint and Commencement of Administrative Proceeding to Complainants representative by e-mail and (by Post/Courier, Facsimile and e-mail, respectively) to Respondent under Mr. Lakhani's address and under Mr. John Priest’s address (see above) and also by e-mail to Administrative Contact, Billing Contact for the domain name "admin@DMPRIEST.Com", "billing @DMPRIEST.COM".

Having received no response from Respondent, the Center issued, on September 13, 2000, a Notification of Respondent Default which was duly communicated to the Parties.

In view of Complainant’s designation of a single panelist, the Center invited Mr. Henry Olsson to serve as a panelist. Having received Mr. Olssonґs Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the Parties a Notification of Appointment of Administrative Panel and Projected Decision Date in which Mr. Olsson was formally appointed as a Sole Panelist. The Projected Decision Date was October 31, 2000.

The Sole Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and WIPO Supplemental Rules.

Respondent has not submitted any formal Response to the Complaint. The Administrative Panel shall therefore, according to Rule 14, proceed to a decision concerning the Complaint on the basis of the Complaint, the evidence presented, the Policy, the Rules and Supplemental Rules.

 

4. Factual Background

In the Complaint, Complainant agrees, in accordance with Paragraph 3(b)(xiii) of the Rules, 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 of London, United Kingdom, which is Respondent’s address as shown for the registration in the WHOIS Database at the time of the submission of the Complaint to the Center.

Complainant furthermore indicates that no other legal proceedings have been commenced or terminated in connection with or relating to the domain name at issue.

It appears from Network Solution's Verification Response that the domain name was registered on January 20, 2000. It also appears that Network Solutions 5.0 Service Agreement is in effect which incorporates the Policy according to which Respondent is required to submit to a mandatory administrative proceeding under the provisions of Paragraph 4.a. of the Policy which are further discussed below.

 

5. Parties Contentions

A. Complainant

As a general background Complainant contends that it discovered the domain name at issue in March, 2000, which was then pointed at a website related to an Internet Service Provider, called Get Online. On the website were offered a range of services such as "value added domain name registrations" which, in the view of Complainant, seems to suggest that the domain name "nokias.com" was offered for sale.

On April 11, 2000, a Cease and Desist letter was sent to Respondent requesting immediate steps to be taken to transfer this domain name registration and also "nokias.co.uk" to Complainant and to cease and desist from any further unauthorised use of the trade mark Nokia. Respondent was given a time limit of 14 days to reply.

On April 27, 2000, Complainant received a letter on behalf of Respondent claiming that Respondent was unable to respond personally to the request as he was in hospital for eye surgery, but that a response would be given within three weeks. This was accepted by Complainant. On may 16, 2000, Respondent’s attorney Mr. Patel indicated in a fax that instructions were being taken and that he would revert to Complainant as soon as possible.

As no further correspondence from Respondent or Mr. Patel had been received at the beginning of June, 2000, Complainant contacted Mr. Patel by telephone. During that telephone conversation it became clear that Respondent was not willing to voluntarily transfer the domain name at issue to Complainant but was instead interested in selling the domain name for an amount substantially in excess of the expenses incurred by Respondent for the registration of the domain name. Complainant was willing to pay only a nominal fee for the registration and transfer of the domain name and this was clearly indicated to Mr. Patel. Mr. Patel would consult with Respondent and come back on the issue. On June 7, 2000, a telefax was sent to Mr. Patel confirming that Complainant was not willing to purchase "nokias.com."

Since then several reminders in the form of telephone calls, messages and e-mail had been sent to Mr. Patel but so far no written statement had been received from Respondent. It was clearly indicated to Mr. Patel that unless Respondent voluntarily transferred the domain name at issue to Complainant without demanding a substantial payment for it, Complainant would file a Complaint.

After the Cease and Desist letter of April 11, 2000, both the domain names mentioned above were pointed to a website offering mobile telephones and associated products. Even if it was clearly stated on the websites that the company was not affiliated to Nokia, the domain name registrations were clearly used to attract customers with an interest in such telephones and associated products to the website. On June 27, 2000, a request for Investigation and Cancellation of the domain name "nokias. co.uk" was set by fax to Nominet. The website then changed a second time and now contains personal information about Respondent’s family and friends, such as a wedding invitation, possibly as a result of a letter from Nominet concerning Complainant’s request for Investigation and Cancellation.

As regards confusing similarity between the domain name at issue and Complainant’s trademark Nokia, Complainant contends that that trademark is registered and used in a great number of countries world-wide including the United Kingdom where Respondent is located. Complainant refers in this context to a national registration of Nokia as a word mark in the United Kingdom of June 2, 1993, and of a Community Trademark registration with validity in the United Kingdom, of March 24, 2000. Complainant has submitted copies of those registrations and also a list of all Nokia trademark registrations world-wide.

Complainant alleges that Nokia is without any doubt to be considered as a well known trade mark in the sense of Article 6bis of the Paris Convention for the Protection of Industrial Property in the majority of the countries Party to that Convention. For such trademarks, there is always a danger of dilution and the existence of the domain name "nokias.com" and the website to which it is pointed will, according to Complainant, most certainly contribute to the erosion of Complainant’s trademark on a global basis.

As regards domain names, Complainant has established its main website under the generic top level domain name "nokia.com" and has, in addition, established local websites under country specific top level domain names, such as "nokia.fi., in a great number of countries.

The domain name at issue consists of the trade mark Nokia with the addition of an "s" which could imply a plural form of Nokia products. Due to the closeness between the trademark Nokia, the domain name "nokia.com" and the domain name "nokias.com" it is most likely that consumers and Internet users risk being directed to Respondent’s website when intending to visit Complainant’s website.

In the light of this, Complainant contends that the relevant part of the domain name at issue is "nokia" and that the domain name "nokias.com" is clearly confusingly similar to the trademark owned by Complainant.

As regards legitimate interest in the domain name, Complainant alleges that Respondent has no business or other connection or affiliation with Complainant. Complainant has not expressly or implicitly licensed Respondent to use the trade mark Nokia or otherwise permitted such a use, nor to apply for any domain name incorporating the trademark Nokia. According to Complainant, Respondent has no connection to the names Nokia and/or Nokias and Respondent is not otherwise so known, either in business or personally.

Considering that Respondent is a cell phone dealer, the underlying interest must, in the view of Complainant, be to attract customers to a website offering mobile phones or, alternatively, to sell the domain name to Complainant.

For these reasons, Respondent, according to Complainant, has no legitimate interest in the domain name "nokias.com".

Complainant furthermore alleges that Respondent has registered and used "nokias.com" in bad faith. First, the trade mark Nokia enjoys such fame, inter alia in relation to cellular phones and associated services, that it can not be argued that Respondent did not know of the trade mark Nokia when registering the domain name at issue, also because Respondent is a cellular phone dealer.

The registration and use of "nokias.com" is part of a pattern as Respondent has also registered "nokias.co.uk". Both domain names point at the same website and have done so since Complainant’s discovery of the domain name registration at issue.

According to Complainant, the registration and use of "nokias.com" is aimed at creating traffic to Respondent’s website and thereby using the good will of the Nokia trademark. It is also likely that the registration and use of the domain name at issue has been made with the purpose of disrupting the business of Complainant and thereby forcing him to purchase the domain name. An Administrative Panel in an earlier case considered that bad faith can be presumed in the registration and use of a domain name consisting wholly or partly of a notorious trade mark of a third party.

B. Respondent

Respondent has not submitted any Response and is in Default.

 

6. Discussions and Findings

Rule 15 of the Rules prescribes that the Panel shall decide a complaint on the basis of the statements made and documents 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 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 "nokias.com".

The domain name incorporates the trademark Nokia with the addition of an "s" and of the suffix "com" This latter suffix is, as has been stated in several previous Panel decisions, meant to indicate, at least in principle, that the domain name is intended to be commercial. The addition of the "s" could well, as Complainant suggests be meant to indicate a plural of Nokia products. Regardless of whether this is the case or not, the domain name in fact incorporates the trademark with additions which in the view of this Panel are insignificant distinctions which do not change the likelihood of confusion.

On the basis of these findings and due to the fact that the allegations and statements by Complainant are undisputed, the Panel considers that the domain name registered by Respondent is confusingly similar to the trademark in which Complainant has rights.

b) Rights or Legitimate Interests

Complainant has not licensed or otherwise authorised Respondent to use Complainant's trademark or to apply for any domain name incorporating the trade mark Nokia and there is no relationship between Respondent and Complainant in any sense relevant to the domain name at issue.

Regardless of the fact that Respondent is a cellular phone dealer and thus may also sell Nokia telephones, he has not demonstrated any reasons why he has chosen to use the well known trademark Nokia as his domain name. Furthermore, by not submitting any Response, Respondent has failed to invoke any circumstances which could demonstrate, pursuant to Paragraph 4.c of the Policy any rights or legitimate interests in the domain name at issue.

On the basis of these circumstances, the Panel considers that Complainant has sufficiently established that Respondent has no rights or legitimate interests in the domain name.

c) Registration and Use in Bad Faith

To show that bad faith exists, Complainant has to present evidence that such bad faith exists in at least in one of the situations mentioned in Paragraphs 4b (i) to (iv) of the Policy.

Complainant has alleged that Respondent as a cellular phone dealer must have known of the trade mark Nokia as a well known mark for such telephones. The Panel agrees with this allegation and considers that Respondent must have registered the domain name at issue with full knowledge of the fact that the domain name incorporated Complainant’s well known trademark.

Complainant has also alleged that the registration and use of the "nokias.com" domain name is part of a pattern as Respondent has also registered the domain name "nokias.co.uk" which two domain names point at the same website. In addition, Complainant alleges that the registration and use of "nokias.com" is aimed at creating traffic to Respondent’s website and thereby using the goodwill of the Nokia trade mark and that it is also likely that the purpose was to disrupt the business of Complainant and thereby forcing Complainant to purchase the domain name.

By not submitting a Response, Respondent has failed to address there allegations.

The Panel finds that the circumstances in the case indicate that Respondent has registered the domain name at issue with the purpose of using the good-will of the trademark Nokia for creating traffic to Respondentґs website. Respondent has thus, in the view of this Panel, intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark as to the source, affiliation or endorsement of Respondent’s website.

The evidence submitted is thus, in the view of this Panel, uncontested evidence that the domain name at issue has been registered and is being used in bad faith as mentioned in Paragraph 4b (vi) of the Policy.

 

7. Decision

On the basis of the foregoing considerations the Administrative Panel concludes that the domain name "nokias.com" is confusingly similar to Complainant’s trademark "Nokia," that Respondent has no rights or legitimate interests in respect of the domain name and that Respondent’s 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 "nokias.com" be transferred to Complainant.

 


Henry Olsson
Sole Panelist

Dated: October 19, 2000

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0833.html

 

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