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and Mediation Center
Nokia Corporation v. Horoshiy, Inc., LaPorte Holdings
Case No. D2004-0851
1. The Parties
The Complainant is Nokia Corporation, of Finland, represented by Venable, LLP, United States of America.
The Respondent is Horoshiy, Inc. of Curacao, Netherlands Antilles, Netherlands
and LaPorte Holdings of, Los Angeles, California, United States of America.
2. The Domain Names and Registrars
The disputed domain names <howtonokia.com>, <nokiapcsuite.com> and <nokiasoftwaremarket.com> are registered with NameKing.com.
The disputed domain name <nokiusa.com> is registered with iHoldings.com
Inc. d/b/a DotRegistrar.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2004. On October 18, 2004, the Center transmitted by email to NameKing.com and iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain names at issue.
On October 26, 2004, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
On November 8, 2004, NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant providing the contact details for the administrative, billing, and technical contact.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 12, 2004. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on November 12, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was December 2, 2004. The Respondents did not submit any response. Accordingly, the Center notified the Respondents of default on December 6, 2004.
The Center appointed Ana Marнa Pacуn as the Sole Panelist
in this matter on December 17, 2004. 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 the Rules,
4. Factual Background
The following information is derived from the Complaint and supporting evidence submitted by the Complainant.
Nokia is a well-known supplier of mobile phones and accessories, holding 38% of the world market in the sale of mobile phones in 2002 and 2003. The NOKIA trademark was rated as the 8th most valuable global brand in Interbrands Global Annual Survey for 2003.
The NOKIA trademarks are used in connection with the manufacture and sale of telecommunications and accessories related to mobile phones, mobile phone networks, and the marketing, sale and promotion thereof.
NOKIA owns over 300 registered trademarks in several countries (incl. US Registration No. 2630022, 2690201, 2676153, 2768770, 2183176 and European Community Trademark Registration No. 340836, 871194, 323386, 323337).
NOKIA-branded products are sold in 119 countries throughout the world.
The Respondents have not filed any response to the
Complaint or answered the Complainant’s factual assertions or evidence
in any other manner.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are confusingly similar to its well-known trademark NOKIA, that the Respondents have no legitimate interests or rights in the contested domain names, and that the Respondents registered and are using the disputed domain names in bad faith by diverting consumers to a commercial website selling products and services in the same field of PC suites, software market and how-to-site NOKIA products in order to intentionally attract Internet users to the their websites and to profit by creating a likelihood of confusion with the NOKIA trademark.
The Respondents did not reply to the Complainant’s
6. Discussion and Findings
The Respondents were given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under Rules Paragraph 2(a) to employ reasonably available means calculated to achieve actual notice to the Respondents of the Complaint.
However, as previously stated, the Respondents failed to file any reply to the Complaint and have not sought to answer the Complainant’s assertions, evidence or contentions in any manner. The Panel finds that the Respondents have been given a fair opportunity to present its case, and the Panel will proceed to a decision on the Complaint.
The Respondents’ default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove the elements required by Policy Paragraph 4(a). To succeed in this proceeding and obtain the transfer of the Domain Names, the Complainant must prove the three following elements:
1. The Domain Named are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.A);
2. The Respondents have no rights or legitimate interests in respect of the Domain Names (see below, section 6.B); and
3. The Domain Names have been registered and are being used in bad faith (see below, section 6.C).
Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. In accordance with Paragraph 14(b) of the Rules, the Panel may draw inferences it considers appropriate from the Respondents failure to reply to the Complainant’s assertions and evidence. In these circumstances, the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondents failure to reply.
A. Identical or Confusingly Similar
There are two elements that a Complainant must establish under Paragraph 4(a)(i) of the Policy: that the Complainant has rights in a trademark or a service mark, and that the disputed domain names are identical or confusingly similar to the mark.
The Complainant has provided sufficient evidence of its rights to the trademark NOKIA. This trademark is used world-wide and is registered in several countries, including the United States and the European Community (see section 4 “Factual Background”). The Policy requires that the disputed domain name be ‘identical or confusingly similar’ to the Complainant’s NOKIA trademark. The domain names in dispute and the Complainant’s NOKIA trademarks are not identical. Therefore, the issue is whether the domain names and the NOKIA trademarks are confusingly similar.
How well this mark is known enhances the probability of confusion. So the differences between the disputed domain names and the trademark of the Complainant must be wider to avoid any confusion regarding the origin of the domain names. In a situation such as this one, where Complainant’s Mark is very well known.
The disputed domain names consists of the Complainant’s service mark which includes the common terms “howto”, the generic terms “pcsuite”, “softwaremarket”, and the geographic term “usa”.
Adding a common or a generic term to a well-known
mark does not sufficiently distinguish the domain name from Complainant’s
trademark. This view has been expressed repeatedly by other Panels, including
cases involving the NOKIA trademark. See, e.g. Nokia Corporation v. Firdaus
Adinegoro/Beli Hosting, WIPO Case No. D2004-0814;
Nokia Corporation v. Marlon Sorken, WIPO
Case No. D2002-0276; Nokia Corporation v. Liquid SMS Limited, WIPO
Case No. D2002-0292. Furthermore, the addition of “usa” can
be interpreted as a reference to the activities of the Complainant in the United
States (see, e.g. Nokia Corporation v. Nick Holmes t/a EType
Media, WIPO Case No. D2002-0001).
Since the Complainant and Respondents provide the same services, there is greater likelihood of confusion. Nokia also provides a suite of PC software to work with its products (e.g., “www.nokia.com”), uses the phrase “software market” on various websites (e.g., “www.softwaremarket.nokia.com”, “www.nokia.softwaremarket.com”) and uses the phrase “how-to” in connection with its products (e.g., “www.nokiahowto.com”). In the second and third case the differences are minor. The only distinction between the domain name <nokiasoftwaremarket.com> and the Complainant’s website is a single change: the period after the word “nokia” that constitutes the domain name of the Complainant. The disputed domain name <howtonokia.com> has only a transposition of the words in Complainant’s domain name <nokiahowto.com>.
Finally, the Respondents use similar colors on their websites that further enhance the likelihood of confusion.
For these reasons, the Panel finds that the disputed domain names, while not identical, are confusingly similar to the trademark NOKIA.
B. Rights or Legitimate Interests
Even though the Respondents have not filed any reply to the Complaint and have not contested the Complainant’s assertions, it is the Panels responsibility to consider whether the Respondents use of the disputed domain names demonstrates rights or legitimate interests in the domain names. According to Policy Paragraph 4(c), the following circumstances, if proved, demonstrate a registrant’s rights or legitimate interests in a domain name:
(i) the registrant used or demonstrably prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;
(ii) the registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) the registrant is 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 complainant’s mark.
To satisfy the Policy Paragraph 4(c)(i), the Respondents use of the disputed domain names must be in connection with a bona fide offering of goods or services. In this case the Respondents use of the disputed domain names is not bona fide within the meaning of Policy Paragraph 4(c)(i). That is, there is no apparent legitimate justification for the Respondent’s registration and use of the <howtonokia.com>, <nokiapcsuite.com>, <nokiasoftwaremarket.com>, and <nokiusa.com> domain names that are confusingly similar to the Complainant’s trademark.
The Respondents would only have a right to register and use the disputed domain names if the Complainant had specifically granted that right. The Complainant has not licensed or otherwise permitted the Respondents to use the trademark NOKIA.
In addition, the Panel draws an adverse inference from the Respondents failure to provide any explanation or rationale for its use of the disputed domain names for their websites.
Policy Paragraph 4(c)(ii) is not applicable. The Respondents do not contend, and there is no evidence that, the Respondents have been commonly known by the disputed domain names.
Policy Paragraph 4(c)(iii) is not applicable. The Respondents are using the domain names for web pages with commercial links and advertisements.
For these reasons, the Panel finds that the Respondents have no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Policy Paragraph 4(a)(iii) requires the Complainant to prove that the Respondents registered and have used the disputed domain names in bad faith. The language of Policy Paragraph 4(a)(iii) requires that both bad faith registration and bad faith use be proved.
Policy Paragraph 4(b) provides that the following circumstances are evidence that a registrant has registered and used a domain name in bad faith:
(i) circumstances indicate that the registrant has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, (the owner of the trademark or service mark), or to a Complainant competitor, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain name to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant 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 its website or location or of a product or service on its website or location.
The Complainant does not rely on Policy Paragraphs 4(b)(i), 4(b)(ii) or 4(b)(iii) but relies upon Policy Paragraph 4(b)(iv). This requires the Complainant to establish that the Respondents registered and are using the disputed domain names to confuse and divert internet traffic to their websites for commercial gain.
The Panel finds that the Respondents knew of the Complainant’s NOKIA trademark. They registered and are using the disputed domain names to confuse and divert internet traffic to the Respondents websites, based upon the following circumstances:
The Respondents, active in the mobile phone market, knows or should have known the trademark NOKIA when registering the disputed domain names <howtonokia.com>, <nokiapcsuite.com>, <nokiasoftwaremarket.com> and <nokiausa.com>.
The Respondents have deliberately included the well-known trademark NOKIA in the disputed domain names to attract business to its websites. By registering and using the disputed domain names the Respondents have created a likelihood of confusion with the NOKIA trademark as to the affiliation or endorsement of its websites.
The Panel finds that the s registered the domain names in bad faith and are deliberately using the domain names with the goal of attracting, for commercial gain, internet users to websites. This is done through the creation of confusion with the Complainant’s registered trademark as to the source, sponsorship, affiliation or endorsement of the Respondents websites or location or of a product or service on the Respondents websites or location. In fact, it is difficult to conceive that the Respondents chose to register the disputed domain names by accident. Based on the facts submitted, it is difficult to conceive any plausible, actual or contemplated, active use of the domain names by the Respondents that would not infringe to the Complainant’s trademark.
In addition, there is evidence that the Respondents
are involved in different cases of registering domain names that contain the
trademark of others. See e.g. MedCo Health Solutions Inc. v. Horoshiy,
Inc., WIPO Case No. D2004-0625; Wal-Mart
Stores, Inc. v. Horoshiy, Inc., WIPO Case
No. D2004-0620; Comerica Inc. v. Horoshiy, Inc., WIPO
Case No. D2004-0615; Lillian Vernon Corporation v. Horoshiy, Inc.,
WIPO Case No. D2004-0611.
For all of the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <howtonokia.com>, <nokiapcsuite.com>, <nokiasoftwaremarket.com> and <nokiusa.com> be transferred to the Complainant.
Ana Marнa Pacуn
Dated: December 31, 2004