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and Mediation Center
Nokia Corporation v. Nokia India Private Limited
Case No. D2006-0080
1. The Parties
The Complainant is Nokia Corporation, Espoo, Finland, represented by Sen-Oberoi, India.
The Respondent is Nokia India Private Limited, Bangalore, Karnataka, India.
2. The Domain Name and Registrar
The disputed domain name <nokiaind.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2006. On January 18, 2006, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On January 18, 2006, Register.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. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on January 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2006.
The Center appointed Andrew Mansfield as the sole
panelist in this matter on March 8, 2006. 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, paragraph 7.
4. Factual Background
Complainant is the leading manufacturer of mobile phones and accessories in nearly every country in the world. Complainant has one-third of the world’s market share for mobile phones. The Complainant’s trademark NOKIA is famous in most countries of the world by virtue of long, extensive, and continuous use for nearly a century. In 2005, Interbrand Corporation ranked NOKIA as the sixth most valuable trademark in the world.
Worldwide, Nokia has registered 429 trademarks, with one in nearly every state. In India, Complainant holds trademark registration 466,090 to the word NOKIA. Complainant has eight additional trademark applications pending in India.
Complainant operates a website at “www.nokia.com”
that links to various other websites divided on the basis of geographical location
and type of product.
5. Parties’ Contentions
Complainant asserts that the domain name is identical or confusingly similar to its trademark NOKIA. The domain name contains the exact letters that constitute NOKIA in English and adds “ind,” a common abbreviation for India.
Complainant asserts that Respondent has no rights or legitimate interests in the domain name. Complainant has not authorized Respondent to register or use the domain name or any trademark forming part of it. Complainant also informs the Panel that it is not aware of a company named NOKIA India PVT and that the domain name was registered under this false company name by Respondent in order to make the registration appear legitimate.
Complainant asserts that the domain name was registered and is being used in bad faith. Respondent has operated a commercial website at the domain name selling Complainant’s products or unauthorized copies of Complainant’s products since November of 2005. Respondent links to information on Complainant’s legitimate website, thus increasing the likelihood of confusion engendered by the domain name in the minds of the average user. Respondent is using Complainant’s trademark and copyrighted material without permission. Complainant argues that Respondent is obviously well aware of Complainant’s trademark NOKIA. Finally, Respondent misrepresented itself to the Registrar by failing to provide a complete and accurate physical address.
The Respondent, even though properly notified of the
proceedings, did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint the Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:
(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used by the Respondent in bad faith.
The Panel proceeds to deal with each of these elements in turn.
A. Identical or Confusingly Similar
The domain name consists of Complainant’s famous mark NOKIA plus the
letters IND. Complainant has proven that it is the owner of the trademark NOKIA.
It has long been held that domain names that entirely incorporate a trademark,
such as the case here, may be confusingly similar to the trademark. Dr. Ing.
h.c. F. Porsche AG v. Vasiliy Terkin, WIPO
Case No. D2003-0888 (January 6, 2004) (<porsche-autoparts.com>); Bayerische
Motoren Werke AG v. DLR, WIPO Case
No. D2001-1231 (December 14, 2001) (<bmw-uk.com>). The addition of
a geographic identifier to a trademark may also render a domain name confusingly
similar to a trademark. Honda Motor Company Limited v. LOKITA Enterprises,
WIPO Case No. D2003-0507 (August 8, 2003)
The Panel finds that the domain name is confusingly similar to Complainant’s trademark NOKIA. The addition of the three letters IND, even if used as a place indicator, do not reduce the confusing similarity between the domain name and the mark but serve to increase it, instead.
B. Rights or Legitimate Interests
The Complainant has made out an initial prima facie case that the Respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. By matter of default, Respondent has failed to do so, and Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel notes that, even though not contended by the Respondent, a respondent may have rights or legitimate interests to a domain name as a reseller. This is discussed further under the third element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 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; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your 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 your website or location or of a product or service on your website or location.”
Respondent is using the domain name to intentionally attract customers to its website under the misrepresentation that its website is licensed, sanctioned, or operated by Nokia. There is substantial and undeniable likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website. Nevertheless, Respondent may be allowed to make use of the NOKIA trademark if it is a reseller of Complainant’s goods and thus had a legitimate interest in the domain name.
The majority view of panels considering whether a reseller of products may use the trademark of such products in a domain contains several requirements. A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements if: (1) Respondent actually offers goods and services at issue; (2) Respondent uses the site to sell only the trademarked goods; and, (3) the site accurately discloses the registrant’s relationship with the trademark owner.
Respondent fails the third prong of this test. There is no disclosure on Respondent’s website of the relationship between Respondent and Complainant. In fact, the website is intentionally created to look like the official Indian website of Complainant.
Finally, the Panel notes that Respondent failed to provide an accurate mailing
address to the registrar. The Panel takes this failure to provide accurate information
as further indication of bad faith, as has been done by prior panels. Forte
Communications, Inc. v. Service for Life, WIPO
Case No. D2004-0613 (September 22, 2004).
Complainant has satisfied this element of the Policy.
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 name, <nokiaind.com> be transferred to the Complainant.
Dated: March 19, 2006