Nokia Corporation v. Franklin a/k/a Jennifer Cook
Claim Number: FA0202000104592
Complainant is Nokia Corporation, Espoo, FINLAND (“Complainant”) represented by Robert S. Weisbein, of Darby & Darby P.C. Respondent is Jennifer Cook Franklin, Lodi, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nokia1.com> and <nokiaone.com>, registered with Tucows, Inc.
On March 19, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 13, 2002; the Forum received a hard copy of the Complaint on February 15, 2002.
On February 13, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain names <nokia1.com> and <nokiaone.com> are registered with Tucows, Inc. and that Respondent is the current registrant of the names. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 21, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 13, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org, email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain names be transferred from the Respondent to the Complainant.
The <nokia1.com> and <nokiaone.com> domain names are confusingly similar to Complainant's NOKIA mark.
Respondent has no rights or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
Respondent failed to submit a Response.
Since 1981, Complainant has used the NOKIA mark in relation to mobile telephones and accessories. Complainant has registered the mark in the United States with the United States Patent and Trademark Office (Reg. Nos. 1,570,492 and 1,734,209). Complainant is currently the world's leading mobile phone supplier. Complainant also operates <nokia.com>. It has operated at this domain since 1991 and therefore established a strong Internet presence for its famous mark. Complainant has expended over $180 million in advertising in the United States alone, not counting other expenditures world wide. Complainant has exceeded over $16 billion in sales in the U.S. and € 78 billion worldwide.
Respondent registered the disputed domain names on February 18, 2000. Respondent operates websites at both domain names where it offers for sale numerous mobile telephone accessories that it claims to be compatible with NOKIA brand mobile telephones. These products are marketed in such a way as to lead Internet users to believe that they are manufactured by or sponsored by Complainant. Some of the products offered on Respondent's website are not NOKIA products, but are identified as if they are, infringing upon Complainant's NOKIA trademark.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant has established, through registration and continuous use, that it has rights in its famous NOKIA mark. Furthermore, Respondent's <nokia1.com> and <nokiaone.com> domain names are confusingly similar to Complainant's famous NOKIA mark. It has been established that the addition of a generic term such as "one" or the addition of a random numeral such as "1" does not create a distinct mark capable of overcoming a claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion). Moreover, the addition of a generic top-level domain name such as ".com" does not create a distinct mark because it is considered irrelevant when determining whether a domain name is confusingly similar. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no rights or legitimate interests in the disputed domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
Respondent is using confusingly similar domain names to provide products that are similar to Complainant's products. The use of confusingly similar domain names to offer similar products or services is not a bona fide offering of goods or services pursuant to Policy ¶ 4 (c)(i). See The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to the Complainant’s mark; Respondent’s use of the domain names to sell competing goods was an illegitimate use and not a bona fide offering of goods).
Furthermore, based on the fame of Complainant's NOKIA mark it would be very difficult for Respondent to show that it had rights and legitimate interests in the disputed domain names. Any use by Respondent of the <nokia1.com> and <nokiaone.com> domain names, confusingly similar to Complainant's famous mark, is considered an opportunistic attempt to attract customer's via Complainant's famous mark. See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).
Respondent is intentionally diverting Internet users to its websites by using Complainant's famous NOKIA mark for its own commercial gain. Therefore, Respondent is not making a legitimate noncommercial, or fair use of the disputed domains pursuant to Policy ¶ 4(c)(iii). See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in a domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of a domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
The <nokia1.com> and <nokiaone.com> domain names are confusingly similar to Complainant's mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant. Respondent's intentional registration of the confusingly similar domain names is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that Respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
Furthermore, because of the famous and distinctive nature of Complainant's NOKIA mark, Respondent is thought to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing <nokia1.com> and <nokione.com> domain names. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and that such knowledge constitutes bad faith).
Respondent's use of Complainant's mark is a misappropriation of Complainant's goodwill. See Nat'll Rifle Assn v. fredg.com, FA 95837 (Nat. Arb. Forum Nov. 30, 2000) (finding bad faith where Respondent registered the domain names <friendsofnra.com>, <friendsofnra.net>, and <friendsofnra.org> with the intention of using the domain names in connection with individual NRA fundraising, but without permission from Complainant to use the registered marks); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent and created confusion with the Complainant’s mark as to the source, sponsorship, or affiliation of that website).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain names <nokia1.com> and <nokiaone.com> be transferred from Respondent to Complainant.
James P. Buchele Panelist
Dated: March 22, 2002
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