Nokia
Corporation v. Franklin a/k/a Jennifer Cook
Claim
Number: FA0202000104592
PARTIES
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.
PANEL
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.
PROCEDURAL
HISTORY
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 postmaster@nokia1.com, postmaster@nokiaone.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.
RELIEF
SOUGHT
Complainant requests
that the domain names be transferred from the Respondent to the Complainant.
PARTIES’
CONTENTIONS
A. 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.
B. Respondent
Respondent failed to
submit a Response.
FINDINGS
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.
DISCUSSION
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.
DECISION
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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