Nokia Corporation v. Nokia HYIP
Claim Number: FA0801001128341
Complainant is Nokia Corporation (“Complainant”), represented by Britton
Payne, of Darby & Darby P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nokiahyip.com>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.
The undersigned certifies that or she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 8, 2008; the National Arbitration Forum received a hard copy of the Complaint January 9, 2008.
On January 9, 2008, Direct Information Pvt Ltd d/b/a Publicdomainregistry confirmed by e-mail to the National Arbitration Forum that the <nokiahyip.com> domain name is registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry and that Respondent is the current registrant of the name. Direct Information Pvt Ltd d/b/a Publicdomainregistry verified that Respondent is bound by the Direct Information Pvt Ltd d/b/a Publicdomainregistry registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 23, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 12, 2008, 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 by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 22, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 National Arbitration 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <nokiahyip.com>, is confusingly similar to Complainant’s NOKIA mark.
2. Respondent has no rights to or legitimate interests in the <nokiahyip.com> domain name.
3. Respondent registered and used the <nokiahyip.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nokia Corporation, is a well-known manufacturer of a wide variety of telecommunication products. Complainant holds a trademark registration in the NOKIA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,570,492 issued Dec. 12, 1989). Additionally, Complainant holds various registrations with a variety of governmental trademark authorities.
Respondent registered the disputed domain name November 4, 2007. The <nokiahyip.com> domain name currently resolves to a website displaying Complainant’s mark and products. The WHOIS information for the disputed domain name was previously in the name of “MansterGroup.” After the filing of the original Complaint in this proceeding, the WHOIS information was changed to show Complainant in the registration information but addresses and telephone numbers that did not exist were given. Respondent attempted “cyber-flying” to interfere with this ICANN proceeding.
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."
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
The Panel finds that Complainant’s registration of the NOKIA mark with the USPTO establishes its rights under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The disputed domain name that Respondent registered, <nokiahyip.com>, is confusingly similar to the NOKIA mark, as it incorporates the mark in its entirety with the addition of the letters “hyip.” The Panel finds this addition insufficient to eradicate the confusion under Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar).
The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and legitimate interests in the <nokiahyip.com> domain name. Complainant has the burden of proof for this allegation pursuant to Policy ¶ 4(a)(ii). Once Complainant makes a prima facie showing, the burden of proof shifts to Respondent to show that it does have rights or legitimate interests in the domain name. The Panel finds Complainant met its burden. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to respond to the Complaint allows the Panel to assume Respondent has no rights or legitimate interests in the <nokiahyip.com> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”).
Nonetheless, this Panel examines the record to determine legitimate rights or interests under Policy ¶ 4(a)(ii).
Complainant alleges that Respondent is not commonly known by the <nokiahyip.com> domain name. Respondent is not licensed or authorized to use the NOKIA trademark. Although the WHOIS information for the disputed domain name states that Respondent is known as “Nokia HYIP,” no other information in the record suggests that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). In fact, the WHOIS information for Respondent changed after the filing of the initial UDRP Complaint to mimic Complainant’s name, a practice known as “cyberflying.” The Panel finds that the Respondent has no rights or legitimate interests to the <nokiahyip.com> domain name under Policy 4 ¶ (c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also British Sky Broad. Group plc v. Merino & Sky Services S.A., D2004-0131 (WIPO July 5, 2004) (holding that there was no evidence that the respondent was commonly known by the disputed domain names where the respondent’s information was the result of cyberflying).
The <nokiahyip.com> domain name currently resolves to a website displaying Complainant’s mark and products. The Panel presumes that Respondent is attempting to pass itself off as Complainant. The Panel finds this is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(ii).
Complainant contends that Respondent is using the <nokiahyip.com> domain name for commercial gain by benefiting from the likely confusion between Complainant’s mark and the disputed domain name. The Panel finds that the similarity between the disputed domain name and the NOKIA mark are likely to create confusion as to Complainant’s source, sponsorship, affiliation, or endorsement of the website that resolves from the disputed domain name under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Respondent's WHOIS information displays information identifying Complainant as Respondent in this case. However, Complainant contends that it has no control over the disputed domain name. Respondent’s activities thus constitute “cyberflying,” a practice of changing the registrant of a domain name before or during a UDRP proceeding in an attempt to disrupt the proceeding and circumvent the Policy. There is no evidence that Respondent is commonly known by the disputed domain name in any manner, or that Respondent is authorized to use Complainant's NOKIA mark. The Panel finds Respondent has engaged in the practice of cyberflying and that such action is further evidence of bad faith under Policy ¶ 4(a)(iii). See 3M Co. v. 3M Co. c/o Domain Name Admin., FA 1106749 (Nat. Arb. Forum January 14, 2008) (Finding the respondent's attempt to disrupt the UDRP process by listing complainant as the owner of the disputed domain name (cyberflying) was further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).); see also Medco Health Solutions, Inc. v. Whois Privacy Protection Serv., Inc., D2004-0453 (WIPO Aug. 25. 2004) (holding the respondent’s efforts to disguise its true identity an example of bad faith conduct).
Respondent's attempt to disrupt the UDRP process by listing Complainant as the owner of the disputed domain name is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See KSL Recreation Mgmt. Operations, LLC v. KSL Recreation Mgmt. Operations LLC, FA 876390 (Nat. Arb. Forum Feb. 13, 2007) (transferring the disputed domain name to the complainant where the respondent had engaged in cyberflying by changing the registration information to list the complainant as the registrant of the disputed domain name after notice of the dispute); see also Medco Health Solutions, Inc. v. Whois Privacy Protection Serv., Inc., D2004-0453 (WIPO Aug. 25. 2004) (holding the respondent’s efforts to disguise its true identity an example of bad faith conduct).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nokiahyip.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 5, 2008
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