Nokia Corporation v. Michel Sedaghat
Claim Number: FA0803001163281
Complainant is Nokia Corporation (“Complainant”), represented by Robert
S. Weisbein, of Darby & Darby P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nokiadownloads.net>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On March 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 10, 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.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 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. Respondent’s <nokiadownloads.net> domain name is confusingly similar to Complainant’s NOKIA mark.
2. Respondent does not have any rights or legitimate interests in the <nokiadownloads.net> domain name.
3. Respondent registered and used the <nokiadownloads.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a manufacturer of mobile phones and other
telecommunication products under the NOKIA mark, which Complainant registered
with the United States Patent and Trademark Office (“USPTO”) on
Respondent registered the <nokiadownloads.net>
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 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. 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 that 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 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 has established rights in
the NOKIA mark for purposes of Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive."); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Complainant contends that Respondent’s <nokiadownloads.net> domain name is confusingly similar to its NOKIA mark. The <nokiadownloads.net> domain name differs from Complainant’s mark in two ways: (1) the term “downloads” has been added; and (2) the generic top-level domain (“gTLD”) “.net” has been added. The Panel finds that these changes do not minimize or eliminate the resulting likelihood of confusion, and so Respondent’s disputed domain name is not sufficiently distinguished from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the complainant’s business); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and
legitimate interests in the <nokiadownloads.net>
domain name. Under Policy ¶
4(a)(ii), after the complainant makes a prima facie case against the respondent,
the respondent then has the burden of showing evidence that it does have rights
and legitimate interests in the disputed domain name. Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Complainant contends that Respondent is not commonly known
by the disputed domain name, <nokiadownloads.net>, nor have they ever
been the owner or licensee of the NOKIA mark.
The WHOIS record for the disputed domain name lists Respondent as “Michel
Sedaghat.” This evidence, along with the fact that Respondent has failed to
show any evidence contrary to Complainant’s contentions, compels the Panel to
find that Respondent is not commonly known as <nokiadownloads.net> pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum
The disputed domain name, <nokiadownloads.net>, resolves to a website that is made to
look like an official Internet sales point for Complainant’s products. However, Complainant contends that Respondent
has no rights to sell Complainant’s products, and sent Respondent a cease-and-desist
In response to the cease-and-desist letter of
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is passing off the website at <nokiadownloads.net> as a legitimate Nokia website, and that this is evidence of Respondent’s registration and use in bad faith. Respondent’s use of the disputed domain name is likely to mislead and confuse customers as to the sponsorship or affiliation of Complainant’s goods that Respondent is selling on the website that resolves from the <nokiadownloads.net> domain name. Respondent is attempting to commercially benefit from the goodwill associated with Complainant’s NOKIA mark. The Panel finds that Respondent’s passing itself off as a legitimate website operated or sponsored by Complainant is evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
Complainant also contends that Respondent’s offer to sell the disputed domain name to Complainant is evidence of registration and use in bad faith. The Panel finds that this offer to sell the disputed domain name is evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(i). See Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy ¶ 4(b)(i) where the respondent stated in communication with the complainant that it would be ready to sell the <matmut.com> domain name registration for $10,000); see also Nabisco Brands Co. v. Patron Group, D2000-0032 (WIPO Feb. 23, 2000) (finding that the respondent registered and used the domain names to profit where the respondent offered to sell the domain names for $2,300 per name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith).
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <nokiadownloads.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.) Panelist
Dated: April 30, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum