national arbitration forum

 

DECISION

 

Nokia Corporation v. [Redacted]

Claim Number: FA0808001220744

 

PARTIES

Complainant is Nokia Corporation (“Complainant”), represented by Britton Payne, of Foley & Lardner LLP, New York, USA.  Respondent is [Redacted] (“Respondent”), Virginia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <invest-nokia.com> and <invest-nokia123.com>, registered with 1 & 1 Internet Ag.

 

PANEL

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.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 15, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 20, 2008.

 

On August 18, 2008, 1 & 1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <invest-nokia.com> and <invest-nokia123.com> domain names are registered with 1 & 1 Internet Ag and that Respondent is the current registrant of the names.  1 & 1 Internet Ag has verified that Respondent is bound by the 1 & 1 Internet Ag 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 August 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 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 postmaster@invest-nokia.com and postmaster@invest-nokia123.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On September 22, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant is a wireless telecommunications provider that markets its goods and services under the NOKIA mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on April 14, 1987 (Reg. No. 1,307,204). 

 

Complainant has sold billions of dollars of goods and services in the United States, and the NOKIA mark has been recognized as the sixth most valuable brand in the world.

 

The <invest-nokia.com> and <invest-nokia123.com> domain names were registered on April 14, 2008. 

 

Neither of the disputed domain names resolves to a website of any kind.

 

Respondent’s <invest-nokia.com> and <invest-nokia123.com> domain names are confusingly similar to Complainant’s NOKIA mark.

 

Respondent is not commonly known by either the <invest-nokia.com> or the <invest-nokia123.com> domain names, nor has it ever been an owner or licensee of the NOKIA trademark.

 

Respondent does not have any rights to or legitimate interests in the <invest-nokia.com> and <invest-nokia123.com> domain names.

 

Respondent registered and uses the <invest-nokia.com> and <invest-nokia123.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)   the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and

(2)   Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)   the same domain name was registered and is being used by Respondent in bad faith.

 

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 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 a 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:

 

i.         the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.       Respondent has no rights or legitimate interests in respect of the domain name; and

iii.      the domain name has been registered and is being used in bad faith.

 

Preliminary Issue: Redaction of Respondent’s Identity 

 

In a declaration submitted by Complainant along with its Complaint, the named Respondent contends that she has been the victim of identity theft.  This Respondent specifically states that, although the WHOIS record provides her personal information, she did not in fact register the disputed domain name and has never registered any domain name.  In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Nat. Arb. Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Nat. Arb. Forum May 19, 2005), panels omitted named respondents’ personal information from their decisions in an effort to protect the identity of those named respondents who claimed to be victims of identity theft from becoming publicly aligned with acts the actual registrants appeared to have sought to impute to those named respondents.  See also Nat’l Westminster Bank plc v. [Redacted], FA 1028337 (Nat. Arb. Forum July 25, 2007).  According to Policy 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” 

 

There being no objection from Complainant, we therefore determine that, in the exceptional circumstances here presented, redaction of the named Respondent’s personal information from the Panel’s Decision will serve to prevent further victimization of the named Respondent.  The caption and text of this Decision reflect that determination.

 

Accordingly, throughout this Decision, “Respondent” will be understood to refer to the actual registrant of the disputed domain name, the true identity of whom is unknown to the Panel.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the NOKIA trademark for purposes of Policy ¶ 4(a)(i) through its registration of the mark with the USPTO.  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 also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003):

 

[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.

 

Complainant contends that Respondent’s <invest-nokia.com> domain name is confusingly similar to its NOKIA mark.  The domain name differs from Complainant’s mark by the addition of three elements: (1) the generic term “invest”; (2) a hyphen; and (3) the generic top-level domain (“gTLD”) “.com”.  Neither the introduction of a generic term nor the addition of a hyphen sufficiently distinguishes a domain name from a mark for purposes of Policy ¶ 4(a)(i). See Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to a complainant’s marks and likely to mislead Internet users into believing that products and services offered by respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003):

 

The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.

 

The addition of a gTLD likewise does not reduce the likelihood of confusion between the domain name and the mark, because every domain name must contain a top-level-domain.  See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):

 

The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.

 

Therefore, we find that Respondent’s <invest-nokia.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). 

 

Complainant contends that Respondent’s <invest-nokia123.com> domain name is confusingly similar to its NOKIA mark.  This domain name differs from Complainant’s mark in four ways: (1) the generic term “invest” has been added; (2) a hyphen has been added; (3) the number “123” has been added; and (4) the generic top-level domain (“gTLD”) “.com” has been added.  For essentially the same reasons as have been articulated above, neither the introduction of a generic term, nor the addition of a hyphen or of a three-digit number sufficiently distinguishes a domain name from a competing mark for purposes of Policy ¶ 4(a)(i).  See Yahoo! Inc., supra, D2000-0777 (WIPO Oct. 2, 2000); see also Sports Auth. Mich. Inc., supra, FA 176541 (Nat. Arb. Forum Sept. 23, 2003); further see Am. 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).  

 

And as has already been noted, the addition of a gTLD does not reduce the likelihood of confusion between a domain name and a competing mark, because every domain name must contain a gTLD.  See Gardline Surveys Ltd., supra, FA 153545 (Nat. Arb. Forum May 27, 2003), supra. 

 

Therefore, we find that Respondent’s <invest-nokia123.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

 

Complainant contends that Respondent lacks rights to and legitimate interests in the <invest-nokia.com> and <invest-nokia123.com> domain names.  Under Policy ¶ 4(a)(ii), once a complainant makes out a prima facie case against a respondent under this heading, that respondent has the burden of showing evidence that it does in fact have rights or legitimate interests in the disputed domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue.”).

 

From the record before us, we conclude that Complainant has made out a prima facie case under Policy ¶ 4(a)(ii). No response to the Complaint having been filed, we are free to conclude that Respondent has no rights to or interests in the domain.  See Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003):

 

A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.

 

Nonetheless, we will examine the evidence of record in light of the considerations set out in Policy ¶ 4(c) to determine if there is any basis for concluding that Respondent has rights to or interests in the disputed domain names sufficient to satisfy the requirements of the Policy.

 

We begin by observing that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by either of the <invest-nokia.com> and <invest-nokia123.com> domain names, nor has it ever been the owner or licensee of the NOKIA mark.  Therefore we conclude that Respondent is not commonly known by either of the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that a respondent was not commonly known by either of the domain names <aolcamera.com> or <aolcameras.com> because that respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).

 

We also observe that there is no dispute as to Complainant’s allegation to the effect that no active use is being made of the disputed domain names, nor is there any evidence that they have ever been put to use.  Therefore, we conclude that Respondent is not using the disputed domain names for either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in a domain name where, among other things, there was no proof that a respondent made preparations to use that domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, and where the domain name did not resolve to any website); see also Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003): “Respondent's passive holding of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.” further see Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where a respondent advanced no basis on which a panel could conclude that it had a right or legitimate interest in domain names there in issue, and where no commercial use of those domain names has been established).

 

The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

There is no dispute that Respondent is not making active use of the disputed domain names.  The failure to make active use of a domain name with no evidence of a good faith intent to use it is evidence of bad faith registration and use of the domain under Policy ¶ 4(a)(iii). See Hewlett-Packard Co. v. Martineau, FA 95359 (Nat. Arb. Forum Aug. 30, 2000):

 

Respondent’s failure to submit an assertion of good faith intent to use the domain name, in addition to the passive holding of the domain name, reveal that Respondent registered and uses the domain name in bad faith.

 

Accordingly, we conclude that the unexplained inactive use of the disputed domain names is evidence of their registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1) a respondent knew or should have known of the complainant’s famous GALLO marks and (2) that respondent made no use of the domain name <winegallo.com>).

 

In addition, it appears that Respondent registered the <invest-nokia.com> and <invest-nokia123.com> domain names with at least constructive knowledge of Complainant’s rights in the NOKIA trademark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office.  Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).

 

The Panel thus finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.

 

Accordingly, it is Ordered that the <invest-nokia.com> and <invest-nokia123.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.

 

 

 

 

Terry F. Peppard, Panelist

Dated:  October 2, 2008

 

 

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