Nokia Corporation v. Arzanesh Nezhad Hanzali
Claim Number: FA0907001271506
Complainant is Nokia Corporation (“Complainant”), represented by Britton
Payne, of Foley & Lardner LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nokiaglobal.com> and <irannokia.com>, registered with Onlinenic, 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.
Jonas Gulliksson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 30, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 2, 2009.
On July 13, 2009, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <nokiaglobal.com> and <irannokia.com> domain names are registered with Onlinenic, Inc. and that the Respondent is the current registrant of the names. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 July 15, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 4, 2009 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 email@example.com and firstname.lastname@example.org by e-mail.
A Response was received in electronic format only on August 4, 2009, and was determined to be deficient pursuant to ICANN Rule 5 because it was not received in hard copy.
On August 10, 2009, an Additional Submission was received, and was deemed to be timely in compliance with Supplemental Rule 7.
On August 12, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jonas Gulliksson as Panelist.
An Additional Submission by the Respondent was received by the Panel on August 18, 2009, and deemed to be timely.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant, as summarized below.
The Complainant, Nokia Corporation is a leading and well-known manufacturer and supplier of wireless telecommunications and of a wide variety of telecommunications products, e.g. mobile phones and accessories therefore and devices and solutions for imaging games, media and businesses.
The Complainant has used the trademark NOKIA in connections with its goods and services since at least as early as 1968. The trademark is registered in numerous jurisdictions around the world. Registrations include e.g.:
1,307,205, registered December 14, 1990;
2,372,695, registered June 17, 2005;
1,526,042, registered December 17, 1993.
US Trademark Registrations Nos. 1,570,492, registered December 12, 1989;
2,630,022, registered October 8, 2002;
2,667,758, registered December 31, 2002;
2,676,153 registered January 21, 2003;
2,690,201 registered February 25, 2003.
Enormous amounts of time, money and efforts have been spent in the
design, manufacture, promotion and sales of the Complainant’s products. This
includes advertisement and promotions in newspapers, magazines, on television
and through its websites, e.g. <nokia.com>. Sales
amounts to billions of USD in the
Prior Panels have established that the
The domain names in dispute are confusingly similar to the famous trademark of the Complainant. Both of the disputed domain names include the trademark of the Complainant in its entirety, only adding the generic term “global” and the geographic word “iran”, none of which can serve as a distinguishing mark which removes the likely confusion arising from the registrations of these domain names.
The selection of the designations “global” and “
The additions will enhance the likelihood of confusion leading the Internet users to erroneously believe that the disputed domain names are authorized websites of the Complainants.
Rights or Legitimate Interest
The disputed domain name <nokiaglobal.com> resolves to a website that displays various links including technology and communications-related links, listing links to several of the competitors of the Complainant, including “Nokia Global” and Nokia Global Phone”. These links are labeled sponsored links. The Complainant learned of this website in April, 2009. It is clear that it operates as a click-through website, trading off the goodwill of the Complainant’s famous trademark in order to earn the Respondent revenue from lost Internet users clicking on links.
The other disputed domain name <irannokia.com> does not resolve to a website.
The registration of the domain names in dispute took place after the Complainant commenced use of its famous NOKIA mark. In light of the substantial marketing, promotional and advertising efforts in connection with goods and services of the Complainant, it is inconceivable that the Respondent registered the domain names in dispute without any knowledge of the prior rights of the Complainant.
Internet users searching for an authentic and authorized Nokia website using Internet search engines will be diverted to the Respondent’s website instead of the authorized <nokia.com> website. The Respondent is thus disrupting the business of the Complainant by diverting Internet traffic from the Complainant to the Respondent’s websites.
Furthermore there is evidence that the Respondent is using the domain name <nokiaglobal.com> to send emails or text messages that lull Nokia customers into revealing personal information in the mistaken belief that they are dealing with Nokia. One such scam is that of emails being sent congratulating the recipient on winning “the sum £830,000.00 thousand Great British Pounds” run by the fictional “Nokia Global Award Department”. The sender email address is <email@example.com> with the “Message-Id” of <20090107173654.M72317@nokiaglobal.com>.
Although the domain name <irannokia.com> is not in use, it has been established by previous Panels that passive holding may constitute bad faith.
On May 5, 2009, the Complainant wrote a letter to the registrar requesting that the domain names be disabled as an egregious violator of the registrar Service Terms. The domain names in dispute were disabled on the following day in response to this letter.
This together with the famous and distinctive nature of the trademark of the Complainant is certain evidence of the bad faith of the Respondent.
The Response was submitted only in electronic form and the National Arbitration Forum does not consider the Response in compliance with ICANN Rule 5. The electronic submission was timely. The Panel may however, at its discretion, choose whether to accept and consider this Response or not, see Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the Response is solely in the discretion of the Panelist); see also Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000). The Complainant has requested that the Response is, with one exception, not considered in the Panel’s decision.
The UDRP Rules provides for a deadline for the submission of the Response. The dispute resolution system is meant as a quick process where the parties will receive a decision within a relatively short period of time. As previous Panels have stated, the system relies on all the parties observing and respecting the given timelines, see e.g. 1099 Pro, Inc. v. Convey Compliance Systems, Inc., D2003-0033 (WIPO Apr. 1, 2003) stating that “The majority, however, believes that it is important to apply the Rules as written, absent a good reason. Otherwise, parties will feel free to disregard deadlines and Respondents will regularly submit late responses. Thus, absent good cause, the majority of the Panel holds that late-filed responses should be disregarded.”
However, in this case, an electronic Response was received on time. Given the nationality of the Respondent and his apparent difficulties with the English language together with the fact that the UDRP is mainly based on electronic communication, the Panel will consider the content of the Response, compare with J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) finding that “The Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight…”.
The Respondent has as may be understood, argued as summarized below.
The disputed domain names were registered by the Respondent after visiting a place called NOKIAN. The Respondent wished to create a website promoting the virgin nature there and considered it a good opportunity for tourism-related business. The Respondent preferred the domain name <nokian.com> but it was not available for registration at that time.
After researching, the Respondent found out that the history of the
place dates back to 1000 B.C. and that the ancient name of the place was NOKIA.
The addition of the N at the end was added 100 years ago. The name NOKIAN means
“global king”. The Respondent therefore registered <irannokia.com>, with
Rights or Legitimate Interest
The Respondent never thought of NOKIA when registering the disputed domain names. If the Complainant wants the disputed domain names it only had to write a “good faith” letter and the Respondent would transfer the domain names. Instead the Complainant wants to take the domain names through these unlawful and untruthful complaints. The Respondent has never had any emails and has never purchased any web hosting service for any of the disputed domain names. The Court must have some technology and IT engineer that can verify the Respondent’s assertion. If the Court thinks that the Respondent is at fault then the Respondent accepts the transfer.
The accusations of the Complainant regarding the scam and spam are wrong. The Respondent has not set up any host or mail server for the disputed domain names. An amateur scammer and spammer could change the sender and Message-ID. The fact that the Respondent has supplied correct whois details contradicts the assertion of the Complainant. If the Respondent had wished to carry out a scam the Respondent would have created a web page. Another question is why the “reply” address supplied is different to <firstname.lastname@example.org>.
C. Complainant, Additional Submissions, summarized
The Complainant requests that the Response be found untimely, that the Respondent be deemed to have defaulted and that the Panel does not consider the Response as a consequence.
In the deficient Response the Respondent consents to transfer of the domain names in dispute. The Complainant requests that the Panel makes a single exception to the above requests and consider only the part of the conceding Response.
In substance, the Respondent has failed to provide any documentary evidence for his assertions. Furthermore, the Registrar found the link between the spam email campaign and the disputed domain name sufficient to disable the domain name. No demonstrable preparations to make fair use of the domain names have been made by the Respondent despite the fact that the Respondent allegedly has held the disputed domain names for nearly six years. On the contrary, <nokiaglobal.com> has only been used as a click-through revenue site. Furthermore, no evidence in English has been submitted that supports the existence of a village called “Nokian”, let alone “Nokia”. The domain names which would fully incorporate the alleged village name, <nokianglobal.com> and <irannokian.com> are both currently fully available for purchase and registration. The Respondent’s alleged Internet research would undoubtedly, given that NOKIA is the fifth most valuable brand in the world, reveal numerous references to the Complainant and its products. This should have alerted the Respondent to the fact that there may be a conflict. Finally, the Respondents willingness to surrender the domain names in dispute is an indication of the Respondent’s lack of realistic plans to make legitimate use of the domain names in dispute.
D. Respondent, Additional Submissions, as summarized below.
The Response was sent in hard copy as well but because of the sanctions
The Respondent has never accepted to transfer the domain names in dispute. If the Complainant would have sent a good faith letter before this dispute was instigated then a transfer could have been accepted but not after the initiation of this dispute.
The Respondent has sent ample evidence in Persian regarding the history and map pictures of the village Nokian which the National Arbitration Forum can translate. The National Arbitration Forum can also ask any formal geographic office or expert who will be able to inform of the existence of the village NOKIA or NOKIAN. Because there was no information in English describing this place, the business idea of the Respondent was to establish a commercial website in English and Persian for tourism to Nokian village.
FINDINGS AND DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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;
(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.
The Complainant has submitted evidence
of the registration of its trademark NOKIA both the United Kingdom Intellectual
Property Office (“UKIPO”) and the United States Patent and Trademark Office
(USPTO). Previous 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 e.g. Janus Int’l Holding
The domain names in dispute consist of the Complainant’s registered
trademark NOKIA and the addition of “global” and “
The Panel concludes that the domain names in dispute are confusingly similar to Complainant’s mark pursuant to the Policy ¶ 4(a)(i).
The Panel wishes to remind the parties that it is first for the Complainant to establish a prima facie case that the Respondent lacks any rights or legitimate interests in the disputed domain names for the burden of proof to shift to the Respondent, see Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Complainant has contended that it is inconceivable that the Respondent has registered the domain names in dispute without prior knowledge of the rights of the Complainant. Any arguments for legitimate interest by the Respondent are not credible. No preparations have been demonstrated to use the domain names in dispute in connection with a bona fide offering of goods or services. The domain name <nokiaglobal.com> has only been used as a click-through site that includes links to sites offering competing products of the Complainant.
The mere assertions of the Complainant of lack of legitimate interest can under certain circumstances fulfill the burden of proof of the Complainant, see e.g. 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 does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
In this case, the Respondent clearly has no obvious connection with the domain names in dispute (apart from having registered it), and the domain name has been (according to the Respondent himself) dormant for a significant period of time (almost 6 years). In those 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.
The Respondent has on the other hand argued
that he intends to use the disputed domain names for providing information for
tourists in English and in Persian about the ancient
The evidence submitted by the Respondent is mainly in Persian. It is not within the procedural obligations of the Panel to have evidence of another other than the Procedural language translated or to purchase evidence (in the form of maps) on behalf of a party to the dispute. On the other hand, it is a consensus view that “A panel may visit the internet site linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name. The panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision. If the panel feels that it requires further information to make a decision in a proceeding then it can issue a panel order to the parties.” (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, at http://www.wipo.int/amc/en/domains/search/overview/index.html#11 and the decisions there cited).
running the submitted extracts through a simple translation program, this Panel
cannot find any content to support the Respondent’s assertion. Instead the
submitted evidence appears to contain report on the agricultural issues, olive
production and information on the city of
Neither of the two domain names in dispute resolves an active website. The passive holding for so many years does not constitute bona fide use of the domain names pursuant to Policy ¶ 4(c)(iii), see Hewlett-Packard Co. & Hewlett-Packard Dev. Co., L.P. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the passive holding of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when the respondent fails to use disputed domain names in any way).
The Panel therefore, having regard to the circumstances mentioned above, finds that the Respondent lacks any rights or legitimate interests to the domain names in dispute
The Complainant contends that the bad faith consists of so called initial interest confusion, i.e. the customers seeking the products of the Complainant will be mislead to the websites of the Respondent instead of the official NOKIA websites. Furthermore, evidence of a scam, emanating from the email address <email@example.com> is at hand which prompted the Registrar to disable the domain names in question.
The Respondent denies taking part in that scam and claims that no email server has been set up for the domain name <nokiaglobal.com>. Any amateur scammer or spammer can manipulate sender addresses. He further asserts that he only wished to protect his idea when registering the domain names in dispute. The Panel does not find that there is any conclusive evidence submitted by the Complainant to support the contention that the scam emanates from the Respondent, rather it is, as the Respondent contends, very easy to manipulate the sender address. The Respondent has not however, other than asserted that the Respondent is not responsible. Whether the Respondent is part of the scam or not, it highlights the risk of initial interest confusion for such domain names as the ones in question.
It is the consensus view of previous Panels that the failure to make active use of the domain names does not in itself constitute bad faith. However, when other circumstances are present in, this may be evidence of bad faith, see e.g. Telstra Corp. Ltd v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000), (“The question that then arises is what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behavior. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.).
The Respondent’s failure to make an active use of the <nokiaglobal.com> and <irannokia.com> domain names is however, according to the Panel, evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii), see Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that the failure to make an active use of a domain name permits an inference of registration and use in bad faith).
In light of the Panel’s findings that there is insufficient evidence to suggest any legitimate interest and the fact that the mark NOKIA is famous worldwide, it is reasonable to expect that the Respondent was aware of the trademarks of the Complainant at the time of the registration. Under these circumstances there is a legal presumption of bad faith, see Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration). The Respondent has not managed to overcome this presumption.
Under these circumstances, the Panel finds that the domain names were registered and are being non-used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nokiaglobal.com> and <irannokia.com> domain names be TRANSFERRED from Respondent to Complainant.
Jonas Gulliksson, Panelist
Dated: August 26, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum