Corporation v. Manny Vivar c/o HostDime
Claim Number: FA0907001273356
Complainant is Nokia
Corporation (“Complainant”), represented by Britton Payne, of Foley & Lardner LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nokiashoponline.net>, registered with Enom, Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 13, 2009.
On July 13, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <nokiashoponline.net> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 5, 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 by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 11, 2009, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a global manufacturer of telecommunications products and accessories, and has used its NOKIA mark since at least as early as 1968.
Complainant has registered its NOKIA mark with various governmental trademark authorities worldwide, including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,570,492, issued December 12, 1989).
Respondent is not authorized to use Complainant’s NOKIA trademark.
Respondent registered the <nokiashoponline.net> domain name on January 31, 2009.
The disputed domain name resolves to a website that purports to offer special promotions for Complainant’s products and portrays itself to be an official website of Complainant.
Respondent’s <nokiashoponline.net> domain name is confusingly similar to Complainant’s NOKIA mark.
Respondent does not have any rights or legitimate interests in the domain name <nokiashoponline.net>.
Respondent registered and uses the <nokiashoponline.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(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.
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.
Complainant’s registrations of the NOKIA mark with various governmental trademark authorities worldwide, including the USPTO, satisfies Complainant’s burden of demonstrating rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that a complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
The disputed <nokiashoponline.net> domain name
contains Complainant’s entire NOKIA trademark, while adding the generic phrase
“shop online” and the generic top-level domain “.net.” Because every domain requires a top-level
domain, such an addition is irrelevant to our analysis under the Policy. See Jerry Damson, Inc. v.
The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.
Similarly, the addition to the mark of the generic phrase “shop online” in forming the contested domain name merely suggests a commercial purpose and does not overcome or supersede the dominant NOKIA element of the domain. We therefore conclude that the disputed domain name is confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i). See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with a complainant’s registered “llbean” mark does not circumvent that complainant’s rights in the mark nor avoid the confusing similarity provisions of the ICANN Policy).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights to and legitimate interests in the disputed domain name. Complainant must set out a sufficient prima facie case supporting its allegations, whereupon Respondent acquires the burden of demonstrating its rights or legitimate interests in the contested domain. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, as here, the assertion by a complainant that a respondent has no right to or legitimate interest in a disputed domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
We conclude that Complainant has met its burden of proof under Policy ¶ 4(a)(ii), so that Respondent must demonstrate its rights to or legitimate interests in the contested domain. Respondent’s failure to offer any proof in its behalf permits us to conclude that it has no such rights or interests. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).
Notwithstanding this state of the record, we will examine the facts of record to determine if there is any basis for concluding that Respondent has any rights to or interests in the subject domain name sufficient to satisfy the requirements of the Policy.
We begin by noting that there is no evidence in the record,
including the pertinent WHOIS information, which would permit us to conclude
that Respondent is commonly known by the disputed domain name. The WHOIS information lists Respondent as “Manny
Vivar c/o HostDime
We also observe that there is no dispute as to Complainant’s allegation to the effect that the contested domain name resolves to a website that portrays itself as being an official website of Complainant, offering “special promotions” for Complainant’s products. It is thus apparent that Respondent has targeted Complainant’s business for commercial purposes. In the circumstances presented, it is quite likely that Respondent is obtains advertising fees from this behavior. Respondent’s use of a website that mimics Complainant as described implies that Respondent is passing itself off as Complainant to unwary Internet users. Respondent has thus failed to create 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
See also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that a respondent there attempted to pass itself off as a complainant online, which was a blatant unauthorized use of that complainant’s mark and evidence that that respondent had no rights to or legitimate interests in a disputed domain name).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
We have already determined that Respondent has very likely sought commercial gain from the use of its resolving website in the manner alleged in the Complaint. Similarly we are satisfied that Respondent has attempted to pass itself off as Complainant by its use of Complainant’s mark. This evidence demonstrates that Respondent has created a likelihood of confusion as to Complainant’s possible affiliation with the disputed domain name and resolving website for Respondent’s commercial gain. Therefore, Respondent has engaged in bad faith registration and use of the contested domain name under Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where a respondent used a disputed domain name to sell a complainant’s products without permission from that complainant, and also misled Internet users by implying that that respondent was affiliated with that complainant); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith registration and use of a domain name where the domain name in question was obviously connected with a complainant’s well-known marks, thus creating a likelihood of confusion for a respondent’s illicit commercial gain).
In addition, it appears from the prevailing circumstances that Respondent registered the <nokiashoponline.net> domain name 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).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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 <nokiashoponline.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 25, 2009
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