Nokia Corporation v. credoNIC.com / Domain for Sale c/o Domain Administrator
Claim Number: FA0602000651873
Complainant is Nokia Corporation (“Complainant”), represented by J. Scott Evans, of Adams Evans P.A., 2180 Two Wachovia Center, 301 S. Tyron Street, Charlotte, NC 28282. Respondent is credoNIC.com / Domain for Sale c/o Domain Administrator (“Respondent”), PO Box 1991, Hallandale, FL 33008.
The domain name at issue is <allnokiaringtones.com>, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 28, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 6, 2006.
On March 1, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <allnokiaringtones.com> 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 March 10, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 30, 2006 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@allnokiaringtones.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 5, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
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 <allnokiaringtones.com> domain name is confusingly similar to Complainant’s NOKIA mark.
2. Respondent does not have any rights or legitimate interests in the <allnokiaringtones.com> domain name.
3. Respondent registered and used the <allnokiaringtones.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nokia Corporation, has continuously and extensively used the NOKIA mark in connection with the sale of mobile phones, mobile phone accessories, and other telecommunication devices and services since 1987. According to an August 2005 survey of the Top 100 Brands by Interbrand, a data service provider, Complainant’s NOKIA mark is the sixth most valuable brand in the world. Complainant operates a website at the <nokia.com> (registered July 11, 1991) and <nokiausa.com> (registered January 25, 1999) domain names.
Complainant has registered the NOKIA mark in 190 countries and holds several trademark registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,690,201 issued February 25, 2003; Reg. No. 2,676,153 issued January 21, 2003; Reg. No. 2,667,758 issued December 31, 2002; Reg. No. 2,630,022 issued October 8, 2002; Reg. No. 1,570,492 issued December 12, 1989).
Respondent registered the <allnokiaringtones.com> domain name on November 2, 2005. Respondent’s domain name resolves to a pornographic website containing a warning about the “sexually-oriented adult content” on the website. At the top of the page in small red lettering is the link “This Domain Is For Sale! Limited Time Offer $250.” The link resolves to the website of Respondent, a company that sells and transfers domain names.
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.
Complainant has established rights in the NOKIA mark through
registration of the mark with the USPTO.
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.”); see also 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.”).
Respondent’s <allnokiaringtones.com>
domain name is confusingly similar to Complainant’s
NOKIA mark pursuant to Policy ¶ 4(a)(i), because it wholly incorporates
Complainant’s mark and merely adds generic terms to the beginning and end of
the mark. Panels have held that the
addition of generic terms to a complainant’s mark in a domain name does not
negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Arthur Guinness Son
& Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001)
(finding confusing similarity where the domain name in dispute contains the
identical mark of the complainant combined with a generic word or term); see
also Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000)
(finding the domain name <casinoyahoo.com> is confusingly similar to the
complainant’s mark). Therefore, Respondent’s domain name is confusingly similar
to Complainant’s NOKIA mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and
legitimate interests in the <allnokiaringtones.com> domain
name. Complainant must first make a prima
facie case in support of its allegations, and the burden then shifts to Respondent
to show it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s
Submission constitutes a prima facie case under the Policy, the burden
effectively shifts to Respondent. 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).”); see
also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(holding that once the complainant asserts that the respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to the
respondent to provide “concrete evidence that it has rights to or legitimate
interests in the domain name at issue”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <allnokiaringtones.com>
domain name. See Geocities v. Geocities.com, D2000-0326
(WIPO June 19, 2000) (finding that the respondent has no rights or legitimate
interests in the domain name because the respondent never submitted a response
or provided the panel with evidence to suggest otherwise); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name). However, the Panel will now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
There is no evidence in the record that Respondent is
commonly known by the <allnokiaringtones.com> domain name. Respondent has registered the domain name
under the name “credoNIC.com / Domain for Sale” and links the domain name to
its own website, and Complainant has not authorized or licensed Respondent to
register a domain name incorporating its NOKIA mark. Consequently, Respondent has not established rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Great S. Wood Preserving, Inc. v.
TFA Assocs., FA 95169 (Nat. Arb.
Forum Aug. 5, 2000) (finding that the respondent was not commonly known by the
domain name <greatsouthernwood.com> where the respondent linked the
domain name to <bestoftheweb.com>); see also Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark).
Moreover, Respondent is using the <allnokiaringtones.com> domain name, which includes Complainant’s NOKIA mark, in order to operate a pornographic website which also displays links to the website of a domain name reseller. In Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), the panel found that respondent’s diversionary use of the <isleworthcountryclub.com> website to misdirect Internet users seeking the complainant’s ISLEWORTH mark to adult-oriented websites did not constitute 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). Because Respondent is also diverting Internet users to a website displaying adult-oriented content, Respondent’s use of the disputed domain name does not represent a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to a pornographic website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <allnokiaringtones.com> domain
name, which includes Complainant’s mark, resolves to a website displaying the
link “This Domain Is For Sale! Limited Time Offer $250.” By clicking on the link, Internet users are
redirected to the website of Respondent, a company that sells and transfers
domain names. In Diners Club Int’l
Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb.
Forum June 23, 2003), the panel found that when the domain name itself
indicates that the domain name is for sale and the sole value of the domain
name is “dictated by its relation” to the complainant’s registered mark, it can
be inferred that the respondent registered and used the domain name in bad
faith pursuant to Policy ¶ 4(b)(i).
Hence, by displaying a link on its website noting that the <allnokiaringtones.com>
domain name is for sale for $250 and failing to respond, Respondent has
registered and used the domain name in bad faith under Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where the respondent offered domain names for sale).
Respondent has registered and is using the <allnokiaringtones.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because the
disputed domain name includes Complainant’s mark and resolves to a pornographic
website. The Panel infers that
Respondent receives click-through fees for each consumer it diverts to this
website. Therefore, Respondent is taking
advantage of the confusing similarity between Complainant’s NOKIA mark and the
domain name and profiting from the goodwill associated with the mark. Respondent’s diversionary use of the
disputed domain name for its own commercial gain provides evidence of bad faith
registration and use under Policy ¶ 4(b)(iv).
See Ty, Inc. v. O.Z. Names,
D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking
the domain names in question to graphic, adult-oriented websites is evidence of
bad faith); see also Nat’l Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc –
BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (“[I]t is now well
known that pornographers rely on misleading domain names to attract users by
confusion, in order to generate revenue from click-through advertising,
mouse-trapping, and other pernicious online marketing techniques.”).
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 <allnokiaringtones.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 18, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum