Nokia Corporation v. Robert Southey
Claim Number: FA0607000747987
Complainant is Nokia Corporation (“Complainant”), represented by Jane Mutimear, of Bird & Bird, 90 Fetter Lane, London EC4A 1JP, United Kingdom. Respondent is Robert Southey (“Respondent”), 21 Chislehurst Road, Bromley, Kent BR1 2NN, GB.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <my-nokia.com>, registered with Computer Services Langenbach Gmbh d/b/a Joker.com.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 13, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 14, 2006.
On July 13, 2006, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed by e-mail to the National Arbitration Forum that the <my-nokia.com> domain name is registered with Computer Services Langenbach Gmbh d/b/a Joker.com and that Respondent is the current registrant of the name. Computer Services Langenbach Gmbh d/b/a Joker.com has verified that Respondent is bound by the Computer Services Langenbach Gmbh d/b/a Joker.com 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 17, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 7, 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@my-nokia.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, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <my-nokia.com> domain name is confusingly similar to Complainant’s NOKIA mark.
2. Respondent does not have any rights or legitimate interests in the <my-nokia.com> domain name.
3. Respondent registered and used the <my-nokia.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nokia Corporation, is a worldwide provider of telecommunications goods and services, particularly mobile phones. Complainant holds multiple registrations for its NOKIA mark, including registration with the United Kingdom Patent Office (“UKPO” (Reg. No. 1,307,204 issued April 14, 1987) and registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,570,492 issued December 12, 1989). Complainant utilizes the NOKIA mark in connection with offering a wide variety of telecommunications goods and services, particularly mobile phones and the services and accessories associated with mobile phones, including downloadable accessories such as ringtones, games and screensaver backgrounds. Complainant uses the NOKIA mark in its registered domain name, <nokia.com>, which Complainant uses to offer its telecommunications goods and services to Internet consumers.
Respondent registered the <my-nokia.com> domain name on March 8, 2002. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website. Respondent’s website copies the signature blue coloring used by Complainant in its marketing and advertising generally, and on its genuine website specifically. Respondent’s website features downloadable mobile phone services for sale, including music, games, photographs and screensaver backgrounds. Many of the available downloads contain adult or pornographic material. Respondent’s website also includes links to third-party websites of Complainant’s competitors. In a phone conversation with Complainant, Respondent expressed a willing ness to transfer the disputed domain name to Complainant if Complainant could provide sufficient financial compensation. Respondent failed to follow-up with Complainant with figures reflecting Respondent’s costs and investments in the domain name and an asking price.
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’s registrations of the NOKIA mark with both the
UKPO and the USPTO predate Respondent’s registration of the <my-nokia.com>
domain name. The Panel finds that
Complainant’s registration of the mark with the appropriate governmental
authorities creates rights in the mark sufficient to meet the requirements 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 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 <my-nokia.com>
domain name is confusingly similar to Complainant’s NOKIA mark. The disputed domain name includes
Complainant’s NOKIA mark in its entirety, adding the term “my” and a
hyphen. The term “my” is generic, and
could easily refer to a website intended for Complainant’s customers use and
does not distinguish the disputed domain name from Complainant’s mark. The addition of a hyphen does not change the
impression of confusing similarity between the disputed domain name and
Complainant’s mark. The Panel finds
that the <my-nokia.com> domain name is confusingly similar to
Complainant’s NOKIA mark pursuant to Policy ¶ 4(a)(i). See ESPN, Inc. v.
MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (finding that
the “domain name MYSPORTSCENTER.COM registered by Respondent is confusingly
similar to Complainant’s SportsCenter mark.”); see
also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum
July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is
irrelevant in the determination of confusing similarity pursuant to Policy ¶
4(a)(i).”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name. Under the Policy, Complainant’s assertion creates a prima facie case and shifts the burden to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Respondent has the opportunity to file a Response to present the Panel with evidence or arguments to demonstrate that Respondent does have rights or legitimate interest in the disputed domain name, and Respondent’s failure to provide a Response may be viewed by the Panel as evidence that Respondent lacks those rights or legitimate interests. 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 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). The Panel will evaluate the available evidence to determine whether Respondent has rights or legitimate interests in the disputed domain name as contemplated by Policy ¶ 4(c).
Respondent is using the <my-nokia.com> domain name to attract Internet users to Respondent’s website. A portion of Respondent’s website is commercial and sells downloadable mobile phone accessories, many of which are pornographic or include other adult content. Respondent’s website also features links to third-party websites of Complainant’s telecommunications competitors. Further, Respondent has attempted to sell the disputed domain name to Complainant, which suggests that Respondent lacks rights or legitimate interests in the disputed domain name. The Panel finds that such use is not a bona fide offering of goods or service pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Am. Online, Inc. v. Boch, FA 209902 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent uses <aol-x.com> in connection with pornographic material, which is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶¶ 4(c)(i) [and] (iii).”).
Further, there is no available evidence that Respondent is
commonly known by the <my-nokia.com> domain name. Respondent’s WHOIS information identifies
Respondent as “Robert Southey.”
Complainant asserts that Respondent is not affiliated with or sponsored
by Complainant and does not have permission from Complainant to use
Complainant’s mark in a domain name.
The Panel finds that Respondent is not commonly known by the disputed
domain name and thus lacks rights or legitimate interests pursuant to Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of
Complainant’s mark there must be strong evidence that Respondent is commonly
known by the disputed domain name in order to find that Respondent has rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). However, there is no evidence
on record, and Respondent has not come forward with any proof to establish that
it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has indicated a willingness to transfer the
disputed domain name to Complainant in exchange for financial
remuneration. While Respondent failed
to give Complainant an exact price for the transfer of the domain name,
Respondent’s willingness to sell the disputed domain name is evident. The Panel finds that Respondent’s attempt to
sell the disputed domain name to Complainant is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat. Arb. Forum
Sept. 30, 2003) (“Respondent's general offer of the disputed domain name
registration for sale establishes that the domain name was registered in bad
faith under Policy ¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v. “Infa
dot Net” Web Serv., FA 95685
(Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain
name, even if no certain price is demanded, are evidence of bad faith.”).
Respondent’s <my-nokia.com> domain name is
confusingly similar to Complainant’s NOKIA mark potentially confusing Internet
users seeking Complainaint’s goods and services on the Internet. Internet users could easily be redirect to
Respondent’s website through the confusingly similar domain name by doing an
Internet search, or attempting to type Complainant’s mark into a web
browser. Once redirected to
Respondent’s website, Internet users may mistakenly believe that Respondent’s
website is affiliated with or sponsored by Complainant. Respondent is profiting from this Confusion
through the sale of mobile phone goods and services in competition with
Complainant, and presumably from pay-per-click referral fees generated by the
third party links also on Respondent’s website. The Panel finds that Respondent use of the confusingly similar <my-nokia.com>
domain name to attract Internet users to Respondent’s website for
Respondent’s financial gain is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent
used <land-cruiser.com> to advertise its business, which sold goods in
competition with Complainant. This establishes bad faith as defined in Policy ¶
4(b)(iv).”); see also Associated Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”).
Respondent’s <my-nokia.com> domain name
resolves to Respondent’s website, which features downloadable accessories for
mobile phones in direct competition with Complainant. Respondent’s website also hosts links to commercial third-party
websites offering telecommunications goods and services in direct competition
with Complainant. Thus, when Internet
users are redirected to Respondent’s website through Respondent’s confusingly
similar domain name, they are confronted with competing goods and links to
other competing websites making it convenient for Internet users to do business
with Respondent and Complainant’s competitors rather than with
Complainant. The Panel finds that such
use disrupts Complainant’s business pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business); see also
Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)).
While Policy ¶¶
4(b)(i)-(iv) outline particular circumstances that the Panel may find to be
evidence of bad faith registration and use, those circumstances are not all
inclusive and the Panel may use its discretion to find other circumstances
evidencing bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Respondent is using the <my-nokia.com>
domain name to redirect Internet users to Respondent’s website where many
of the mobile phone accessories offered are pornographic or include adult
content. The Panel finds that
Respondent’s use of a domain name including Complainant’s mark to operate a
website including adult content and pornography damages Complainant’s mark and
is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See CBS Broad., Inc. v. LA-Twilight-Zone,
D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other
circumstances can be evidence that a domain name was registered and is being
used in bad faith”); see also Microsoft
Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the
respondent’s use of the complainant’s mark to post pornographic photographs and
to publicize hyperlinks to additional pornographic websites evidenced bad faith
use and registration of the domain name); see also Microsoft Corp. v. Horner,
D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the
complainant’s mark to post pornographic photographs and to publicize hyperlinks
to additional pornographic websites evidenced bad faith use and registration of
the domain name).
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 <my-nokia.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 23, 2006
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