Nokia Corporation v. Closeweb inc. c/o Steven Geldof
Claim Number: FA0612000868818
Complainant is Nokia Corporation (“Complainant”), represented by J.
Scott Evans, of Adams Evans P.A., 2180 Two Wachovia,
The domain name at issue is <erosnokia.com>, registered with eNom.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 13, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 14, 2006.
On December 14, 2006, eNom confirmed by e-mail to the National Arbitration Forum that the <erosnokia.com> domain name is registered with eNom and that Respondent is the current registrant of the name. eNom has verified that Respondent is bound by the eNom 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 December 19, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 8, 2007 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@erosnokia.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 12, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <erosnokia.com> domain name is confusingly similar to Complainant’s NOKIA mark.
2. Respondent does not have any rights or legitimate interests in the <erosnokia.com> domain name.
3. Respondent registered and used the <erosnokia.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nokia Corporation (“Nokia”),
has used the NOKIA mark in connection with the sale of mobile phones, mobile
phone accessories, and related telecommunication services since as early as
1987. Nokia currently owns five
registrations with the United States Patent and Trademark Office (“USPTO”)
consisting solely of the term “Nokia,” the first of which was registered in
1989 (Reg. No. 1,570,492). Nokia also
owns registrations for the NOKIA mark in 190 countries, including
Respondent’s <erosnokia.com> domain name, which it registered on July 28, 2006, resolves to a web site that appears to offer adult-orientated telephone services.
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 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 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.”).
Respondent’s mere addition of the generic word “eros” (defined as “physical love” or “sexual desire;” possibly a reference to the Greek god of love) to Complainant’s entire NOKIA mark is insufficient for purposes of avoiding a finding of confusing similarity under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also 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).
In light of the foregoing analysis, the Panel finds that Complainant has satisfied Policy 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <erosnokia.com> domain name. Provided Complainant makes a prima facie case under Policy ¶ 4(a)(ii), Respondent then bears the burden of rebutting this presumption. See 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”). Thus, the Panel finds that Complainant’s assertion that Respondent lacks rights or legitimate interests in the disputed domain name constitutes a prima facie case pursuant to the Policy.
Respondent’s failure to answer the Complaint raises a presumption
that Respondent has no rights or legitimate interests in the disputed domain
names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's
failure to respond, it is presumed that Respondent lacks all rights and
legitimate interests in the disputed domain name.”). However, despite the presumptive effect of
Respondent’s inaction, the Panel chooses to analyze the relevant factors under
Policy ¶ 4(c).
In connection with registering the
disputed <erosnokia.com> domain name, Respondent listed “Closeweb
inc. c/o Steven Geldof” as the registrant.
In doing so, Respondent made no attempt whatsoever to establish that it
is in any way connected to Complainant’s NOKIA mark. Similarly, Respondent’s actions make it
difficult to assert that it is commonly known by the disputed <erosnokia.com>
domain name. See
Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat.
Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”);
see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec.
22, 2003) (“Respondent has registered the domain name under the name
‘Ilyoup Paik a/k/a David Sanders.’ Given
the WHOIS domain name registration information, Respondent is not commonly
known by the [<awvacations.com>] domain name.”) Indeed, given the well-established nature of
Complainant’s NOKIA mark, Respondent must put forth strong evidence to prevail
on this argument. See
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).”)
This has simply not been done here.
As such, Respondent has no rights or legitimate interests under Policy ¶
4(c)(ii).
In addition to Respondent’s failure to establish that it is commonly known by the <erosnokia.com> domain name, Respondent has failed to establish rights or legitimate interests in the disputed <erosnokia.com> domain name via a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legimate noncommercial or fair use under Policy ¶ 4(c)(iii). The fact that Respondent wholly incorporated Complainant’s NOKIA mark in its <erosnokia.com> domain name makes any such arguments difficult to maintain. See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use). Indeed, Respondent’s <erosnokia.com> domain name does nothing more than resolve to a website that appears to offer adult-orientated phone services. Without any evidence to the contrary, it can be reasonably inferred that Respondent used a confusingly similar version of Complainant’s NOKIA mark purely for commercial gain by misleadingly diverting internet users to its unrelated adult website. Such acts are wholly antithetical to an assertion of rights or legitimate interests under Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See 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).”); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”).
In light of the foregoing
analysis, the Panel finds that Respondent has failed to show any rights or
legitimate interests in the disputed domain name under Policy ¶ 4(c). As such, Complainant has satisfied policy ¶
4(a)(ii).
Respondent’s use of Complainant’s entire NOKIA mark in its <erosnokia.com> domain name is, in and of itself, indicative of bad faith. Indeed, some Panels have so held. See, e.g., Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). The fact that Respondent’s domain name resolves to a site offering adult-oriented content furthers a finding of bad faith. The implicit affiliation or sponsorship between Complainant’s NOKIA products and services and Respondent’s adult-orientated phone services that inevitably arises via Respondent’s incorporation of Complainant’s NOKIA mark in its <erosnokia.com> domain name is likewise indicative of Respondent’s bad faith. Such affiliation serves to tarnish Complainant’s worldwide goodwill and longstanding reputation and is contrary to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).
Taking into account all of the facts and circumstances presented by the record, the Panel finds that Complainant has shown that Respondent’s conduct falls within Policy ¶ 4(b) and thus has satisfied the requirements of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <erosnokia.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 26, 2007
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