Nokia Corporation v. eWebHosting.org
Claim Number: FA0612000872411
Complainant is Nokia Corporation (“Complainant”), represented by Jane
Mutimear of Bird & Bird, 90 Fetter Lane, London
EC4A 1JP, United Kingdom.
Respondent is eWebHosting.org (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <nokiaireland.com>, registered with Gkg.Net, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically December 18, 2006; the National Arbitration Forum received a hard copy of the Complaint December 20, 2006.
On December 18, 2006, Gkg.Net, Inc. confirmed by e-mail to the National Arbitration Forum that the <nokiaireland.com> domain name is registered with Gkg.Net, Inc. and that Respondent is the current registrant of the name. Gkg.Net, Inc. verified that Respondent is bound by the Gkg.Net, Inc. registration agreement and thereby has 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 27, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 16, 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@nokiaireland.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 19, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson 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. The domain name that Respondent registered, <nokiaireland.com>, is confusingly similar to Complainant’s NOKIA mark.
2. Respondent has no rights to or legitimate interests in the <nokiaireland.com> domain name.
3. Respondent registered and used the <nokiaireland.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nokia Corporation, is a recognized leader in the telecommunications industry. In connection with the provision of these services, Complainant registered a number of trade and service marks with the United States Patent and Trademark Office (“USPTO”), including the NOKIA mark (Reg. No. 1,570,492 issued December 12, 1989).
Respondent registered the <nokiaireland.com> domain name February 7, 2006. The disputed domain name resolves to Respondent’s website, which features products that compete with those of Complainant.
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 will draw such inferences as the Panel 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 Complainant to 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 asserts right in the NOKIA mark through
registration with the USPTO. The Panel
finds that Complainant’s timely registration and extensive use of the NOKIA
mark establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). 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 U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat.
Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination
that a mark [may be registered], by so issuing a registration, as indeed was
the case here, an ICANN panel is not empowered to nor should it disturb that
determination.”).
Complainant contends that
Respondent’s <nokiaireland.com>
domain name is confusingly similar to Complainant’s NOKIA mark. Respondent’s disputed domain name contains
Complainant’s mark in its entirety and adds the geographic identifier “
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name. In instances where Complainant has made a prima facie case in support of its allegations, the burden shifts to Respondent to set forth substantial evidence establishing rights and legitimate interests in the disputed domain name in accordance with Policy ¶ 4(a)(ii). See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with respondent to demonstrate that it has rights or legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once complainant asserts that respondent has no rights or legitimate interests with respect to the domain, the burden shifts to respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent uses the disputed domain name to resolve to its own website, which features products that compete with those of Complainant, presumably for the financial benefit of Respondent. The Panel finds that such use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and not 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 Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Further, Complainant alleges that Respondent is not commonly known by the <nokiaireland.com> domain name and that Complainant has not authorized respondent to register domain names that feature Complainant’s NOKIA mark in any way. There being no evidence to the contrary, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name in accordance with Policy ¶ 4(c)(ii). See 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); 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 Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleges that Respondent acted in bad faith in registering and using a domain name that contains Complainant’s protected mark. Respondent’s disputed domain name redirects Internet users to Respondent’s own website, which contains products that compete with those of Complainant. The Panel finds that such use constitutes a disruption of Complainant’s business pursuant to Policy ¶ 4(b)(iii). See 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)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Respondent also is using the disputed domain name to confuse Internet users, who access the site expecting to see content affiliated with and produced by Complainant. Respondent’s site leads the unsuspecting Internet user to believe that the resultant website is affiliated with and produced by Complainant. The Panel finds that such use supports findings of bad faith under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
The Panel finds that Complainant satisfied 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 <nokiaireland.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 2, 2007.
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