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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nokia Corporation v. Wavesmultimedia (Bila Kalemba)
Case No. D2002-0130
1. The Parties
The Complainant is Nokia Corporation, a corporation organized under the laws of Finland, having its principal place of business in Espoo, Finland and represented by Laytons Solicitors ("Complainant").
The Respondent is Wavesmultimedia (Bila Kalemba), an owner-operator business belonging to Bila Kalemba of Tervuren, Belgium ("Respondent").
2. The Domain Name and Registrar
The domain name at issue <nokiaflasher.com>.
The Registrar is Register.com, 575 8th Avenue - 11th floor, New York, NY 10018, United States of America ("the Registrar").
3. Procedural History
The Complaint was submitted by email with the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on February 8, 2002. The hardcopy under cover of a letter of the same date was received on February 12, 2002 ("the Complaint"). An Acknowledgement of Receipt of Complaint was sent by the WIPO Center to Complainant on February 13, 2002.
On February 14, 2002, a Request for Register Verification was transmitted to the Registrar. On February 21, 2002, the Registrar confirmed by e-mail that the domain name <nokiaflasher.com> is registered with the Registrar and that Respondent is the current registrant of that domain name.
On February 21, 2002, a Notification of Complaint and Commencement of Administrative Proceedings (the "Commencement Notification") was transmitted by email and by courier to Respondent, setting a deadline of March 13, 2002, by which Respondent could make a response to the Complaint.
On March 7, 2002, Complainant requested the WIPO Center to suspend the proceedings for a period of six weeks, until April 18, 2002.
On March 8, 2002, the WIPO Center confirmed to the parties that the administrative proceeding was suspended until April 18, 2002. The WIPO Center also informed the parties that upon the expiry of that date, the proceedings would be deemed automatically recommenced, unless the WIPO Center received an earlier request in writing from Complainant to terminate the proceedings, or an earlier request from either party to recommence the proceedings.
On April 18, 2002, Complainant requested an extension of the period of suspension until May 10, 2002. On April 18, 2002, the WIPO Center confirmed the continuation of the suspension of the proceedings until May 10, 2002.
On May 10, 2002, Complainant once more requested the WIPO Center to extend the suspension until May 24, 2002. On May 10, 2002, the WIPO Center confirmed this extension of the suspension period.
On May 23, 2002, the WIPO Center informed both parties that it would recommence the proceedings after May 24, 2002, and the proceedings were so recommenced.
On June 7, 2002, the WIPO Center sent Respondent a Notification of Respondent Default.
On June 10, 2002, the WIPO Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date by e-mail to the parties, in which Wolter Wefers Bettink was appointed as the Sole Panelist.
4. Factual Background
Complainant is the owner of the trademark NOKIA, which has been registered worldwide, amongst others in the European Union (CTM registration numbers 340836, 871194 and 323386).
Respondent registered the domain name <nokiaflasher.com> on December 30, 2000.
Complainant contacted Respondent when Complainant became aware of Respondent's registration of the domain name <nokiaflasher.com>. Complainant’s representative contacted Respondent by letters of November 1, 2001, and December 12, 2001, requesting the transfer of the domain name <nokiaflasher.com>. In reaction to these letters, Respondent answered Complainant’s representative: "you have to understand that the domain name <nokiaflasher.com> has taken a high commercial value today since its creation and that we would only consider handing over our website domain name in case your customer is ready to buy it from us and pay the price we are asking for it.". Respondent did not transfer the domain name <nokiaflasher.com> to Complainant.
5. Applicable Rules
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to Complainant's trademark, 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.
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of Paragraph 4(a)(iii) above.
Paragraph 4(c) of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondent’s rights to or legitimate interests in the domain name for the purpose of Paragraph 4(a)(ii) above.
6. Parties’ contentions
Complainant states in the Complaint that it owns the trademark NOKIA, registered inter alia in the European Union. Nokia is a world leader in mobile communications. Nokia communications products are sold in 119 countries throughout the world.
The grounds for the Complaint are:
(1) the domain name <nokiaflasher.com> is confusingly similar to Complainant’s trademark NOKIA in accordance with Paragraph 4(a)(i) of the Policy. Given that the mark NOKIA is such a strong mark it is the distinctive feature of the domain name, to which the word "flasher" adds nothing.
(2) Complainant states that Respondent has no rights or legitimate interests in respect of the domain name <nokiaflasher.com> as provided in Paragraph 4(a)(ii) in connection with Paragraph 4(c) of the Policy.
Complainant has not licensed nor otherwise permitted Respondent to use the domain name at issue nor the trademark NOKIA. Respondent has no rights or legitimate interests in respect of the domain name in question because Respondent's business has no connection with the name NOKIA.
(3) Complainant states that the domain name <nokiaflasher.com> was registered and used in bad faith as provided in Paragraph 4(a)(iii) in connection with Paragraph 4(b) of the Policy.
Complainant alleges that Respondent has registered and used the domain name in question solely to attract, for commercial gain, internet users to a website, by creating a likelihood of confusion with Nokia Corporation's registered trademark NOKIA as to the source, sponsorship, affiliation or endorsement of Respondent's website.
Further, Respondent is also using the website to promote telecommunication products and services. This indicates an attempt to divert to Respondent's website, internet users looking for Nokia-endorsed telecommunications products or services.
Respondent's e-mail of December 13, 2002, which requested that Complainant "buy it from us and pay the price we are asking for it", indicates that Respondent's intention was to sell the domain name <nokiaflasher.com> for an amount in excess of its out-of-pocket expenses incurred in registering the domain name.
As Respondent has not submitted a response to the WIPO Center, Complainant's contentions are uncontested.
7. Due process
Where, as in this case, a Respondent does not submit a response and the file does not contain any communication from Respondent to the WIPO Center, the rules of due process require the panel to verify as much as possible that Respondent is aware of the present proceedings. The Panel is satisfied, on the basis of the file documents, that this is the case.
A hard copy of the Complaint was sent by the WIPO Center to the address of Respondent, by courier and by e-mail. During the period that the administrative proceedings were suspended, Respondent has communicated via e-mail with Complainant, which e-mails indicate that Respondent was aware of the present proceedings.
The Panel therefor assumes that Respondent has received these documents but has chosen not to respond.
8. Discussion and findings
Complainant must provide evidence of all three elements of Paragraph 4(a) of the Policy. Since the decision to transfer or cancel a domain name may have serious consequences for the domain name holder, the evidence should be sufficient in all respects to support such a decision. The absence of a response from Respondent, as in this case, does not discharge the Panel from its duty to establish that the evidence is sufficient.
a. Trademark rights
Complainant has provided sufficient evidence of its rights to the trademark NOKIA, well-known worldwide, including the European Union.
b. Identical or confusingly similar
The domain name <nokiaflasher.com> is clearly confusingly similar to Complainant's trademark NOKIA. The domain name incorporates the well-known trademark NOKIA with the generic word "flasher" and the suffix ".com" (which indicates that the domain name is registered in the .com gTLD). It is clear that in this combination the well-known and distinctive trademark NOKIA stands out so that the public may think the domain name is somehow connected to the NOKIA trademark (see also Nokia Corporation v. Nokia Ringtones & Logos Hotline <worldnokia.com>, WIPO Case No. D2001-1101 and the cases mentioned in that decision).
In view of the above it is clear that the domain name and the trademark NOKIA are confusingly similar. The ability of the word "flasher" to distinguish the domain name from Complainant's trademark is limited. The panel finds that Respondent does not create a new or different mark in adding the word "flasher" and that this addition does not alter the likelihood of confusion with Complainant's trademark.
c. Rights or legitimate interests
Under Paragraph 4(c) of the Policy, Respondent may demonstrate that it has a right or legitimate interest in respect of a domain name for the purpose of Paragraph 4(a)(ii), inter alia, by providing evidence of any of the following circumstances:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The domain name <nokiaflasher.com> has been used by Respondent to promote telecommunications products and services.
As was held by the Panel in, inter alia, Motorola Inc. v NewGate Internet Inc. WIPO Case No. D2000-0079, Stanley Works and Stanley Logistics Inc. v Camp Creek Co., WIPO Case No. D2000-0113, Mikimoto America Co. v Asanti Jewellers Ltd, Case No. AF-0126, R.T. Quaife Engineering Ltd v Luton, WIPO Case No. D2000-1201, a licensee or a dealer, agent or distributor of products of the trademark owner or of compatible products does not per se have a right to a domain name which includes that trademark. It follows that Respondent in this case would only have a right to the domain name <nokiaflasher.com> if Complainant had specifically granted that right. Complainant has uncontestedly stated that he has not licensed or otherwise permitted Respondent to use the trademark NOKIA or to register the domain name at issue. The mere fact that Respondent promotes telecommunications products at his website is not sufficient for Respondent to claim a legitimate interest.
In light of the foregoing, the Panel finds that Respondent has no rights or legitimate interests in the domain name.
d. Bad faith
Complainant is relying on Paragraphs 4(b)(i) and (iv) of the Policy, which provide that sufficient evidence of bad faith may consist of:
"(i) Circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or"
(iv) By using the domain name, you have intentionally intended to attract for commercial gain, internet users to your website or other on-line locations, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The Panel finds that Complainant has provided sufficient evidence in this regard.
In his e-mail of December 13, 2002, Respondent offered Complainant the domain name at issue for sale: "you have to understand that the domain name <nokiaflasher.com> has taken a high commercial value today since its creation…buy it from us and pay the price we are asking for it." Although no specific price was mentioned the reference to "high commercial value" of the domain name clearly shows Respondent’s intent to sell the domain name at issue in excess of the normal out-of-pocket expenses directly related to the registration of the domain name. This is in itself sufficient evidence of Respondent’s bad faith.
For completeness, other circumstances underline Respondent’s bad faith. It is clear that Respondent knew the trademark NOKIA when registering the domain name <nokiaflasher.com>. Respondent has deliberately included the well-known trademark NOKIA in the domain name <nokiaflasher.com> in order to attract business. Furthermore, Respondent, by registering and using the domain name <nokiaflasher.com> has created the (incorrect) impression of association with the Nokia Corporation, thereby creating a likelihood of confusion with their trademark. This shows that Respondent has intentionally used the goodwill of Complainant's trademark to create traffic to its website operating under the domain name <nokiaflasher.com>. See also Nokia Corporation v. Nokia Ringtones <worldnokia.com>, WIPO Case No. D2001-1101.
The Panel therefore concludes that there is sufficient evidence that Respondent's registration and use of the domain name <nokiaflasher.com> is in bad faith.
On the basis of the foregoing the Panel decides that Complainant has provided the required evidence for the requested order for the transfer of the domain name from Respondent to Complainant. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel orders the registration of the domain name <nokiaflasher.com> be transferred to Complainant.
Wolter Wefers Bettink
Dated: June 24, 2002