(together “the Nokia Word Trade Marks”)

(together “the Nokia Device Trade Marks”)

(together “the Nokia CP Trade Marks”)

The Complainant and its authorized licensees use the Nokia Word Trade Marks, the Nokia Device Trade Marks and the Nokia CP Trade Marks (together “the Nokia Trade Marks”) in relation to the supply of goods and services, including the supply of mobile telephones.

The Complainant has a website at “www.forum.nokia.com” which contains a forum for developers using technologies developed by the Complainant.

The Complainant’s legal representatives first wrote to the Respondent regarding the registration and use of the disputed domain name by the Respondent on July 22, 2004, and re-stated the complaint in an email to the Respondent on August 11, 2004.

When the Panel viewed the website at the disputed domain name in November 2004, it was still operational and displayed, at the top of the first page of the website, the words:

“NOKIA
FORUM.COM
communication center”

5. Parties’ Contentions

A. Complainant

The Complainant relies on the factual background set out in section 4 (“Factual Background”) above.

The Complainant also contends that the disputed domain name is confusingly similar to the Nokia Word Trade Marks as:

(a) the disputed domain name consists of the words “Nokia” and “forum”, such that “forum” is the only other element in the disputed domain name other than the word that is protected by the Nokia Word Trade Marks, and “forum” is commonly used in domain names and on the Internet generally, signifying a website on which Internet users are able to communicate with each other in respect of various topics of common interest;

(b) the Complainant has a website at the URL “www.forum.nokia.com”;

(c) on October 5, 2004, when the disputed domain name was keyed into the address bar of an internet browser and from at least July 2004, the first screen of the website associated with that domain name displayed a banner at the top left hand side of the web-page within a device mark containing the text:

“NOKIA
FORUM.COM
Communication Center”

(d) in the banner detailed in the paragraph above the word “Nokia” is separate and is in a different font and colour to the rest of the text in the banner, giving it specific emphasis and indicating an association with the Complainant.

The Complainant further contends that the likely confusion on the part of Internet users as to whether there is an association between the website at the disputed domain name and the Complainant is reinforced by the following:

(a) the font and colour of the word “Nokia” in the banner referred to in paragraph (c) above replicates the Complainant’s business logo, as protected by the Nokia Device Trade Marks; and

(b) on October 5, 2004, and from at least July 2004, the front page of the website at the disputed domain name has contained a heading “NOKIA FORUM ONLY” under which there is the subheading “NOKIA Connecting People”. This subheading makes use of the Complainant’s business slogan, which is well known worldwide and is protected by the Nokia CP Trade Marks.

The Complainant notes also that the disputed domain name appears to have previously been registered by the Complainant, prior to July 22, 2001, and was used to re-direct Internet user traffic to the Complainant’s website home page, “www.nokia.com”. The Complainant contends that it was by way of oversight that the Complainant’s registration of the disputed domain name was not renewed.

According to the Complainant, the Respondent has no right or legitimate interest in the disputed domain name as:

(a) the Complainant has not consented to the use of the Nokia Trade Marks by the Respondent;

(b) the website at the disputed domain name is not specifically aimed at the discussion of, and other communications about, the goods and services of the Complainant, but rather those of all providers of goods and services relating to mobile telephones. For this reason the Complainant contends that the services provided via the website at the disputed domain name do not correspond to the meaning conveyed by the wording in the disputed domain name;

(c) the advertising banners at the bottom of each page of the website at the disputed domain name indicate that it is not being used for legitimate non-commercial purposes; and

(d) the Respondent’s use of the website at the disputed domain name cannot amount to fair use because of the deliberate attempts by the Respondent to associate the website with the Complainant as described in the Complainant’s claim.

The Complainant further asserts the following in support of the claim that the Respondent has registered and is using the disputed domain name in bad faith:

(a) in the Complainant’s view, the Respondent is aware of the Complainant’s rights in the Nokia Trade Marks, and must have been so aware prior to registration of the disputed domain name. Accordingly, the Respondent applied to register the disputed domain name contrary to the representation and warranty under paragraph 2(b) of the Policy which provides “to your knowledge the registration of the domain name will not infringe upon or otherwise violate the rights of a third party”;

(b) the Respondent’s activities are likely to cause detriment to the goodwill, reputation and distinctiveness of the Nokia Trade Marks; and

(c) the Respondent appears to have registered the disputed domain name primarily for the purpose of intentionally attempting to attract, for commercial gain, Internet users to the website at the disputed domain name by misleading them into believing that the website (or service offered through the website) was sponsored, affiliated, or endorsed by the Complainant (being the proprietor of the Nokia Trade Marks).

In addition, the Complainant contends that the Respondent has sought commercial gain as a result of use of the disputed domain name, including by offering to sell the disputed domain name to the Complainant for $10,000, a sum in excess of out-of-pocket costs.

Accordingly, the Complainant claims that the Respondent has no right or legitimate interest in the disputed domain name and has registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

In accordance with Rule 5(e) of the Rules, this dispute shall be decided on the basis of the Complaint alone.

6. Discussion and Findings

In order to qualify for a remedy, the Complainant must make out the three elements set out in paragraph 4(a) of the Policy, namely:

(a) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(b) the Respondent has no rights or legitimate interests in respect of the domain name; and

(c) the domain name has been registered and is being used in bad faith.

The onus of proving these elements is on the Complainant.

A. Identical or Confusingly Similar

There are two elements that a Complainant must establish under paragraph 4(a)(i) of the Policy – that the Complainant has rights in a trade mark or a service mark, and that the disputed domain name is identical or confusingly similar to the mark.

The Complainant has a number of registered trade marks (for example, the Nokia Trade Marks described in section 4 (“Factual Background”) above) and these are all registered in the name of the Complainant.

The Panel finds that the Complainant, as the registered proprietor of the Nokia Trade Marks, has established valid rights in a mark sufficient for the purposes of paragraph 4(a)(i). The Panel does note however that the registration dates provided by the Complainant for some of the Nokia Trade Marks in the complaint do not correspond with the registration confirmations annexed to the complaint. This is not material in relation to this dispute. In short, “NOKIA” is a well-known famous trade mark owned by the Complainant.

The only two differences between the disputed domain name and the Nokia Word Trade Marks are the addition of the word “forum” and the addition of the suffix “.com”.

It is well established that the addition of the suffix “.com” is an irrelevant distinction that does not change the likelihood for confusion. See Microsoft Corporation v. Amit Mehrotra, WIPO Case No. D2000-0053 and InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075.

Leaving aside the suffix “.com”, the disputed domain name replicates the Nokia Word Trade Marks exactly and adds the term “forum”.

“Forum” is a generic word which is commonly used in domain names and on the Internet generally in connection with websites on which Internet users are able to communicate with each other in relation to topics of common interest. The use of such a generic word does not serve to distinguish the Respondent’s website from the Complainant’s Nokia Word Trade Marks sufficiently to avoid the disputed domain name being confusingly similar to the Nokia Word Trade Marks. See Nokia Corporation v. Nokiagirls.com aka IBCC, WIPO Case No. D2000-0102.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s company name and the Nokia Word Trade Marks.

In addition, the Panel agrees with the Complainant’s contention that the likely confusion on the part of Internet users as to whether there is an association between the website at the disputed domain name and the Complainant is increased by:

(a) the appearance of “Nokia” in text separated from other text at the top of the first page of on the website at the disputed domain, in font and color replicating the Complainant’s business logo as protected by the Nokia Device Trade Marks; and

(b) the use of “Nokia Connecting People”, the Complainant’s worldwide, well known business slogan protected by the Nokia CP Trade marks; and

(c) the similarity of the disputed domain name to the URL of a website of the Complainant’s located at “www.forum.nokia.com”.

At the time of preparing this decision, no statement or other notice appeared on the website at the disputed domain name making it clear that the website was not associated with the Complainant (or any other supplier of products and services referred to on the website) to reduce the likelihood of confusion as to the existence of such an association.

Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Complainant contends that it has not consented to the use of the Nokia Trade Marks by the Respondent and that the Respondent has no right or legitimate interest in the use of the disputed domain name.

Paragraph 4(c) of the Policy sets out three elements, any of which may be effective to demonstrate the Respondent’s legitimate rights in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy, namely:

(a) before any notice of the dispute, the Respondent used the domain name in connection with a bona fide offering of goods or services; or

(b) the Respondent has been commonly known by the domain name; or

(c) the Respondent is 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 trade mark of the Complainant.

The Respondent had the opportunity to respond and present evidence in support of the elements in paragraph 4(c) of the Policy. The Respondent chose not to do so and has not filed any response in this proceeding establishing any circumstances that could demonstrate any rights or legitimate interest to the disputed domain name.

The Complainant is not entitled to relief simply by default, however the Panel can and does draw evidentiary inferences from the failure to respond. See Royal Bank of Canada v. D3M Domain Sales (eResolution Case No. AF-0147).

The Panel does not find any apparent association between the Respondent’s name and the disputed domain name which may indicate that the Respondent has been commonly known by the name “nokiaforum” or a similar name.

Is the Respondent making a legitimate non-commercial or fair use of the domain name, in accordance with paragraph 4(c)(iii) of the Policy.

As set out in Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279, to succeed under paragraph 4(c)(iii), the Respondent must establish:

1. the Respondent’s use is legitimate non-commercial or fair use of the domain name;

2. this use is without intent for commercial gain;

3. this use is without intent to misleadingly divert consumers; and

4. this use is without intent to tarnish the trademark of the Complainant.

If a website is a genuine “forum” or “complaints” website, facilitating the provision of comments on certain goods and services by Internet users, without any commercial gain to the website operator, this may constitute a legitimate non-commercial or fair use of the domain name without intent to misleadingly divert Internet users or tarnish the mark of another in satisfaction of paragraph 4(c)(iii) of the Policy. However, all of the circumstances must be carefully considered.

On the Panel’s review of the Respondent’s website at the disputed domain name at the time of preparing this decision, the website contained several commercial advertisements and links to other websites. For example, the Respondent’s website included banner advertisements for the sale of ring tones (these advertisements were sourced via Google) and a banner advertisement for herpes treatment. It is likely that the Respondent receives some commercial gain for the display of or hits to the advertising banners.

Moreover, the Respondent’s website provides information about, and a forum for discussion regarding products and services other than those of the Complainant. For example, the website includes comments on the Windows Mobile for Smartphones platform, the UIQ platform and phone/PDA decisions as well as Windows Mobile for Pocket PCs.

When viewed by the Panel, the website at the disputed domain name used the following source code in creating the webpage:

“<meta name=“keywords” content=“free, wap, polyphonic, ringtone, download, wallpaper, screensaver, mobile, phone, poly, samsung, siemens, nokia, motorola, panasonic, wap, games, application, symbian, song, midi, mmf, jar, jad, cellphone, mobilephone, java, ponsel, sagem, sanyo, trium” />

<meta name=“description” content=“free polyphonic ringtone, games, wallpaper, screensaver, graphics download” />”

The meta tags refer to competitors of the Complainant. The description of the website in the meta tags focuses on the distribution of ring tones, games and screensavers, rather than discussion of the Complainant’s products and services.

The disputed domain name consequently does not have any natural affiliation or connection to the true nature of the Respondent’s website in its entirety, which is to provide a forum for comment on the goods and services of all various providers of mobile telephones and related services, not just those of the Complainant.

Based on the foregoing, the Panel concludes that the Respondent’s website is created for commercial gain, and does appear to misleadingly divert consumers. Accordingly, the Respondent’s website does not fall within paragraph 4(c)(iii) of the Policy. Contrast Legal & General Group Plc v. Image Plus, WIPO Case No. D2002-1019.

The Panel finds that paragraph 4(a)(ii) of the Policy is satisfied by the Complainant.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the domain name in bad faith.

Paragraph 4(b) of the Policy contains a non-exhaustive list of circumstances which, if found to be present, will be evidence of registration and use of a domain name in bad faith. These circumstances include:

(a) circumstances indicating that the Respondent has acquired or registered a domain name primarily for the purpose of selling or otherwise transferring it to the owner of a trade mark or their competitor for an amount in excess of out of pocket expenses directly related to the domain name (paragraph 4(b)(i) of the Policy); and

(b) the Respondent, by using the domain name, intentionally attempting to attract for commercial gain, Internet users to the Respondent’s website (or other online location) by creating a likelihood of confusion with the Complainant’s mark as to the source of sponsorship, affiliation, or endorsement of the Respondent’s website (paragraph 4(b)(iv) of the Policy).

For the reasons set out above in section A (“Identical or Confusingly Similar”) and section B (“Rights or Legitimate Interests”), the Panel finds evidence that the Respondent, through its use of the disputed domain name, intentionally attempted to attract Internet users to the Respondent’s website by creating a likelihood of confusion as to the Complainant’s association of the website.

At the time of the Respondent’s registration of the disputed domain name, the Complainant had been trading under and using the Nokia Trade Marks for some years and was well-known, worldwide, as a supplier, of amongst other things, mobile telephones. It cannot reasonably be argued that the Respondent was not aware of the trade mark rights of the Complainant when registering the disputed domain name.

By registering and using the disputed domain name, the Respondent draws on the established reputation of the Complainant to attract Internet users to its website. See Nokia Corporation v. Nokiagirls.com aka IBCC, WIPO Case No. D2000-0102.

On July 22, 2004, the Complainant’s legal representatives wrote to the Respondent complaining of the registration and unauthorized use of the disputed domain name. Having received no response from the Respondent, the Complainant’s legal representatives again wrote to the Respondent, by email, on August 11, 2004, re-stating the Complainant’s complaint regarding the registration and use of the disputed domain name by the Respondent.

By email of August 12, 2004, Mr. Firdaus Adinegoro, a representative of the Respondent:

(a) refused to change the domain name of the website at the disputed domain name; and

(b) offered to sell the domain name to the Complainant for $10,000; and

(c) claimed that he had ceased using the slogan “Nokia - Connecting People” on the website at the disputed domain name - This slogan still appeared on the website as at the time this decision was prepared; and

(d) claimed he would “put some announcement that nokiaforum.com is not [related] with Nokia Inc”. The Complainant contends that no such notice was put on the website at that time, nor did such a notice appear as at the date of the Complainant’s complaint. No such notice appears on the website at the time of preparing this decision; and

(e) claimed that the website at the disputed domain name was not a commercial website.

While not conclusive of itself, this email from the Respondent also supports the conclusion that the Respondent was aware of the Complainant and its reputation, and that the Respondent intended to sell the disputed domain name for an amount likely to exceed reasonable out-of-pocket expenses incurred directly in relation to the disputed domain name at $10,000.00.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy is also satisfied.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <nokiaforum.com> be transferred to the Complainant.

John Swinson
Sole Panelist

Dated: November 19, 2004

Источник информации: https://internet-law.ru/intlaw/udrp/2004/d2004-0814.html

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