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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nokia Corporation v. Omar Al Khatib
Case No. D2008-1466
1. The Parties
1.1 The Complainant is Nokia Corporation of Espoo, Finland, represented by Talal Abu Ghazaleh Legal, of Jordan.
1.2 The Respondent is Omar Al Khatib of Dubai, United Arab Emirates.
2. The Domain Names and Registrar
2.1 The disputed domain names <nokiachat.com> and <nokiachat.net> (the вАЬDomain NamesвАЭ) are registered with eNom (the вАЬRegistrarвАЭ).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the вАЬCenterвАЭ) on September 29, 2008. The Complaint was initially brought in respect of the <nokiachat.com> Domain Name alone. It named Host Gator as the registrar for that Domain Name, but WhoIs print outs at that time suggested that the Registrar was eNom and that Host Gator provided other registration services in relation to the Domain Name.
3.2 On September 29, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the <nokiachat.com> Domain Name. eNom replied later that day confirming that the Domain Name was registered in the organisational name of вАЬGemiratesвАЭ and the individual вАЬOmar Al KhatibвАЭ and confirming that the Domain Name had been placed on registrar-lock. Although the Center had requested registrant, technical contact, administrative contact and billing contact details for the Domain Name, only one name and address was provided by the Registrar with no further differentiation.
3.3 On October 2, 2008, the Respondent sent an email, using an <@gemeirates.com> email address to the Center. That email contained the following statement:
вАЬThanks for informing me of my WIPO complaint case number, honestly I own this domain name <nokiachat.com> also <nokiachat.net> since 4 years ago and I registered these domains for the reason that I like Nokia mobile phones, nokiachat.com was a chat website with good chat script and progeam, and it was also famous website, but since three month I decided to stop the chat to offer this domain name for sale. So if Nokia Corporation wants this domain name I offer this domain name for $100,000 and this price include also nokiachat.net domain nameвАЭ
3.4 On October 3, 2008 the Center sent an email to the ComplainantвАЩs lawyers stating that they had incorrectly identified the Registrar as Host Gator rather than eNom and requesting the Complainant to submit an amendment to the Complaint correcting that error within 5 calendar days.
3.5 On October 4, 2008 the Respondent sent a further email to the Center. In that email he claimed that he had read вАЬthe ICANN rulesвАЭ with his lawyer and claimed that the Complainant had failed to prove that the <nokiachat.com> Domain Name was registered in bad faith. No attempt was made to further substantiate this assertion but he finished his email with the following cryptic statement:
вАЬAnd I have the prove for each articles, in this case I canвАЩt send any files or information with my sign and my offer is still available for Nokia CorporationвАЭ
3.6 On October 5, 2008 the ComplainantвАЩs lawyers submitted an Amendment to the Complaint. That Amendment to the Complaint not only corrected the details of the Registrar, but sought to add the <nokiachat.net> Domain Name to these proceedings. The ComplainantвАЩs lawyers also confirmed that a copy of the Amendment to the Complaint had been sent to both the Respondent and the Registrar.
3.7 On October 6, 2008 the Respondent sent a further email to the ComplainantвАЩs lawyers (copied to the Center) in similar terms to that sent two days earlier to the Center. In that email he denied that he had been engaged in any of the bad faith activities set out in paragraph 4(b) of the Uniform Domain Name Dispute Resolution Policy and repeated his claim that the Domain Names had been registered for a chat web site.
3.8 On October 7, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the <nokiachat.net> Domain Name. eNom replied later the same day, providing the same contact details in relation to this Domain Name as it had on September 29, 2008 in relation to the <nokiachat.com> Domain Name. The Center, noting that the publicly available WhoIs details for the <nokiachat.net> Domain Name identified the вАЬWhois Privacy Protection Service, Inc.вАЭ as registrant1, sought further confirmation of its earlier request. eNom confirmed by return that вАЬthe correct Whois informationвАЭ was that which it had provided earlier that day.
3.9 The Center verified that the Complaint together with the Amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the вАЬPolicyвАЭ), the Rules for Uniform Domain Name Dispute Resolution Policy (the вАЬRulesвАЭ), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the вАЬSupplemental RulesвАЭ).
3.10 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 8, 2008.
3.11 On October 13, 2008, the Respondent sent a further email to the Center and the Complainant. It read as follows:
вАЬTo Whom It May Concern,
1- These nokiachat.com & nokiachat.net domain names has been successfully redirected to Nokia Chat Labs website please check: <www.nokiachat.com>, <www.nokiachat.net>.
2- This redirection will be active until the end of WIPO Case Number (D2008-1466) to show good faith and behavior!
3- Even if i canвАЩt sale these domains in any way, iвАЩm ready for the final decision to end this case without any material loss for me or for Nokia Corporation.
Waiting for WIPO response to end this case as soon as possible.вАЭ
3.12 In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2008. The Respondent did not submit any formal Response over and above the emails already identified.
3.13 The Center appointed Matthew S. Harris as the sole panelist in this matter on November 11, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
4.1 The Complainant is the well-known telecommunications equipment supplier and the worldвАЩs largest supplier of mobile telephones. It has used the вАЬNokiaвАЭ name since at least 1968 and is currently the owner of numerous registered trade marks that comprise or incorporate the вАЬNokiaвАЭ name in a very large number of countries. Its marks include:
(i) United Arab Emirates Trade Mark Nos. 77302, 77303, and 77304, in class 41, 28, 9, for the word NOKIA (all applied for on December 19, 2005)
(ii) Jordanian Trade Mark No. 83313 in class 38 for the word NOKIA (filling date December 11, 2005)
4.2 The Respondent would appear to be an individual located in the United Arab Emirates2. The WhoIs records for the Domain Names suggest that both of the Domain Names were registered on September 26, 20073.
4.3 As at the date of the Complaint the <nokiachat.com> Domain Name resolved to a web site which showed a logo comprising the text вАЬNOKIACHATвАЭ (with the elements вАЬNokiaвАЭ and вАЬChatвАЭ in different coloursвАЭ) under which were placed the text вАЬThe nokiachat.com domain name is for sale, for more information or to place a bid call [a UAE telephone number]вАЭ. At the bottom of the page appeared text, which appears to have incorporated various links, as follows:
вАЬ¬© 2004 вАУ 2008 NokiaChat | Advertising Programs | Chat Rules | Chat Help | About NokiaChat | Contact Us | FeedbackвАЭ
4.4 Clicking on the link вАЬAbout NokiaChatвАЭ produced a page with the following text (which, for reasons that will become apparent later on in this decision is reproduced in full and without correction):
вАЬNokiaChat - Meeting Sharing People!
Welcome to the one of the latest sites in the cyber world, which provide an updated source of information and a fun and friendly atmosphere, where people from different cultures all around the world can chat, meet and share their information, also send free sms and chat mails, and have more fee useful services.
NokiaChat create the best chat environment possible encompassing as many topics as possible. We have been hard at work custom developing chat software to meet the needs of people around the world, also nokiachat doesnвАЩt need to installing any software in your PC because itвАЩs online chat website.
NokiaChat custom built chat software enables us to continually refine your chat experience to better suit you. YouвАЩll find our rooms easy and quick to get into and always full of eager chat friends.
Many people have asked about the meaning of our name nokiachat indeed was inspired by (Nokia Mobile Phones & Chat English Word), our mission always is to provide and update nokiachat for people, and to do this was listen carefully to our guests and members needs, wants and suggestions.вАЭ
4.5 As is stated in the RespondentвАЩs email dated October 13, 2008, the Domain Names currently link to a web page on the ComplainantвАЩs web site advertising the ComplainantвАЩs вАЬNokia ChatвАЭ application.
5. PartiesвАЩ Contentions
5.1 The Complainant refers to its trade marks and asserts that Nokia has sold вАЬbillions of dollars worth of goods and servicesвАЭ under its name. It states that as a consequence вАЬNOKIA has become famous, acquired distinctiveness, significant goodwill, and services to uniquely identify Nokia and its products and servicesвАЭ. It refers to a list of prior decisions under the Policy which are said to accept that the word mark NOKIA вАЬconstitutes one of the most famous marks worldwideвАЭ4.
5.2 The Domain Names are said to comprise the trade mark in its entirety and the mere addition of the term вАЬchatвАЭ is said not to add any distinctive feature to the Domain Names. It claims that the selection of the term вАЬchatвАЭ is an attempt to trade off the goodwill and reputation associated with the ComplainantвАЩs services. Further, the Complainant contends that вАЬthe mere addition of a common or generic word such as вАШchatвАЩ to a registered trade mark has consistently been deemed insufficient to avoid confusing similarity between the domain name[s] and the complainantвАЩs trademarkвАЭ. The Complainant, therefore, asserts that the only distinctive element of the Domain Names is identical to the ComplainantвАЩs NOKIA mark.
5.3 On the issue of rights and legitimate interests, the Complainant contends that given the ComplainantвАЩs reputation it is inconceivable that the Respondent was not aware of the Complainant and its NOKIA mark at the time that the Domain Names were registered. From this it is said that вАЬany argument by [the] Respondent that it registered the [Domain Names] for a legitimate purpose is not credibleвАЭ. Further it is claimed that the Respondent has breached the terms of paragraph 2(c) of the Policy in which an applicant for a domain name warrants that the domain name вАЬwill not infringe upon or otherwise violate the rights of any third partyвАЭ and вАЬwill not knowingly use the domain name in violation of any applicable laws or regulationsвАЭ.
5.4 The Complainant also claims that the Respondent had used the <nokiachat.com> Domain Name to create a false association with the Complainant so as to вАЬlead unsuspecting consumers to his web site to fraudulently gather their personal information. Finally it asserts that none of the circumstances set out in paragraph 4(c) of the Policy (i.e., the non-exhaustive list of circumstances that show a right or legitimate interest) apply in this case.
5.5 On the issue of bad faith the Complainant contends that the registration of Domain Names that incorporate the very famous NOKIA mark without any evident right to do so, is said of itself to evidence bad faith. Further, the Complainant asserts that the Domain Names are so similar to the ComplainantвАЩs mark that Internet users are likely to believe that the <nokiachat.com> web site is an authorised and authentic Nokia web site. This is said to disrupt the ComplainantвАЩs business (although there is no reference to paragraph 4(b)(iii) of the Policy) and to constitute activity that falls within the scope of paragraph 4(b)(iv) of the Policy.
5.6 The Complainant also refers to the fact that the <nokiachat.com> Domain Name has been advertised for sale on the web site operating from that Domain Name. That web site is also said to вАЬimitat[e] aspects of the official Nokia website with the heading вАШNOKIAвАЩвАЭ. Further, the Complainant contends:
вАЬThe Respondent is imitating the ComplainantвАЩs mark in color shape, design and text, using the colors green and blue and it is noted that the sponsor of the website is (Nokia Mobile Phones) as a hyperlink to the original site of the [Complainant]вАЭ.
This linking to the official web site is also said to constitute bad faith вАЬbecause there [is] no authorization from the Complainant for the Respondent to do so.вАЭ
5.7 The Respondent has not filed a formal Response in these proceedings but has merely sent the emails already described. In the circumstances, the Respondent is in default in these proceedings. This is more than simply a failure to comply with a formality. For example, for the reasons that this Panel described in greater detail in Audiotech Systems Ltd. v. Videotech Systems Ltd,
WIPO Case No. D2008-0431 (paragraphs 6.1 to 6.3), the requirement that any response contains the statements set out in paragraph 5(b)(viii) of the Rules is an important one. It may result in a panel disregarding the assertions of a respondent in their entirety and at the very least is something that a panel will take into account when considering what weight (if any) to give to factual assertions made by a respondent.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall вАЬdraw such inferences therefrom as it considers appropriateвАЭ.
A. Identical or Confusingly Similar
6.4 It is clear that the Complainant is the owner of a number of trade marks that comprise the word вАЬNokiaвАЭ. Further, the Panel accepts that each of the Domain Names, when one disregards the TLDs вАЬ.comвАЭ and вАЬ.netвАЭ can only sensibly be understood as the name вАЬNokiaвАЭ in conjunction with the English word вАЬchatвАЭ. вАЬChatвАЭ is of course an ordinary English word for an informal conversation and is a word that has an obvious potential association with the speech-related telecommunications products for which the ComplainantвАЩs marks are in part registered. In the circumstances, the Panel has no difficulty in concluding that the Domain Names are confusingly similar to trade marks in which the Complainant has rights.
6.5 The Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Use of the Domain Names
6.6 Before addressing the issues of rights and legitimate interests and bad faith it is convenient to consider the question of how it is that the Respondent has used the Domain Names. This is not straight forward since it is not at all clear what it is that the Complainant is alleging in this case. First, there is the assertion to be found in the Complaint that the Respondent has used his web site with a view to вАЬfraudulently gather [Internet usersвАЩ] personal informationвАЭ. It is not quite clear to this Panel what is the fraud alleged here. Is it merely that the gathering of the information is said to have been gathered fraudulently or is it that the information is being sought for some fraudulent purpose? However, whichever is correct this is obviously a serious allegation.
6.7 The difficulty is that the Complainant has not brought forward a single piece of evidence to support that allegation. The Panel has merely been supplied with a copy of two pages from the web site operating from the <nokiachat.com> Domain Name. These have already been described in detail in section 4 of this Decision. Neither appears to suggest that the Respondent has been gathering information from Internet users. The fact that this allegation is mentioned by the Complainant under the heading of rights or legitimate interests, and not the heading вАЬbad faithвАЭ, is somewhat odd. It is an allegation, which if correct, the Panel would have expected the Complainant to make much of so far as bad faith is concerned.
6.8 Further, the Complainant seems to have contended that the Respondent has included a hyperlink from his web site to the ComplainantвАЩs web site. The exact wording of that allegation has been set out in section 5 of this Decision and it is somewhat difficult to follow what is being alleged here. What form this alleged link takes and where it is said to be on the RespondentвАЩs web site is not explained.
6.9 Next it is unclear what exactly are the ComplainantвАЩs allegations in relation to the <nokiachat.net> Domain Name. As has already been described above, the <nokiachat.net> Domain Name was added in to these proceedings after the original Complaint was filed with the Center and after the Respondent revealed in an email that he was also the owner of this Domain Name. Given that at that time the true owner of the <nokiachat.net> Domain Name was disguised by the use of a WhoIs Privacy service, this was an entirely reasonable amendment for the Complainant to have sought. Previously, panels have held that they have discretion to allow a complainant to amend its complaint to allow domain names to be added even where the proceedings had formally commenced and a panel appointed (see for example, Soci√©t√© Air France v. Spiral Matrix,
WIPO Case No. D2005-1337). Where, as here, the amendment is sought when proceedings are pending but have not formally commenced5, the Panel sees no reason why the addition of domain names to a complaint prior to formal commencement (subject of course to the PanelвАЩs ultimate review) should not be allowed provided that the domain names are registered by the same domain name holder (as revealed on the raising of the WhoIs Privacy service). Such amendment would appear to be consistent with the spirit of paragraph 3(c) of the Rules, and indeed eminently reasonable in cases involving services in which the identity of any underlying holder of a domain name may only be revealed by the registrar after the filing of a complaint.
6.10 The difficulty in this case is not that the Complainant sought to amend the Complaint to add a domain name to these proceedings. It is that the relevant amendment took the form of a separate document which simply amended section II of the Complaint in which the Domain Names are listed and the relevant Registrar identified. No attempt is made to separately identify or describe the circumstances in which the <nokiachat.net> Domain Name has been used.
6.11 Ultimately, therefore, the Panel will proceed on the basis that the Complainant has shown that the <nokiachat.com> Domain Name has been used to display the pages that are described under the вАЬFactual BackgroundвАЭ heading above, and (to the extent it would be relevant to the Decision) that the allegation of a link to the ComplainantвАЩs web site had not been substantiated.
6.12 So far as the <nokiachat.net> Domain Name is concerned, whilst the Complainant has brought forward no evidence of its use, ultimately the Panel is of the view that in the circumstances of this case, it makes no difference so far as the outcome is concerned. The WhoIs details for the Domain Names suggest that both were registered by the Respondent at the same time. Further, the emails sent to the Center and the Complainant by the Respondent suggest that the Respondent himself contends that both Domain Names were registered for the same purpose. Essentially, the Panel is prepared to accept that regardless of whether the <nokiachat.net> Domain Name has been used in the same way as the <nokiachat.com> Domain Name, or for that matter has not been used at all, the Respondent registered them with the same purpose in mind. Accordingly, so far as the assessment of rights and legitimate interests and bad faith is concerned, the two Domain Names stand or fall together.
C. Rights or Legitimate Interests
6.13 For the reasons that are described in greater detail under the heading of bad faith below, the Panel has reached the conclusion that the Respondent registered the Domain Names with the intention of taking advantage in some manner the reputation that the Complainant has developed in the RespondentвАЩs name and as such has unfairly attempted to use the similarity between the Domain Names and the NOKIA mark to draw Internet users to his web site. This does not provide rights or legitimate interests under the Policy.
6.14 The Respondent suggested that the Domain Names were used in connection with some genuine business. Again as the Panel will explain, the Panel is doubtful as to whether this is the case.
6.15 Further, even if this were so, the question would have still remained as to whether the Respondent is entitled to adopt a Domain Name that incorporates in whole the ComplainantвАЩs NOKIA mark. There may be circumstances in which use of a mark in a domain name to refer to the goods and services of the trade mark owner may be permitted even without the express permission of the relevant trade mark owner. For example, in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case D2001-0903, (and other cases discussed in paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions) the panel held that a reseller of goods can use a domain name that incorporates a trade mark for a website selling only those goods provided that is satisfies certain conditions. However, as was held by the three person panel in Dell Inc. v. Radvar Computers, LLC
WIPO Case No. D2007-1420, it is for a respondent to positively advance such a case and bring forward evidence in support. The Respondent has failed to do so in any meaningful sense in this case.
6.16 The Complainant has, therefore, made out the requirements of paragraph 4(a)(ii) of the Policy.
6.17 In coming to this conclusion the Panel has not attached any weight to the ComplainantвАЩs assertion that the Respondent in this case has acted in breach of paragraph 2(b) of the Policy. The Panel of course accepts that a registrant of a domain name subject to the Policy does warrant that the registration will not infringe the rights of others. However, it does not assist the Panel in coming to any conclusion as to abusive registration in this case.
6.18 The reason for this is that insofar as this is read as a representation that the registrant will not act contrary to the terms of the Policy, then the ComplainantвАЩs argument is no more than an assertion that the Respondent does not have any rights or legitimate interest because he has acted contrary to the terms of the Policy. The argument is wholly circular and provides the Panel with no assistance in determining whether Respondent has acted in a manner which is contrary to the Policy.
6.19 It may be that the Complainant is saying something different from this. The warranty is broad enough to cover rights under local law and it may be that the Complainant is claiming that there has been some breach of some local law rights. However, there are two problems with this. First, it is not at all clear what local law rights are claimed to have been infringed in this case. One perhaps could speculate given the location of the Respondent and the rights relied upon that there is some claim under the laws of the United Arab Emirates, but it is not a claim that is made clearly nor is it a claim that is substantiated in the Complaint. Second, and more fundamentally, the Panel is unconvinced that even if such a claim were made it is one that has place in a consideration of the issue of rights or legitimate interests under the Policy. The Panel is of the view that вАЬrights or legitimate interestsвАЭ should be viewed to the extent possible as an autonomous concept to which local law analysis generally adds little6.
D. Registered and Used in Bad Faith
6.20 There is no doubt in this case that the Respondent registered the Domain Names with the ComplainantвАЩs NOKIA marks in mind. First, there is the nature of the mark itself. If there is some non-trade mark meaning of the term вАЬNokiaвАЭ the Panel is not aware of it. Next there is the extent of the ComplainantвАЩs business and the fame of the NOKIA mark world wide. Further, and perhaps most tellingly, there is the wording that appeared on the RespondentвАЩs own web site and the statements in his emails. He readily admits that the term вАЬnokiachatвАЭ was chosen because of the use of NOKIA for the ComplainantвАЩs mobile phones.
6.21 Why then were the Domain Names registered? There is a suggestion in the web site material and in the RespondentвАЩs emails that it was registered for use with a chat service. However, the Panel is unpersuaded that this is the case. The Panel gives little weight to the assertions to this effect in Mr. Al KhatibвАЩs emails. They are inherently vague and unsupported by a statement of truth or any evidence. The Panel is of the opinion that the content appearing on one of the pages of the RespondentвАЩs web site does not constitute persuasive evidence of a real continuing business. It is little more than an assertion of a business concept and even this description is problematic. It contains grammatical errors and is at times hard to follow. At least one element of the description given strikes the Panel as implausible. The Respondent declares that вАЬ[m]any people have asked about the meaning of the name вАШnokiachatвАЩвАЭ. However, if this were a genuine business, the reasons for the choice of this name would frankly be obvious. The Panel is therefore unconvinced that there was ever any genuine business in this case.
6.22 Far more compelling is the offer for sale also placed on the web site. That offer for sale was repeated by the Respondent in his email correspondence with the Center and with the Complainant. The Respondent sought the sum of USD100,000. The Domain Names associations with, and similarities to, the ComplainantвАЩs NOKIA mark are the only credible reasons why the Domain Names might command such a large sum.
6.23 Paragraph 4(b)(i) of the Policy gives as one example of bad faith registration and use:
вАЬcircumstances 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 the 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 nameвАЭ.
6.24 Interestingly, the Complainant does not appear to rely on paragraph 4(b)(i) in this case. Instead it claims that paragraph 4(b)(iv) applies. In broad terms it alleges that the Respondent has sought financial gain by creating a likelihood of confusion with the ComplainantвАЩs mark. The financial gain is said to arise from the potential sale of the Domain Name itself. The argument seems to be that confusion with the ComplainantвАЩs NOKIA mark will result in more Internet users visiting the RespondentвАЩs web site and seeing the RespondentвАЩs statement that the Domain Name is for sale. Whether or not that confusion would have made the sale of the Domain Name materially more likely, the Panel cannot say, but what is important here is not whether the RespondentвАЩs actions are effective but whether such gain was the RespondentвАЩs intent (see for example ServiceMaster Brands LLC v. Riel Roussopoulos,
WIPO Case No. D2007-0346 at paragraphs 6.35 to 6.37).
6.25 The Panel accepts that when the nature of the Domain Names, the lack of evidence of any genuine business having operated from the Domain Names and the registrantsвАЩ recent offers for sale are considered together, they overwhelmingly suggest that the Domain Names were registered because of their similarities and potential confusion with the ComplainantвАЩs NOKIA mark. Further, the Panel accepts that this was done either (a) with the intention of onward sale at a value that reflected that potential for confusion and/or (b) with the intention to gain some other form of financial advantage from the similarities between the Domain Names and the ComplainantвАЩs mark. Whether or not these activities strictly fell within the scope of paragraph 4(b)(i) or 4(b)(iv) of the Policy, the Panel accepts that this was registration7 and use in bad faith.
6.26 The Panel also accepts that the fact that the Respondent has adopted a very similar, if not identical, font on its web site for the term вАЬnokiachatвАЭ as the Complainant has used for NOKIA on its own web site is also supportive of this conclusion. It is not that the Panel is convinced that Internet users reaching this web site will necessarily conclude from this that the web site is operated or used by the Complainant. This seems somewhat unlikely if the first thing that the Internet user sees is a message that the <nokiachat.com> Domain Name is for sale. Nevertheless, this imitation of the Complainant is not something that one would accept of a legitimate business. It calls for an explanation and none is forthcoming. Similarly, there is the fact that the Respondent has recently taken down his web site and is currently linking the Domain Names to a web page describing the ComplainantвАЩs own вАЬchatвАЭ service. Why if the Respondent believed he has been engaged in a legitimate business activity, did he change those activities once proceedings were commenced?
6.27 In the circumstance the Panel has made out the requirements of paragraph 4(a)(iii) of the Policy.
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 names, <nokiachat.com> and <nokiachat.net> be transferred to the Complainant.
Matthew S. Harris
Dated: November 19, 2008
1 This continues to be the case as at the date of this decision.
2 As has already been described the Domain Name appears to have been registered in the organisational name of вАЬGemiratesвАЭ. The status of вАЬGemiratesвАЭ, whether it is a trading name of the Mr. Al Khatib and/or if it is a separate legal entity, its exact connection with Mr. Al Khatib is unknown. However, both parties have appeared content to proceed on the basis that Mr. Al Khatib is the owner of the Domain Name and the Panel sees no reason to proceed otherwise.
3 Although the Panel notes that there are records on the Internet that suggest that the Domain Names, or perhaps earlier and yet identical domain names, were in existence in at dates back to 2004. See footnote 8 below in this respect.
4 There is also reference to a couple of case that are said to state that the ComplainantвАЩs mark is a famous trade mark. However, these cases involve Volvo and not the Complainant.
5 For an explanation as to when proceedings are вАЬpendingвАЭ and when they are вАЬcommencedвАЭ, see for example Mrs. Eva Padberg v. Eurobox Ltd.,
WIPO Case No. D2007-1886 at paragraph 5.16
6 For a further explanation of why this is the case, see this PanelвАЩs decision in 1066 Housing Association Ltd. v. Mr. D. Morgan,
WIPO Case No. D2007-1461, which was followed on the question of local law in Fundaci√≥n Calvin Ayre Foundation v. Erik Deutsch
WIPO Case No. D2007-1947. The Panel recognises that the approach set out in 1066 is not universally accepted. It is sufficient however for present purposes to state that the Panel remains of the view that the autonomous concept approach set out in 1066 is to be preferred.
7 There is a complication in this case in that it is not entirely clear when the Domain Names were actually registered by the Respondent. The Respondent asserts in his emails that he has owned the Domain Names for four years. The Panel was disinclined to give much weight to this unsubstantiated assertion and the WhoIs print outs provided with the Complaint suggested that the Domain Names were registered on September 26, 2007. However, when verifying the WhoIs information provided for the Domain Names on a publicly available web site the Panel noticed that these Domain Names have WhoIs histories that may stretch back to 2004. Further, whilst the Complaint contends in the Complaint that the Domain Names were registered вАЬjust after the advertisements and promotions in newspapers, magazines on television and through Nokia websitesвАЭ, it does not give any date for these registrations advertisements (nor for that matter does the Complainant explain what these advertisements were actually for). Nevertheless, the Panel ultimately is of the view that in the particular circumstances of this case the exact date of registration does not affect the analysis of bad faith.