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Nokia Corporation v. Wavesmultimedia

WIPO Case No. D2002-0130

Outcome
Transfer
Domain names
nokiaflasher.com
Complainant
Nokia Corporation
Respondent
Wavesmultimedia
Panelist
Wolter Wefers Bettink
Decided
24 Jun 2002
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-0130.html

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.

9. Decision

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

Sole Panelist

Dated: June 24, 2002

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