Nokia Corporation v. LiquidSMS Limited

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nokia Corporation v. Liquid SMS Limited

Case No. D2002-0292

1. The Parties

The Complainant is Nokia Corporation, a Finnish Corporation. The Complainant is represented by Laytons, Solicitors, of Guilford, Surrey, United Kingdom.

The Respondent is Liquid SMS Limited of Leeds, United Kingdom. The Respondent is represented by a director, Mr. R. Clark.

2. The Domain Name and Registrar

The domain name at issue is <mynokiastuff.com >.

The domain name is registered with Easyspace Limited, of London, United Kingdom. ("the Registrar"). The domain name was registered by the Respondent on November 10, 2000.

3. Procedural History

The Complaint submitted by the above Complainant was received on March 27, 2002, (email) and March 27, 2002 (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center").

On April 2, 8, 12 & 18, 2002, requests for Registrar verification were transmitted by the WIPO Center to the Registrar, requesting it to:

- Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), Paragraph 4(b).

- Confirm that the domain name <mynokiastuff.com> is registered with it.

- Confirm that the Respondent is the current registrant of the domain name.

- Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.

- Confirm that the Uniform Name Domain Dispute Resolution Policy applies to the domain name.

- Indicate the current status of the domain name.

- Indicate the specific language of the registration agreement as used by the registrant for the domain name.

- Indicate whether the domain name registrant has submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising form the use of the disputed domain name.

By email dated April 18, 2002, the Registrar advised the WIPO Center as follows:

- It is the Registrar of the domain name registration <mynokiastuff.com> and had received a copy of the Complaint.

- Mr. R. Clark is shown as the administrative and billing contact.

- The domain name registration is currently in ‘registrar-lock’ status.

- The Registrar has currently incorporated in its agreements the Uniform Domain Name Dispute Resolution Policy ("UDRP") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").

- The language of the Registration agreement is English.

-The domain name registrant has submitted its Registration agreement to the jurisdiction of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of domain names.

By virtue of the registration agreement, the Respondent is bound by the provisions of the Policy.

Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), the WIPO Center on April 22, 2002, transmitted by post-courier and by email the Notification of the Complaint and Commencement of Administrative Proceedings to the Respondent as named in the Complaint.

The Complainant elected to have its Complaint resolved by a sole panelist; it has duly paid the amounts required of it to the WIPO Center.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by courier with one original and four copies and by email. After several exchanges between the Center and the Respondent, a Response was accepted from the Respondent on May 15, 2002, in electronic form only.

The WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.

The Panelist duly advised acceptance and forwarded to the WIPO Center an executed Declaration of Impartiality and Independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules. On May 22, 2002, the Complainant sought to file further submissions in reply to the Respondent’s Response. The Panel has determined not to receive these submissions in the exercise of its discretion.

On May 27, 2002, the WIPO Center forwarded to the Panel by courier the relevant submissions and the record. The projected decision date was June 11, 2002, which has been extended to June 14, 2002.

The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.

4.Factual Background

Complainant is the proprietor of 309 registered trademarks throughout the world

which comprise the word NOKIA or of which the word NOKIA is the dominant feature.

Its registered trademarks include the following:

Community Trademarks

CTM 000 340 836

NOKIA

Classes 9, 35, 38

CTM 000 871 194

NOKIA

Classes 9, 11, 14,

16, 18, 24, 25, 28, 30, 34, 35, 37, 38, 41 and 42

CTM 000 323 386

NOKIA+Device

Classes 9, 35 and

38

CTM 000323 337

NOKIA-CONNECTING

PEOPLE+Device

Classes 9, 35 and

38

UK Trademarks

1 526 042

NOKIA

Class 9

1 525 459

NOKIA – CONNECTING

PEOPLE

Class 9

The marks are used in connection with the manufacture of telecommunications

products including mobile telephones and accessories related to mobile telephones,

mobile phone networks and all business management, promotion and advertising

in connection with the sale and marketing of such products.

Complainant is a world leader in mobile communication, achieving 31.6%

of the world market in the sale of mobile phones in 2000. NOKIA-branded

products are sold in 119 countries throughout the world. Complainant

is the leading supplier of mobile phones and of mobile, fixed and Internet

Protocol ("IP") networks.

In 2000, Complainant achieved annual net sales of its branded products

of approximately EUR m 30.376. Its market capitalization for the year 2000

was EUR m 222,876. It has spent a substantial amount of money

developing, advertising and promoting its products throughout the world.

5. Parties’ Contentions

Complainant

The Complainant has rights in the trade mark NOKIA. Insofar as the whole

of the mark NOKIA appears in the disputed domain name, the domain name is

identical or confusingly similar to the Complainant’s trademark. This is

especially the case having regard to the fact that the rest of the domain

name is comprised of the descriptive or generic words "MY" and

"STUFF". These words add nothing to the domain name to distinguish

it from the Complainant’s mark, and the NOKIA mark is the distinctive feature

of the domain name.

The Complainant has not licensed nor otherwise permitted the Respondent

to use the domain name nor the trademark. The Respondent has no rights or

legitimate interests in respect of the domain name because the Respondent’s

business has no connection with the name NOKIA. The Respondent does not

trade under this name, does not offer goods or services under this name

nor has it been commonly known under this name.

The domain name should be considered as having been registered and used

in bad faith by the Respondent because the domain name is used solely to

attract, for commercial gain, Internet users to the Respondent’s website,

by creating a likelihood of confusion with Complainant’s registered trade

marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s

website. The Respondent is making illegitimate use of the domain name and

has chosen the domain name <mynokiastuff.com> to create an association

with Complainant, its products or with intent to misleadingly divert Internet

users to its website for commercial gain. The Respondent’s site at <www.onmymob.com>

offers for sale ringtones, logos and picture messages to be downloaded on

to mobile telephones. The Respondent uses the disputed domain name to attract

custom to its website.

As a result of the correspondence between the parties, the disputed domain

name no longer resolves directly to the Respondent’s website. Since at least

March 11, 2002, on typing "MYNOKIASTUFF", an Internet

user is directed to the Respondent’s website via a hypertext link from the

webpage at <www.mynokiastuff.com>, rather than the previous direct

resolution to the Respondent’s site. The Respondent is thereby continuing

to use the domain name complained of in bad faith to attract customers to

its website for commercial gain.

The Complainant has been in contact with the Respondent since an unknown

date in 2001, in an attempt to resolve this matter without recourse to WIPO

proceedings. The Complainant’s solicitors wrote to the Respondent on January 18, 2002,

setting out the Complainant’s reasons for complaining about inter alia

the Respondent’s use of the disputed domain name. The Complainant’s solicitors

sent a "follow-up" letter to the Respondent on February 7, 2002,

requesting a response to its letter of January 18, 2002, which

crossed in the post with the Respondent’s letter of February 1, 2002.

The Respondent refused to transfer the disputed domain name to the Complainant.

It intends to continue using the hypertext link as located on the "website

moved" page at <www.mynokiastuff.com> to divert Internet users

onto its website at <www.onmymob.com>. Internet users searching for

Nokia products on Internet search engines are still directed to the Respondent’s

website through the disputed domain name and may be confused as to the Respondent’s

affiliation with or endorsement by the Complainant.

The Complainant refers to the WIPO Panel Decisions in:

- Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO

Case No. D2000-0102; (<nokiagirls.com>);

- Nokia Corporation v. Nokia Ringtones & Logos Hotline, WIPO

Case No. D2001-1101 (<nokiaworld.com>);

- Nokia Corporation v. United Digital, WIPO

Case No. D2001-1176; (<nokiaringtones.com> and <nokiafaceplates.com>);

and

- Nokia Corporation v. Nick Holmes t/a EType Media, WIPO

Case No. D2002-0001; (<nokiaheaven-uk.com>).

All these cases were resolved in favor of the Complainant. The instant

case is similar, as the domain name that is the subject of this Complaint

consist of the Complainant’s NOKIA trademark to which the descriptive words

"MY" and "STUFF" are added.

In WIPO Case No. D2002-0001, the Panel held that

<nokiaheaven-uk.com> was confusingly similar to the Complainant’s trademark

because NOKIA was the dominant element of the domain name. The addition of HEAVEN,

being a laudatory non-distinctive element, would not reduce any risk of confusion

among Internet users. The Panel in the same case also considered the rights

or legitimate interests of the Respondent, and held that the mere fact that

the Respondent sold logos and ringtones compatible with Nokia mobile phones

was not sufficient for the Respondent to claim a legitimate interest in the

domain name.

The Panel in the <nokiaheaven-uk.com> case found the Respondent had

acted in bad faith based on the comments in Nokia Corporation v. Nokia

Ringtones & Logos Hotline (supra) relating to the domain name <worldnokia.com>.

In that case, it was held that the Respondent, by registering and using

the domain name <worldnokia.com>, had created the impression of an

association with Nokia, which showed that he had intentionally used the

goodwill of Nokia’s trademarks to create traffic to its website.

Respondent

It originally registered <mynokiastuff.com> to "share and sell

items specifically for Nokia mobile phones". The domain name was chosen

because it accurately portrayed the items sold.

It was not Respondent’s intention that the word ‘Nokia’ in the disputed

domain name should mislead or maliciously create confusion. The website

states quite clearly on the bottom of each page that it is not associated

with the Complainant. The relevant website is neither branded nor designed

in a similar manner to any of Complainant’s own domains.

A recent questionnaire on Respondent’s website asked people who had searched

for "Nokia Ringtones", "Nokia Operator Logos" or

"Nokia Picture Messages" (which are three of their most common

click through search engine results) a set of questions pertaining to the

use of the word ‘Nokia’ on the Respondent’s website. There were 8,047 responses:

out of those responses, 94.5% stated that:

1.They knew that the website was not connected with the Complainant;

2.That the Respondent’s products were ‘compatible’ with Nokia products

but not owned, designed, composed or sold via the website by the Complainant.

(5.5% of responses were not completed correctly).

47% of respondents purchased a Nokia mobile phone because of its capabilities

for downloadable ringtones and logos: 8% purchased or upgraded their mobile

phone to a Nokia, as a direct result of the website (644 respondents @ c.£250

per mobile phone = c.£161,000 extra revenue generated for the Nokia Corporation).

Respondent acknowledges that Complainant is very protective of its brand

"which we respect". Complainant also offers ringtones and logos

for its range of mobile phones. The real reasons behind the Complainant’s

request for ‘Abusive Registration’ is not one to guard consumers or companies,

as the Nominet Regulations are aimed at, but to act in an anti-competitive

manner – stopping smaller companies selling ringtones, operator logos or

picture messages using the mark Nokia to identify its products.

The Respondent summarizes its submissions thus:

1. <mynokiastuff.com> sells products aimed mainly for Nokia

mobile phones.

2. <mynokiastuff.com> is Respondent’s main consumer website

and is not a doorway or gateway website.

3. <mynokiastuff.com> includes a disclaimer, voluntarily included

by the Respondent, stating that it is not associated with Nokia Corporation,

but that the term is used to determine compatibility only.

4. Consumers are not misled by the design or use of the word <mynokiastuff.com>.

This has been shown by a poll of 8047 people.

5. Commonsense dictates that the wording of the domain is not confusing

with any website owned or operated by the Complainant, neither is it a

misspelling, mispronunciation or language variant.

6. Respondent has not unfairly or maliciously damaged or affected

the Nokia brand or website by using the word ‘Nokia’ within its domain

name.

Respondent has withdrawn <mynokiastuff.com> as an act of goodwill,

whilst this matter is resolved. It is re-branded temporarily to <onmymob.com>:

it is not Respondent’s intention to keep this domain unless <mynokiastuff.com>

is permanently withdrawn from its operation.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the 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".

The burden for the Complainant, under Paragraph 4(a) of the Policy, is

to show:

- That the domain name registered by the Respondent is identical or

confusingly similar to a trademark or service mark in which the Complainant

has rights;

- That the Respondent has no rights or legitimate interests in respect

of the domain name; and

- That the domain name has been registered and is being used in bad

faith.

The disputed domain name is confusingly similar to the Complainant’s registered

trademarks. The words ‘my’ and ‘stuff’ are geared to the word ‘Nokia’ which

is the principal expression in the domain name. Indeed, Respondent appears to

acknowledge Complainant’s rights to its Nokia mark. See Biersdorf A.G. v

Nivea International (WIPO Case No. D2001-0178)

<niveainternational.com> held confusingly similar to mark Nivea).

The Panel considers the first criterion proved.

As to the second criterion, the Complainant asserts that the Respondent

has no rights or legitimate interests in respect of the domain name. Paragraph

4(c) of the Policy sets out matters which a Respondent is entitled to raise

which, if found by a Panel to be proved based on an evaluation of all evidence

presented, should demonstrate a Respondent’s rights or legitimate interests

to a domain name.

The Respondent appears to rely upon Paragraph 4(c)(ii) i.e. that before

notice of the dispute, it used the domain name in connection with a bona

fide offering of goods and services. It is difficult to see how this

defence can succeed. Respondent, on its own admission, is selling ring tones

and logos for Nokia phones – an activity of the Complainant’s. Respondent

must have known of the Complainant’s trademark rights because of the disclaimers

on its website to the effect that it is not associated with the Complainant.

This is not the case of a person conducting a legitimate business under

a domain name who finds to his/her surprise that the domain name associated

with that business happens to be identical or confusingly similar to a registered

trademark. The disclaimer cannot help the Respondent – rather it is an acknowledgement

by the Respondent that the Complainant has rights. In the Panel’s view,

the second criterion is proved.

As in the other WIPO cases cited involving the Complainant, the mere fact of

selling ringtones compatible with Complainant’s phones was insufficient to bring

a Respondent within Paragraph 4(c)(ii). The Respondent has not alleged any particular

licensing arrangement with the Complainant. The situation is similar to that

in The Stanley Works and Stanley Logistics, In. v. Camp Creek, Inc. (WIPO

Case No. D2000-0113) when the Panel held:

"… [E]ven if Respondent is a retail seller of Complainant’s products,

the collateral trademark use necessary to allow resell of Complainant’s

products is not enough to give Respondent proprietary rights in Complainant’s

trademarks, and certainly not enough to confer the right to use these

trademarks as domain names. Many famous trademarks designate goods that

are manufactured and sold through numerous retail stores. But this, without

something more such as authorisation in a licensing agreement or other

special circumstances, does not give the retail sellers rights of domain

name magnitude over the manufacturer’s trademarks."

As to bad faith registration and use both are proved. The Respondent clearly

knew of the fame of the Complainant’s mark when it registered the disputed domain

name. Persons accessing the Respondent’s website wishing to buy ringtones, etc.

could easily think there was some connection between the Complainant and the

Respondent. Correspondence shows that the Respondent still intends to continue

to use the website. As in WIPO Case No. D2001-1101

supra, Respondent’s registration of the disputed domain name has created

an impression of association with Complainant’s mark which has evidenced an

intentional use of Complainant’s goodwill in the mark in order to generate traffic

to Respondent’s website.

The third criterion is therefore proved and the Complainant must succeed.

7. Decision

For the foregoing reasons, the Panel decides:

(a)That the domain name <mynokiastuff.com> is identical to

the trademark to which the Complainant has rights; and

(b)That the Respondent has no rights or legitimate interests in respect

of the domain name; and

(c)That the domain name has been registered and is being used in

bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires

that the registration of the domain name <mynokiastuff.com> be transferred

to the Complainant.

Hon. Sir Ian Barker QC

Sole Panelist

Dated: June 12, 2002

More cases by this complainant

• Nokia Corporation v. 钟奇 (Zhong Qi) — D2024-5121 · nokia.space · Transfer · 03 Feb 2025
• Nokia Corporation v. Kornelijus Zaksauskas — D2024-1310 · nokia.monster · Transfer · 22 May 2024
• Nokia Corporation v. 钟奇 (Zhong Qi) — D2023-4805 · nokia.host · Transfer · 30 Jan 2024
• Nokia Corporation v. 黄登通 (Lee Charles) — D2023-2763 · nokia.online · Transfer · 24 Aug 2023
• Nokia Corporation v. AM, admin admin — D2023-1665 · nokiagift.com · Transfer · 15 Jun 2023
• Nokia Corporation v. Rashad Samadov — D2023-1584 · nokıa.com, xn--noka-nza.com · Transfer · 05 Jun 2023