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Nokia Corporation v. Mr. David Wills

WIPO Case No. DWS2001-0004

Outcome
Transfer
Domain names
nokia.ws
Complainant
Nokia Corporation
Respondent
Mr. David Wills
Panelist
Wolter Wefers Bettink
Decided
25 Feb 2002
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2001/dws2001-0004.html

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nokia Corporation v. David Wills

Case No. DWS2001-0004

1. The Parties

The Complainant is Nokia Corporation, a corporation organised under the laws

of Finland, having its principal place of business in Espoo (Keilalahdentie 4,

02150), Finland and represented by Tuukka Airaksinen, ("the Complainant").

The Respondent is Mr David Wills, a private person domiciled in the United

Kingdom and residing at 105 Obree Ave, Kings Meadow, Prestwick, Ayrshire KA9 2NQ,

United Kingdom, ("the Respondent").

2. The Domain Name and Registrar

The domain name at issue is <nokia.ws>. The Registrar is WebSite.ws,

having its offices at 701 Palomar Airport Rd, Suite 300, Carlsbad,

CA 92009, United States of America ("the Registrar").

3. Procedural History

The complaint was submitted electronically with the World Intellectual Property

Organization Arbitration and Mediation Center (The "WIPO Center") on November 15, 2001.

The hardcopy under cover of a letter of the same date was received on November 20, 2001,

("the Complaint"). An Acknowledgement of Receipt was sent by the WIPO

Center to the Complainant on November 20, 2001.

On November 26, 2001, a Request for Registrar Verification was transmitted

to the Registrar. On December 3, 2001, the Registrar confirmed by

e-mail that the domain name <nokia.ws> is registered with the Registrar

and that the Respondent is the current registrant of that domain name.

On December 11, 2001, the WIPO Center informed the Complainant that the name

of the Registrar as set out in the Complaint was incorrect and requested that

the Complaint be amended.

On December 11, 2001 the WIPO Center received an Amended Complaint by email.

(A hard copy version was received on December 18, 2001.)

On December 19, 2001 a Notification of Complaint and Commencement of Administrative

Proceedings (the "Commencement Notification") including a hard copy of the Amended

Complaint was transmitted by email and by courier to the Respondent, setting

a deadline of January 8, 2002, by which the Respondent could make

a response to the Complaint.

On December 19, 2001, the Respondent submitted its response by email to the

WIPO Center ("the Response").

On February 11, 2002, the WIPO Center sent a Notification of Appointment of

Administrative Panel and Projected Decision Date by email to the parties, in

which Mr Wolter Wefers Bettink was appointed as Sole Panelist.

4. Factual Background

On the basis of the documents submitted by the parties the following facts

can be established as agreed between parties or insufficiently disputed.

The Complainant is the owner of the trademark NOKIA, which has been registered

worldwide, amongst others in the United Kingdom and the European Union (GB Reg.

No. 1526042, renewed February 6, 2000 and CTM Reg. Nos. 340836, registered

September 9, 1998 and 871194, registered March 24, 2000).

Respondent registered the domain name <nokia.ws> on March 10, 2000.

The Complainant contacted Respondent when Complainant became aware of Respondent’s

registration of the domain name <nokia.ws>. It was agreed between Complainant

and Respondent that the domain name <nokia.ws> be transferred to Complainant

by Respondent for an amount of GBP 65. This transfer did not take place.

When Complainant contacted Respondent again, Respondent no longer wanted to

transfer the domain name <nokia.ws> for the amount of GBP 65, but

demanded an amount of USD 1000.

5. Applicable Rules

Paragraph 4 (a) of the Uniform Domain Name Dispute Resolution 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

or legitimate interests to the domain name for the purpose of Paragraph 4 (a)

(ii) above.

6. Parties’ Contentions

(a) Complainant

The Complainant states in the Complaint that it owns the trademark NOKIA, registered

inter alia in the United Kingdom, the United States and the European

Union. According to Complainant the trademark NOKIA is a well-known trademark

within the meaning of article 6bis of the Paris Convention on the Protection

of Industrial Property.

The grounds for the Complaint are:

(1)the domain name <nokia.ws> is identical to Complainant’s trademark

and company name. The domain name wholly incorporates Complainant’s registered

well-known trademark NOKIA. The addition of ".ws" is a necessary element

of any domain name registered under that root and is therefore not distinctive;

(2)Complainant states that Respondent has no rights or legitimate interests

in respect of the domain name <nokia.ws> as provided in Paragraph 4 (a)

(ii) in connection with Paragraph 4 (c) of the Policy.

Respondent has not registered NOKIA as a trademark or a service mark anywhere

in the world. Complainant has not licensed or otherwise permitted Respondent

to use the trademark NOKIA. There is no relationship between Complainant and

Respondent. Respondent is not commonly known by the name Nokia. Although Respondent

is a member of the Nokia Academy and sells Nokia goods, this does not give Respondent

any rights to the domain.

(3)Complainant states that the domain name <nokia.ws> was registered

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 the domain name <nokia.ws>

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 Complainant, for valuable consideration in

excess of his documented out-of-pocket expenses directly related to the domain

name. This is substantiated by the fact that that Respondent has offered the

domain name <nokia.ws> for sale at his website. The fact that the domain

name was publicly for sale and that Respondent invited offers, indicates that

Respondent’s intention was to receive the highest possible price for the domain

name. After the first contact between Complainant and Respondent, parties agreed

that the domain name be transferred to Complainant for an amount of GBP 65,

which was considered sufficient to cover the out-of-pocket expenses directly

related to the domain name. Complainant’s representative informed Respondent

of the particulars required to effect the transfer and stated that the amount

would be paid after the transfer was completed. The correspondence between parties

ended there. Later, when Complainant again contacted Respondent, Respondent

stated that he was only prepared to transfer the domain name <nokia.ws>

for USD 1000. Respondent also stated that paying him USD 1000 would

be simpler and cheaper that using any domain dispute resolution services. These

communications by Respondent show his intention to sell the domain name for

a valuable consideration in excess of his out-of-pocket expenses directly

related to the domain name.

Respondent cannot have acted in good faith when registered a domain name identical

to the well-known trademark and understood it as belonging to Complainant, especially

as he has acknowledged that he was aware of the trademark NOKIA at the time

of registering the domain name <nokia.ws>.

Complainant further states that by using the domain name Respondent has intentionally

intended to attract, for commercial gain, internet users to his website by creating

a likelihood of confusion with Complainant’s trademark as to the source, sponsorship,

affiliation or endorsement of his website or location or of a product or service

on his website or location.

(b) Respondent

In the Response, Respondent states that the domain name <nokia.ws> is

used by his company Elm Telecom. Respondent states that he does have

rights or legitimate interests in the domain name <nokia.ws>. The domain

name is used to sell Nokia products which in turn represents income for Nokia.

Respondent states that Elm Telecom is a Nokia Academy certified supplier, trained

by Nokia at their Academy sessions. Respondent states that the domain name <nokia.ws>

at no time was for sale. The domain name <nokia.ws> pointed to the Nokia

product section shop of the Elm Telecom shop, with the header that Respondent

was not Nokia but an Academy certified supplier, trained by Nokia at their Academy

sessions.

Respondent states that the domain name <nokia.ws> was not used in bad

faith as it was used to sell Nokia products which, in turn, represents income

for Nokia.

Respondent states that he had doubts as to whether the representative of Nokia

who contacted him, was indeed Nokia’s representative.

Respondent further states that he was willing to comply with Nokia’s summons.

Respondent states that he sought legal advice after Nokia threatened legal action,

which increased his costs in excess of USD 1000.

Respondent states that he is perfectly willing to release the domain name provided

that Nokia covers his purchase, transfer and legal costs.

7. Discussion and Findings

a.Trademark rights

Complainant has provided sufficient evidence of its rights to the trademark

NOKIA, well-known worldwide and in particular within the European Union and

the United Kingdom.

b. Identical or confusingly similar

The domain name <nokia.ws> is identical to Complainant's well-known trademark

NOKIA. The suffix ".ws" indicates that the domain name is registered

in the .ws ccTLD.

c. Rights or legitimate interests

Under paragraph 4 (c) of the Policy, Respondent may demonstrate that he has

a right or legitimate interest to a domain name for the purpose of Article 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."

Respondent has stated that the domain name < nokia.ws> was used to sell

Nokia products. Respondent has also stated that he is a certified supplier of

Nokia goods and a member of the Nokia Academy, trained by Nokia at their Academy

sessions.

However, Respondent has not provided evidence that he in fact resells Complainant’s

products according to specific sale conditions agreed between parties. Even

if Respondent is an authorised retailer of Complainant’s products, this in itself

is not sufficient to give Respondent a right to use these

trademarks as domain names.

As held by the Panel in, inter alia, WIPO

D2000-0079 Motorola Inc. v Newgate Internet Inc.; WIPO

D2000-0113 Stanley Works and Stanley Logistics Inc. v Camp Creek Co.;

WIPO D2000-1201 R.T. Quaife Engineering

Ltd v Luton, WIPO D2001-0262 Ferrero SpA

v Fistagi SrL; WIPO D2001-1101 Nokia Corporation

v Nokia Ringtones & Logos Hotline a licensee or a dealer, agent or distributor

of (among others) products of the trademark owner or of a compatible products

does not per se have a right to a domain name which includes that trademark.

Respondent has not submitted that Complainant has expressly permitted Respondent

to use the trademark NOKIA or register the domain name using the trademark NOKIA.

Respondent has stated that the domain name <nokia.ws> was pointing to

the Nokia product section of the Elm Telecom shop with the header that he was

not Nokia, but an Academy certified supplier, trained by Nokia at their Academy

sessions. Respondent has however failed to provide evidence of this contention

which, in the opinion of the Panel would not, even if correct, qualify as (sufficient

basis for) an own right or legitimate interest.

In the 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 Paragraph 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 that you have

required 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 name";

(iv) By using the domain name, you have intentionally attempted to attract for

commercial gain, Internet users to your website or other on-line locations,

by creating a likelihood of confusion with the 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.

Initially, Respondent used the domain name <nokia.ws> for a website on

which this domain name was offered for sale. Although the parties apparently

agreed that the domain name <nokia.ws> would be transferred to Complainant

for an amount of GBP 65, this transfer did not take place. When Complainant

again contacted Respondent to remind him of the abovementioned agreement, Respondent

replied:

"That was then, this is now and I need payment up front. I agree the cost

is up but if you consider the potential fees and hassle involved, this, is a

far simpler option than using any domain name dispute resolution service. Are

you willing to make an offer in the region of USD 1000 after considering

this?"

Respondent’s email makes apparent that Respondent intended to sell the

domain name in question in excess of his documented out-of-pocket expenses directly

related to the domain name. Respondent has stated in the Response that the price

of USD 1,000 includes the costs for legal advice he sought, but has submitted

no evidence thereof. Furthermore, the email quoted above does not make any mention

of such costs, but compares the price of USD 1,000 to the costs that Complainant

would have to make to obtain the domain name if he did not pay that price.

For completeness’ sake it should be mentioned that in the Panel’s view the

facts indicate that Respondent, by registering and using the domain name <nokia.ws>

has intentionally used the goodwill of Complainant’s trademark to create traffic

to his website operating under the domain name <nokia.ws>. (See also e.g.

WIPO Case No. D2000-0413 Chanel Inc.

v Estco.)

The Panel therefore concludes that there is sufficient evidence that Respondent’s

registration and use of the domain name <nokia.ws> is in bad faith.

8. Decision

On the basis of the foregoing, the Panel decides that Complainant has provided

the required evidence to request 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 <nokia.ws> be transferred

to Complainant.

Wolter Wefers Bettink

Sole Panelist

Dated: February 25, 2002

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