The Complainant is Nokia Corporation of Espoo, Finland, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Huafeng Lu aka lu hua feng of Shanghai, the People’s Republic of China.
The disputed domain names <nokiau.com> and <nokia168.com> are registered with HiChina Zhicheng Technology Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2010. On August 20, 2010, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain names. On August 23, 2010, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On August 24, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On the same day, the Complainant confirmed its request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
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 September 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2010.
The Center appointed Jonathan Agmon as the sole panelist in this matter on September 29, 2010. 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.
The Complainant, Nokia Corporation, is a Finnish corporation that engages in the manufacturing of mobile devices and in converging Internet and communications industries.
The Complainant employs 62117 employees in 120 countries. The Complainant markets its products in more than 160 countries with a sales net of EUR 41 billion for the year 2009 and operating profit of EUR 1.2 billion for the year 2009.
The Complainant is the owners of numerous trademark registrations for the NOKIA mark in more than 170 countries around the world. For example: Community trademark registration No. 000340836 – NOKIA, with the registration date of September 9, 1998; Community trademark registration No. 000871194 – NOKIA, with the registration date of March 24, 2000; United States trademark registration No. 2630022 – NOKIA, with the registration date of October 8, 2002; United States trademark registration No. 2667758 – NOKIA, with the registration date of December 31, 2002; Community trademark registration No. 004035663 – NOKIA, with the registration date of January 3, 2006; Chinese trademark registration No. 297227 – NOKIA, with the registration date of August 30, 2007; Chinese trademark registration No. 1352404 – NOKIA, with the registration date of January 7, 2010; Chinese trademark registration No. 1391792 – NOKIA, with the registration date of April 28, 2010; and many more.
The Complainant has also developed a formidable presence on the Internet and is the owner of many domain names, which contain the name "Nokia". For example: <nokia.net>, <nokia.biz>, <nokia.com>, <nokia.org>, <nokia.cn>, <nokia.com.cn>, <nokia.es>, <nokia.fr>, <nokia.de> and many others.
The disputed domain names <nokiau.com> and <nokia168.com> were registered on May 17, 2010.
The disputed domain names currently lead to an error page.
As evidenced by the Complainant, the disputed domain name <nokiau.com> used to resolve to a website that included an announcement that the website was under construction and is suspected to include malware.
As evidenced by the Complainant, the disputed domain name <nokia168.com> used to resolve to a website enabled users to download mobile phone software and applications.
The Complainant argues that the disputed domain names are identical or confusingly similar to the Complainant's marks, as they incorporate the Complainant’s marks as a whole as the distinctive part of the domain names. The addition of the letter "u" and the number "168" to the trademarks is insufficient to avoid confusing similarity with the Complainant's trademarks. Furthermore, the Complainant argues that the additional number "168" will cause consumers to believe that the domain name refers to the Complainant's products which names often consist of a number.
The Complainant further argues that the addition of the gTLD ".com" to the disputed domain names is insignificant for determining whether the disputed domain names are confusingly similar to the Complainant's marks.
The Complainant further argues that the Respondent is not commonly known by the name "Nokia", nor does it own trademarks for the “Nokia” term, and therefore has no right or legitimate interest in the disputed domain names.
The Complainant further argues that the Respondent used the disputed domain names to lure consumers to visit websites which disseminates malware. The Complainant argues that this use by the Respondent tarnishes the reputation of the Complainant and is not considered a legitimate use.
The Complainant further argues that it had not licensed or otherwise permitted the Respondent to use the NOKIA mark.
The Complainant further argues that the NOKIA mark is extremely well-known and recognized with the Complainant worldwide. The Complainant further argues that it is unlikely that the Respondent was not aware of the NOKIA mark upon registering the disputed domain names and thus acted in bad faith in registering and using the disputed domain names.
The Complainant further argues that the Respondent registered the disputed domain names in order to benefit of the Complainant's reputation.
For all of the above reasons, the Complainant requests the transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 11(a) of the rules provides that:
“unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the registration agreement for the disputed domain names is Chinese.
The Complainant requested that the language of proceedings should be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the panel has the discretion to decide otherwise having regard to the circumstances of the case. The panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of proceedings:
a) The disputed domain names consist of Latin words, letters and numbers, and do not consist of any Chinese letters or words;
b) The Respondent did not object to the Complainant’s request that English be the language of proceedings.
Upon considering the above, the Panel decides to accept the Complainant’s request and rules that English be the language of proceedings.
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant owns multiple trademark registrations for the NOKIA mark around the world. For example: Community trademark registration No. 000340836 – NOKIA, with the registration date of September 9, 1998; Community trademark registration No. 000871194 – NOKIA, with the registration date of March 24, 2000; United States trademark registration No. 2630022 – NOKIA, with the registration date of October 8, 2002; United States trademark registration No. 2667758 – NOKIA, with the registration date of December 31, 2002; Community trademark registration No. 004035663 – NOKIA, with the registration date of January 3, 2006; Chinese trademark registration No. 297227 – NOKIA, with the registration date of August 30, 2007; Chinese trademark registration No. 1352404 – NOKIA, with the registration date of January 7, 2010; Chinese trademark registration No. 1391792 – NOKIA, with the registration date of April 28, 2010; and many more.
The disputed domain name <nokiau.com> differs from the registered NOKIA trademark by the additional letter "u" and by the additional gTLD ".com".
The disputed domain name <nokia168.com> differs from the registered NOKIA trademark by the addition of the number "168" and by the additional gTLD ".com".
The addition of a single letter or number at the end of each domain name does not serve sufficiently to distinguish or differentiate the disputed domain names from the Complainant's NOKIA trademark, as the additional letter or number is a non-substantial element, which in itself is not distinctive as it does not change the perception derived from the domain name.
The lack of distinctiveness is especially noticeable as to the addition of the number "168". It is known that the Complainant regularly uses numbers as names of its products. As a result, the number "168" cannot act as a distinguishing element.
Previous UDRP panels have found that the mere addition of a non-significant element does not sufficiently differentiate a domain name from a trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd., WIPO Case No. D2006-0909).
Also, the addition of the gTLD “.com” to the disputed domain names does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the disputed domain names.
Consequently, the Panel finds that the Complainant has shown that the disputed domain names are confusingly similar to trademarks in which the Complainant has rights.
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain names (policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain names and the Respondent failed to assert any such rights, or legitimate interests.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its NOKIA trademark or a variation of it. The Respondent did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain names. Thus, the Respondent did not rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant must show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii)).
The Complainant submitted evidence that show that the Respondent registered the disputed domain names after the Complainant registered its trademarks. According to the evidence filed by the Complainant, the Complainant owned registered trademarks for its NOKIA mark for many years before the Respondent had registered the disputed domain names. In this Panel’s view, It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademarks, owned by the Complainant, were registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).
The Complainant also provided evidence to demonstrate its trademarks vast goodwill. The Panel cites the following with approval: "the trademark NOKIA is currently enjoying such fame internationally that it cannot reasonably be argued that respondent/IBCC could have been unaware of the trademark rights vested therein when registering the domain name" (Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102). Accordingly, it is difficult to assume that the Respondent had no knowledge of the Complainant when registering the disputed domain names.
The Panel cites the following with approval: “when a domain name is so obviously connected with a Complainant, it's very use by a registrant with no connection to the Complainant suggests ‘opportunistic’ bad faith” (Tata Sons Limited v. TATA Telecom Inc/Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by the Respondent, if by using the disputed domain names it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain names resolved to, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the disputed domain names are resolved to.
As evidenced by the Complainant, the disputed domain name <nokia168.com> was used to lead Internet users to a website that included an announcement that the website was under construction and to a website displaying a representation of a mobile phone device with Chinese characters on the screen. The disputed domain name <nokiau.com> was used to lead Internet users to a website displaying the Complainant's mark with the addition of the Chinese symbols for "software updating center". In the Panel’s view, the Respondent’s use of the Complainant’s trademarks, in connection with mobile phones and mobile phone software and applications in order to promote a website other than the Complainant's is evidence that the Respondent registered the disputed domain names with knowledge of the Complainant’s trademarks and of the Complainant’s commercial use of them, and subsequently intended to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”.
The disputed domain names currently lead to an error page. However, the fact that the Respondent does not use these domain names does not preclude the Panel from finding bad faith, having taken regard of all the circumstances of this case. See Mobimate Ltd. v. “World Mate” and Sachiwo Inagaki, WIPO Case No. D2008-1867.
As previously noted by the Panel, the disputed domain names are confusingly similar to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP in cases where such use is illegitimate.
In addition, the Panel makes notice of the Complainant’s contention that the Respondent has used at least one of the websites which the disputed domain names resolved to in order to disseminate malicious symbian malware. Previous panels have ruled that dissemination of malware through the respondent's site constitutes bad faith (see Google Inc. v. none, Software LLC, WIPO Case No. D2009-1757).
Based on the evidence presented to the Panel, including the date of registration of the disputed domain names and the use of the NOKIA trademarks in the disputed domain names, the Panel draws the inference that the disputed domain names were registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under 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 disputed domain names <nokiau.com> and <nokia168.com> be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: October 13, 2010