Nokia Corporation v. RegisterFly.com- Ref-R# 48083173 c/o Whois Protection Service - ProtectFly.com
Claim Number: FA0610000818038
Complainant is Nokia Corporation (“Complainant”), represented by J. Scott Evans of Adams Evans P.A., 2180 Two Wachovia Center, 301 S. Tyron Street, Charlotte, NC, 28282. Respondent is RegisterFly.com- Ref-R# 48083173 c/o Whois Protection Service - ProtectFly.com (“Respondent”), 404 Main Street, Boonton, NJ, 07005.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <nokia-business.com>, registered with Registerfly.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 11, 2006; the National Arbitration Forum received a hard copy of the Complaint October 12, 2006.
On October 24, 2006, Registerfly.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <nokia-business.com> domain name is registered with Registerfly.com, Inc. and that Respondent is the current registrant of the name. Registerfly.com, Inc. verified that Respondent is bound by the Registerfly.com, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 27, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 16, 2006, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@nokia-business.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 22, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <nokia-business.com>, is confusingly similar to Complainant’s NOKIA mark.
2. Respondent has no rights to or legitimate interests in the <nokia-business.com> domain name.
3. Respondent registered and used the <nokia-business.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nokia Corporation, has sold mobile phones, mobile phone accessories and other electronics since as early as 1987. In connection with the sale of its electronic goods and accessories, Complainant holds numerous registrations for the NOKIA mark with trademark authorities around the world, including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,630,022 issued October 8, 2002). Complainant maintains numerous websites in connection with its goods and services, including <nokia.com> and <nokiaforbusiness.com>. The <nokiaforbusiness.com> domain name resolves to a website that caters to business customers.
Respondent registered the disputed domain name September 18, 2006. The disputed domain name resolves to a website that prominently features Complainant’s logo and peddles a suspicious investment opportunity dealing with “e-currency” and “e-gold.” Additionally, the resulting website displays Complainant’s mailing address and phone numbers for its corporate headquarters on the website.
Paragraph 15(a) of the Rules instructs this 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant established using extrinsic evidence in this proceeding that it has legal rights in the NOKIA by registering its mark with a number of trademark authorities around the world, including the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (Holding: “Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
Complainant contends that the <nokia-business.com>
domain name is confusingly similar to its NOKIA mark. The disputed domain name contains Complainant’s mark in its
entirety and merely adds a hyphen and the term “business.” Pursuant to Policy ¶ 4(a)(i), the addition
of a hyphen and a term such as business do not distinguish the disputed domain
name from the mark wholly contained therein.
Accordingly, the Panel finds the <nokia-business.com>
domain name is confusingly similar to Complainant’s NOKIA mark for the purposes
of Policy ¶ 4(a)(i). See Yahoo! Inc.
v. Vorot, FA 159547 (Nat. Arb Forum July 16, 2003) (finding the
<yahoobusiness.com> domain name to be confusingly similar to the
complainant’s YAHOO mark); see also Chernow Commc’ns, Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation
marks, such as hyphens, does not alter the fact that a name is identical to a
mark").
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has legal rights to the mark contained in its entirety within the disputed domain name. Complainant alleged that Respondent has no such rights to or legitimate interests in the disputed domain name. Pursuant to Policy ¶ 4(a)(ii), Complainant must first make a prima facie case that Respondent lacks rights and legitimate interest in the disputed domain name before the burden shifts to Respondent to show that it does have rights or legitimate interests. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests). The Panel finds Complainant to have successfully established a prima facie case and will analyze the remainder of this element with the shifted burden.
Respondent did not file a Response
and this failure to reply to the Complaint creates a presumption that
Respondent lacks rights and legitimate interests in the disputed domain
name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name); see also Bank of Am. Corp. v.
McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”). The Panel, however, analyzes the record to
determine if Respondent nevertheless has rights of legitimate interests in the
disputed domain name.
According to the record, no evidence indicates that Respondent
is commonly known by the disputed domain name.
Without evidentiary proof of Respondent’s identity, the Panel must find
that Respondent is not commonly known by the disputed domain name pursuant to
Policy ¶ 4(c)(ii). See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of
Complainant’s mark there must be strong evidence that Respondent is commonly
known by the disputed domain name in order to find that Respondent has rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). However, there is no evidence
on record, and Respondent has not come forward with any proof to establish that
it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
Additionally, Respondent is using the disputed domain name to resolve to a website that holds itself out as being administered by Complainant. The website prominently displays Complainant’s logo, business name and contact information. Respondent’s use of the disputed domain name to resolve to an investment website that is designed to create the false impression that it is administered by Complainant fails to amount to a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”).
The Panel finds that Complainant satisfied Policy ¶
4(a)(ii).
Complainant asserts that Respondent registered and used the disputed domain name in bad faith. The disputed domain, as previously stated, resolves to a website that prominently displays Complainant’s logo, business name and contact information. Additionally, the disputed domain name purports to offer an investment opportunity, promising large returns through investments in foreign exchange markets. Due to the confusingly similar nature of the disputed domain name and the prominent display of Complainant’s logo, business name and contact information, the Panel finds there to be substantial evidence to support the finding that there is a likelihood of confusion as to Complainant’s sponsorship of or affiliation with the resulting website. Furthermore, it can be drawn from the nature of the website that Complainant is profiting from the operation of the website. Whether this profiting is by a legitimate or illegitimate investment scheme does not control the outcome of this dispute. Use of a confusingly similar domain name to resolve to a website that purports to be administered by Complainant for commercial gain constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel finds that Complainant satisfied Policy ¶
4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nokia-business.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 5, 2006.
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