Nokiatraceon.com

The timeline behind nokiatraceon.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Nokia Corporation v. otoide ayemere Claim Number: FA0808001222064 PARTIES Complainant is Nokia Corporation (“Complainant”), represented by Britton Payne, of Foley & Lardner LLP, New York, USA. Respondent is otoide ayemere (“Respondent”), Nigeria. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <nokiatraceon.com>, registered with Netfirms, Inc. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. James A Crary as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on August 25, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 28, 2008. On August 26, 2008, Netfirms, Inc. confirmed by e-mail to the National Arbitration Forum that the <nokiatraceon.com> domain name is registered with Netfirms, Inc. and that Respondent is the current registrant of the name. Netfirms, Inc. has verified that Respondent is bound by the Netfirms, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On September 4, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 24, 2008 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@nokiatraceon.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On October 2, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A Crary as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has 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. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <nokiatraceon.com> domain name is confusingly similar to Complainant’s NOKIA mark. 2. Respondent does not have any rights or legitimate interests in the <nokiatraceon.com> domain name. 3. Respondent registered and used the <nokiatraceon.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Nokia Corporation, is a popular manufacturer of cellular telephones and related accessories. Complainant has conducted its business since 1968 using the NOKIA mark, which Complainant registered many times with the United Kingdom Intellectual Property Office (i.e. Reg. No. 1,307,204 issued April 14, 1987); the Office of Harmonization for the Internal Market (“OHIM”) (Reg. No. 323,386 issued September 9, 1998); and the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 1,570,492 issued December 12, 1989). As part of its offerings, Complainant markets a “TraceOn” function on cellular telephones that allows mobile phone users to be tracked on a mapping program such as Google Maps. Complainant also registered the NOKIA CONNECTING PEOPLE mark with the OHIM (Reg. No. 323,337 issued February 24, 1999 and Reg. No. 4,728,481 issued April 20, 2007). Respondent registered the <nokiatraceon.com> domain name on June 7, 2008. The disputed domain name redirects Internet users to a website that displays Complainant’s trademarks and seemingly gives the impression that Respondent is the source or affiliated with Complainant and its products. A few links on the resolving website also ask for customers’ personal information, including their address, e-mail address, and passport photo. DISCUSSION 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 draw such inferences it 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 that Complainant must 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. Identical and/or Confusingly Similar Complainant’s multiple registrations of its NOKIA and NOKIA CONNECTING PEOPLE marks adequately establish Complainant’s rights in the marks pursuant to Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James (CT2341-RSC) Cititrust Group Ltd., FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (“The Panel finds from a preponderance of the evidence that Complainant has registered its mark with national trademark authorities. The Panel has determined that such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world). Respondent’s <nokiatraceon.com> domain name contains Complainant’s NOKIA mark in its entirety and adds the word or phrase “traceon” and the generic top-level domain (“gTLD”) “.com.” Complainant has established that “TraceOn” is affiliated with its offerings as a feature on its cellular phones, so this addition adds to the confusing similarity of the disputed domain name. The Panel notes that the addition of “.com” is irrelevant under the Policy since all domain names require a top-level domain. The Panel therefore finds that Respondent’s <nokiatraceon.com> domain name is confusingly similar to Complainant’s NOKIA mark pursuant to Policy ¶ 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Accenture Global Servs. GmbH v. Alok Mishra, D2007-0559 (WIPO June 7, 2007) (“The domain name and the trademark are confusingly similar. It is well established that the gTLD can be ignored for the purpose of this comparison, after which the only difference between the domain name and the trademark is the word “consultants” which is utterly descriptive of the Complainant’s principal business offering ….”). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant alleges that Respondent lacks rights and legitimate interests in the <nokiatraceon.com> domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant contends that Respondent has never been commonly known by the <nokiatraceon.com> domain name. The WHOIS information identifies Respondent as “otoide ayemere,” and the Panel can find no other evidence in the record suggesting that Respondent is commonly known by the name. Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the <nokiatraceon.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"). Respondent’s <nokiatraceon.com> domain name resolves to a website that imitates Complainant’s website and prominently displays Complainant’s NOKIA and NOKIA CONNECTING PEOPLE trademarks. Respondent is using the <nokiatraceon.com> domain name as an attempt to pass itself off as Complainant in order to defraud Complainant’s customers. Respondent is also phishing for Complainant’s customers’ personal information. Respondent’s attempt to pass itself off as Complainant and phish for customers’ private information is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See 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”); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent uses the <nokiatraceon.com> domain name to divert Internet users seeking Complainant’s cellular telephone products to Respondent’s own website which appeared to offer the same services. Customers are therefore likely to become confused as to the source or affiliation of this website. Respondent is attempting to profit from the goodwill associated with Complainant’s NOKIA mark, which is confusingly similar to Respondent’s <nokiatraceon.com> domain name. Such use of the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); 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). Respondent uses the <nokiatraceon.com> domain name to engage in a phishing scam, misdirecting Internet users seeking Complainant’s genuine website to Respondent’s misleading website. By imitating Complainant’s website, Respondent is deceiving Complainant’s Internet customers and manipulating them into divulging sensitive personal information. Thus, Respondent’s use of the <national-west.com> domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients). The Panel finds that Policy ¶ 4(a)(iii) is satisfied. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <nokiatraceon.com> domain name be TRANSFERRED from Respondent to Complainant. James A Crary, Panelist Dated: October 7, 2008 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.