Nokia Corporation -v- Nokia Ringtones [2004] DRS 1493 (5 March 2004)

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The Complaint was lodged with Nominet on 14th January 2004. Nominet notified the Respondent of the validated Complaint on 19th January 2004. The Respondent failed to respond within the required time period of 15 days and Nominet so informed the Complainant on 12th February 2004. Mediation not being possible in these circumstances, the Complainant paid Nominet the appropriate fee for a decision of an Expert, pursuant to §6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”), before the stated deadline of 26th February 2004.

Steve Ormand, the undersigned, (“the Expert”) confirmed to Nominet on 17th February 2004, that he knew of no reason why he could not properly accept the invitation to act as expert in this case and that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.

There is no evidence before the Expert to indicate the presence of exceptional circumstances that prevented the Respondent from submitting a response to Nominet within the required time period; accordingly, the Expert will now proceed to a Decision on the Complaint in accordance with §15b of the Procedure.

The Complainant is an internationally well-known supplier of mobile phones and related technologies and has extensive goodwill and reputation in the “Nokia” name. “Nokia” was rated the 6th most valuable brand of 2003 in the Interbrand Annual Survey of 2003. The Complainant has submitted copy documents to show it is the proprietor of 3 registered UK trademarks and 4 registered European Community trademarks for “Nokia” including the plain word mark.

The Complainant’s mobile phones are supplied with a variety of ring tones, screen logos and games that can be selected or played by the owner. Owners may also purchase additional ring tones, screen logos and games from the Complainant or from third party providers.

The Respondent registered the Domain Name on 4th July 2002. The Respondent supplies ring tones, screen logos and games for the Complainant’s mobile phones from a web site using the Domain Name.

At the date of filing this Complaint, the Complainant’s solicitors have received no reply to letters and e-mail (copies supplied) sent to the Respondent requesting content be removed and the Domain Name assigned to the Complainant.

1. The Domain Name (“1-nokia-ring-tones.co.uk”) is confusingly similar to a name or mark in which the Complainant has rights because:

a. The mark “Nokia” is reproduced in its entirety.
b. The addition of “1” adds nothing by way of distinctiveness and “ring-tones” is a generic and purely descriptive term highly relevant to the Complainant’s main area of business. These additions do not distinguish the Domain Name from “Nokia” but merely suggests to the consumer that the ring tones to be found on the site are supplied, authorised or endorsed by the Complainant.

2. The Domain Name in the hands of the Respondent is an Abusive Registration as evidenced by:

a. The Complainant has not authorised the use of its mark as part of the Domain Name and this use infringes the Complainant’s registered UK and Community trade mark rights. The Complainant is not connected with nor endorses the website to which the Domain Name resolves. The word “Nokia” is prominently placed several times in the header and top of the page of the website. The website reinforces the misrepresentation that it is connected with or authorised by Nokia by stating that it is: “The Nokia Ring Tones, operator logos and Java Games provider”.
b. The metatags for NOKIA appear on this site. The use of Nokia in relation to the Domain Name, the website and the metatags on the site constitute trade mark infringement and passing off.
c. The copyright notice at the bottom of the website’s homepage indicates that the 2003 copyright in the website belongs to 1-Nokia-Ring-Tones.co.uk. There is no legal entity registered at Companies House trading under this name. This is misleading and reinforces the impression that the website design has been authorised or approved by the Complainant.
d. The fact that the website holds itself out as being connected with the Complainant as a result of the Domain Name and format of the website itself is of particular concern to the Complainant due to the offensive nature of much of the “adult” imagery available for download from the site.
e. As the Domain Name refers to the Complainant’s goods and services, its use by the Respondent is likely to lead to confusion as to the association between the two parties. The use of the word Nokia in the Domain Name is a clear cause of consumer confusion. The Respondent cannot demonstrate any fair use of the Domain Name. Further, the Respondent does not attempt to differentiate its business, goods and services from those of the Complainant. There are no disclaimers on the website. The Complainant’s name features prominently on the website especially in the headers to each page.
f. The Domain Name has been used by the Respondent in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant’s rights. The Domain Name’s website contains ringtones, screensaver backgrounds and pictures, both still and animated, available for download onto mobile phones. Many of the pictures and screensaver backgrounds are of an adult nature and are offensive. It is detrimental for the Complainant’s trade mark to be associated with such material, whether or not the public believe the site is approved by the Complainant.
g. In the Nominet UK case of Nokia Corporation v Just Phones Limited, the domain name in dispute was nokiaringtones.co.uk and the facts were similar to those of this Complaint. The Complainant highlights three aspects of the case:
i. The expert concluded that a front page disclaimer stating that the respondent’s website was not connected to Nokia Corporation or Nokia Mobile Phones Limited in any way was “spurious and inadequate to avoid liability”.
ii. The complainant’s reply, at paragraph 5, states: “The disclaimer on the website cannot render the use of the Domain Name non-abusive. The same reasoning applies to a high street shop that cannot trade under the name “Nokia” telephones by notifying their customers once inside the shop that that shop is not associated with the Complainant”. “Customers may visit the website or the high street shop on the basis of the Domain Name or the trading name of the high street shop in the belief that they are associated with the Complainant. The customer once there may, despite receiving the notice, stay and proceed with his purchases. The Respondent is thereby taking unfair advantage of the Complainant’s trade mark as set out in the Complaint.”
iii. The expert stated that the “Respondent’s arguments that the use of NOKIA is merely descriptive and somehow in accordance with honest practices in such matters are entirely unconvincing”. He went on to say that “they chose NOKIAringtones.co.uk because that would take most effective advantage of the reputation and goodwill established by the Complainant”.
The decision supports the Complainant’s allegations stated below.
h. The Complainant alleges that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated by, or otherwise connected with the Complainant, and as such the Domain Name is an abusive registration under clause 3(ii) of the Policy.
i. In addition, the Domain Name is an abusive registration as its linking of the Complainant’s famous trade mark with adult and pornographic material is detrimental to the reputation of the mark.
j. In addition, the Domain Name (in particular the NOKIA part of the Domain Name) is used solely to attract, for commercial gain, internet users to the Respondent’s website and further or alternatively to create the impression that the Respondent’s website is in some way sponsored, affiliated or endorsed by the Complainant. Thereby the Respondent is taking unfair advantage of the Complainant’s trade mark, goodwill and reputation by using it in relation to its business of providing ringtones for mobile phones.
k. The Complainant will contest any submission the Respondent may make where he asserts that he has used the Domain Name in connection with a genuine offering of goods or services. He is at liberty to register a generic domain name referring to ringtones without the use of the Complainant’s trade mark.

To succeed in this Complaint, the Complainant has to prove to the Expert on the balance of probabilities, pursuant to §2 of the Policy, both legs of the test that:

1. it has rights (as defined in §1 of the Policy) in respect of a name or mark identical or similar to the Domain name; and
2. the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in §1 of the Policy).

The Complainant has substantial rights in the word “nokia” as evidenced by registered trademarks and global branding of the mark. The Domain Name includes, but is not identical to, the name “nokia”, discounting the wholly generic domain suffix “.co.uk”.

The remaining elements of the Domain Name (“1”, “ring”, “tones”) are generic terms with the latter two being descriptive of products and associated services that are available via the website. Thus, the distinctive component of the Domain Name is the word “nokia” and in this context it will be seen as a famous brand name relevant to the products and services. The generic terms do not render “nokia” and the Domain Name dissimilar.

The Expert finds therefore that the Complainant has rights in respect of a name or mark that is similar to the Domain Name.

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration, are set out in §3 of the Policy.

The Complainant argues that the Respondent’s use of the Domain Name is abusive under §3a.ii in that it is being used in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.

The Complainant presents no evidence of actual confusion. Nevertheless, the Complainant has not authorised the use of “nokia” in the Domain Name and it is used prominently on the Respondent’s website. Furthermore, the Respondent has not offered any evidence to justify use of the Domain Name and makes no effort to disassociate the website from the Complainant. That is not to say that had the Respondent disclaimed any association with the Complainant that it would have been sufficient to defend a complaint of Abusive Registration.

The Complainant encourages third parties to develop and sell ring tones, screen logos, games and so on (“Products”) for its mobile phones. The fact that Products are available so readily from many suppliers enhances the attractiveness of the Complainant’s mobile phones and, arguably, increases the Complainant’s sales. It seems reasonable therefore to conclude that the Respondent used “nokia” in the Domain Name to attract owners of Nokia products to the website in order to gain an advantage in a competitive market. Owners are likely to use the name of their mobile phone and the name of the desired Product in a web search. This clearly gives the Respondent an advantage over other websites that do not use the Complainant’s mark in the domain name or metatags. Furthermore, it is likely that some people would not know that the Domain Name was not connected with the Complainant and possibly this would lead those people to purchase from the Respondent believing it to be a site endorsed by or connected with the Complainant. The Expert concurs with the Complainant’s argument, drawn from Nokia Corporation v Just Phones Ltd, that the Respondent chose the Domain Name because that would take advantage of the reputation and goodwill established by the Complainant.

The list of factors set out in §3 of the Policy is a non-exhaustive list. The offerings of potentially offensive imagery from the website is detrimental to the Complainant’s reputation and goodwill and is therefore a contributing factor to Abusive Registration.

Accordingly, the Expert finds that on the balance of probabilities the Respondent is using the Domain Name in a manner consistent with §3(a)(ii) of the Policy and in contravention of §1(ii) of the Policy and it is therefore an Abusive Registration.

In light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name, 1-nokia-ring-tones.co.uk, be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Nokia Corporation -v- Nokia Ringtones [2004] DRS 1493 (5 March 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1493.html Cite as: [2004] DRS 1493