The Complainant is Motorola Trademark Holdings, LLC of Libertyville, Illinois, United States of America (“U.S.”) represented by Katten Muchin Rosenman LLP, U.S.
The Respondent is Alan Sekely of Los Angeles, California, U.S. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the”Center”) on August 1, 2012. On August 2, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 3, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain names.
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 August 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on August 29, 2012.
The Center appointed Dennis A. Foster as the sole panelist in this matter on September 12, 2012. 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. 4. Factual Background
The Complainant a U.S. company (through its predecessors-in-interests, affiliated companies and licensees) is well-known worldwide as a producer of electronic products, including mobile telephones. The Complainant has marketed those phones under the marks, MOTOROLA and RAZR, for which it has obtained trademark registrations throughout the world, including with the United States Patent and Trademark Office (“USPTO”): e.g., for MOTOROLA (Registration No. 0399935; registered February 9, 1943); and for RAZR (Registration No. 3692608; registered July 21, 2009). The Complainant has also begun selling such phones under the brand name, “RAZR V3,” in 2004.
The disputed domain names, , , , were registered, respectively, on the following dates December 8, 2009, December 4, 2009 and December 8, 2009. There is no content currently appearing at the disputed domain names. 5. Parties’ Contentions A. Complainant
Founded in the United States of America, the Complainant is a well-known company that markets primarily electronic products worldwide, including mobile phones and related devices. In operation since 1928, the Complainant has used the MOTOROLA trademark for its products since 1930, and possesses trademark registrations for that mark in virtually every country in the world. Along with several trademark filings with the USPTO, the Complainant also boasts a strong online presence and owns several domain names, including .
In or around 2004, the Complainant introduced a new line of mobile phones under the RAZR trademark. Over 130 million of such phones have been sold internationally, and those phones are the best selling “clamshell” phone in the world. The Complainant has continued to release new versions of those phones under separate marks, including, without limitation, RAZR V3, which was in use as early as the third quarter of 2004. The Complainant has obtained valid trademark registrations for its RAZR mark throughout the world, including with the USPTO.
Years after the Complainant’s adoption of the MOTOROLA and RAZR marks, the Respondent registered the disputed domain names, , , . The Complainant attempted to contact Respondent with cease-and-desist letters, email and telephone messages, but the Respondent failed to reply to any.
The disputed domain name, , incorporates in full both the Complainant’s MOTOROLA and RAZR marks. Therefore, that name is confusingly similar to those marks. Likewise, the disputed domain names, and , are confusingly similar to the RAZR and RAZR V3 marks owned by the Complainant.
The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has no agreements, express or implied, with the Complainant to use any of Complainant’s trademarks. The Respondent has no trademark registrations or applications for either the MOTOROLA or RAZR marks. The Respondent is not commonly known by any name that is composed of those marks. Moreover, the Respondent’s passive use of the disputed domain names does not constitute a bona fide offering of goods or services.
The disputed domain names were registered and are being used in bad faith. Given the worldwide notoriety of the Complainant’s MOTOROLA mark, the Respondent’s registration of the disputed domain names must have been in bad faith. Furthermore, in view of the Complainant’s trademark registrations and the popularity of the RAZR mobile phone, the Respondent had at least constructive knowledge of the Complainant’s rights in its trademarks before registering the disputed domain names.
The Respondent’s nonuse of the disputed domain names, as well as his registration of multiple infringing domain names, is evidence of the Respondent’s bad faith registration and use of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraphs 4(a)(i)–(iii) of the Policy, the Panel shall find that the Complainant has succeeded in this proceeding and should gain transfer of the disputed domain names, , and , in the event that the Complainant establishes that:
- The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
- The disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Panel is well aware of the Complainant’s MOTOROLA trademark and is convinced that the Complainant has rights in that mark. Moreover, the Complainant has furnished the Panel with evidence (Complaint, Annexes E and G3) that it has obtained valid registrations, including with the USPTO, for not only the MOTOROLA mark but the RAZR mark as well, so that the Panel concludes that the Complainant has rights in that mark also. See The SANS Institute v. WhoisGuard,WIPO Case No. D2007-0426 (“Complainant has established rights in the SANS mark through registration with the USPTO.”); and Save the Children Federation, Inc. v. Steve Kerry dba North West Enterprise, Inc.,WIPO Case No. D2006-0388.
The Complainant has not provided the Panel with evidence that the Complainant has a valid registration for the RAZR V3 trademark, but that circumstance does not necessarily mean that the Complainant fails to have rights in that mark. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.7. As the evidence submitted by the Complainant (Complaint, Annex G1) supports its use of the RAZR V3 trademark in connection with the extensive worldwide promotion and sale of mobile phones beginning in late 2004, the Panel believes that the Complainant has obtained common law rights in that mark sufficient to satisfy the requirements of Policy paragraph 4(a)(i). See Lilian Vachovsky, COO, Aplus.Net Internet Services v. A+ Hosting Inc.,WIPO Case No. D2006-0703 (“Under United States trademark law, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner.”); and Wal-Mart Stores, Inc. and Mrs. Helen Walton v. Bestinfo/David Webb,WIPO Case No. D2005-0086 (“The Panel finds that Complainant Wal-Mart Stores, Inc. has common law rights in the trademark SAM WALTON by virtue of its prominent and continuous use in conjunction with its SAM’S CHOICE brand of products.”).
The Panel accepts the validity of Complainant’s submission on this issue because the Respondent has failed to file a Response, and thus the Panel deems that the Complainant’s reasonable assertions, not inconsistent with the Panel’s independent knowledge or the case record, shall be considered true. See Desotec N.V. v. Jacobi Carbons AB,WIPO Case No. D2000-1398 (“Respondent has not reacted to the Complaint within the time period set by the WIPO Center and consequently is in default. Under these circumstances, all allegations contained in the Complaint are deemed to be correct to the extent not contradicted by any evidence or documents on file.”); and Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. 95095 (“The Respondent submitted no response in this matter. As a result, all reasonable inferences of fact in the allegations of the Complainant will be deemed true.”).
The Panel discerns that the disputed domain name, , is identical to the combination of the Complainant’s RAZR and MOTOROLA marks, excluding the addition of the “.com” suffix (which is inconsequential in ascertaining identity between a domain name and a mark under a Policy analysis). As such, the Panel believes that the disputed domain name is at least confusingly similar, if not identical, to both trademarks, which are owned exclusively by the Complainant. See, for example, Abertis Infraestructuras, S.A. v. Syed Hussain (PDAPB),WIPO Case No. D2006-1007 (finding to be confusingly similar to the ABERTIS and AUTOTRADE marks owned by the complainant).
The disputed domain name, , is confusingly similar to both of the Complainant’s marks, RAZR and RAZR V3, in the Panel’s view, because: (i) the addition of the term “v3” fails to materially distinguish that name from the RAZR mark, which is entirety contained in the name; and (ii) the reversal of order in that name of the terms “v3” and “razr” does not distinguish the name from the RAZR V3 mark sufficiently to avoid reasonable Internet user confusion. See The State of Florida, Department of the Lottery v. Valhalla Properties SA / Kattia Rodriguez Chacon,WIPO Case No. D2012-0316 (finding to be confusingly similar to the FLORIDA LOTTERY mark.); and Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493 (finding the disputed domain name, , to be confusingly similar to the trademark, MICROSOFT).
Finally, the Panel can see that, arguably, the disputed domain name, , may not be confusingly similar to the Complainant’s RAZR mark because that name is dominated by a common term, “razor.” However, the Panel does find confusing similarity between that disputed domain name and the Complainant’s common law trademark, RAZR V3, because the identical “v3” appendage in that name and the mark cement the near visual and phonetic (“razr” would be pronounced in the same manner as would “razor”) identity between “razor” and “razr,” the primary terms, respectively, of the name and the mark. In other words, the Panel believes that the addition of the “v3” appendage blunts any possible contention that a reasonable Internet user would likely construe as pertaining to “razors” (i.e., sharp-edged instruments) as opposed to the Complainant’s trademarked mobile telephones.
Accordingly, the Panel finds that the Complainant has successfully demonstrated that the disputed domain names are identical or confusingly similar to trademarks in which the Complainant owns rights. B. Rights or Legitimate Interests
To the Panel’s mind, the Complainant has clearly sustained a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has contended, without contradiction, that it never entered into any agreements with the Respondent with respect to the use of any of the Complainant’s trademarks, and demonstrated that the disputed domain names are confusingly similar to those marks. The Panel looks now for the Respondent to come forward with rebuttal evidence suggesting that it does possess such rights or legitimate interests. See Philip Morris USA Inc. v. yfmg,WIPO Case No. D2010-0058 (“Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name.”); and G.D. Searle & Co. v. Martin Marketing, NAF Claim No. 118277 (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”).
As noted above, the Respondent has come forward with no evidence. Furthermore, the circumstance of this case and the Complainant’s submissions support the conclusion that the Respondent’s actions do not fall within the parameters of Policy paragraph 4(c), which delineates three ways in which a respondent might establish said rights or legitimate interests. Clearly, there is no reason for the Panel to believe that the Respondent, named “Alan Sekely,” is commonly known by any of the disputed domain names, so Policy paragraph 4(c)(ii) is inapplicable to this case. Moreover, the Complainant has contended believably that the Respondent has failed to put the disputed domain names to any use. Therefore, the Panel can apply neither Policy paragraph 4(c)(i), requiring at least demonstrable preparations to use the disputed domain names “in connection with a bona fide offering of goods or services,” nor Policy paragraph 4(c)(iii), requiring “noncommercial or fair use” of the disputed domain names. See State Farm Mutual Automobile Insurance Company v. Fred Sotelo d/b/a Toltec, NAF Claim No. 1008269 (“Each domain name currently resolves to an inactive website. Registration alone without demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate noncommercial or fair use under Policy 4(c)(iii) is insufficient to establish rights or legitimate interests in a disputed domain name.”); and Pharmacia & Upjohn Company v. Thomas Habif,WIPO Case No. D2001-0404 (“Respondent’s website is not active; thus, it is clear that Respondent is not using the domain name in connection with the bona fide offering of goods or services…or that any use is noncommercial or ‘fair.’")
Since the Complainant’s prima facie case remains undisturbed, the Panel finds that the Complainant has successfully shown that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and is using the disputed domain names in bad faith because he must have known of the Complainant’s rights in its trademark due to the fame of the MOTOROLA mark and the worldwide popularity of the MOTOROLA RAZR mobile phones. Also, the Complainant asserts that the Respondent was under constructive notice of those rights as a result of the Complainant’s trademark registrations. Moreover, the Complainant argues that the Respondent’s failure to put the disputed domain names into use and the Respondent’s registration of many other names that apparently infringe upon well-known marks owned by others are conclusive evidence of such bad faith registration and use.
The Panel agrees that the MOTOROLA trademark is of such renown that ownership of a confusingly similar domain name by anyone not licensed or affiliated with the Complainant would smack of bad faith registration and use on its face. Ergo, under the circumstances, the Panel finds that clearly the disputed domain name, , was registered and being used in bad faith. See Google Inc. v. Eamonn Smyth,WIPO Case No. D2011-1023 (“The Panel also notes that, as found by other panels, where a domain name is so obviously connected with a well-known product or service, its very use by someone with no connection with the product suggests opportunistic bad faith.”); and Microsoft Corporation v. Luong Xuan Vinh.,WIPO Case No. D2007-0580 (“the Respondent’s bad faith may also be inferred from the fact that he registered the Disputed Domain Name incorporating the Complainant’s famous trademark, despite having no connection with the Complainant.”).
As to the remaining two disputed domain names, and , which are not confusingly similar to the famous MOTOROLA trademark, the Panel is hesitant to apply the same reasoning. The Panel is also hesitant to conclude that the Respondent’s registration of other domain names, i.e., , , , , etc., which would appear to tread on famous marks owned by others, necessarily means that the Respondent has engaged in a pattern of registering and using domain names in bad faith, because the Complainant has not furnished the Panel with any evidence that Respondent has ever been found in any prior proceeding (under the UDRP or otherwise) to be guilty of bad faith registration and use of a domain name. See WIPO Overview 2.0, paragraph 3.3.
However, the Panel is troubled by the fact that the Respondent has not put those two remaining disputed domain names to use after more than two years of registration. The Panel believes that such passive holding, together with the circumstances of the Respondent’s presumed knowledge of the Complainant’s popular phone products, the Complainant’s trademark registrations and the Respondent’s zealous registration of domain names of dubious legitimacy, is more than enough evidence to conclude that the Respondent registered and is using the disputed domain names, and , in bad faith. (This reasoning also extends to and supports the Panel’s finding of bad faith registration and use of the disputed domain name ). See State Farm Mutual Automobile Insurance Company v. Fred Sotelo d/b/a Toltec, supra. (“the Panel finds that Respondent’s failure to make an active use of the [disputed] domain names is indicative of bad faith registration and use pursuant to Policy, paragraph 4(a)(iii)”); and Microsoft Corporation, supra (“the passive holding of the Disputed Domain Name which appears to have never been actively used by the Respondent also constitutes evidence of bad faith.”).
As reasoned above, the Panel rules that the Complainant has successfully established under the circumstances that the disputed domain names have been registered and are being used in bad faith. 7. Decision
For 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, , and , be transferred to the Complainant.
Dennis A. Foster
Sole Panelist
Dated: September 26, 2012
Full & Egal Universal Law Academy