The Complainant is Motorola Trademark Holdings, LLC of Libertyville, Illinois, United States of America, represented by Katten Muchin Rosenman LLP, United States of America.
The Respondents are Yellowfinstate, LLC and Michael Preneur of Toulouse, France. 2. The Domain Names and Registrar
The disputed domain names and are registered with eNom
(the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 15, 2012. On October 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 17, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details.
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 Respondents of the Complaint, and the proceedings commenced on October 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on November 21, 2012.
The Center appointed Ms Francine Tan as the sole panelist in this matter on November 28, 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 states that it has, since 1928, through its predecessors-in-interest, affiliated companies and licensees been involved in innovation in the communications and electronics industries. It asserts that it is well-known worldwide as a producer of, inter alia, mobile phones and devices. The Complainant markets these goods under the MOTOROLA trade mark, which is registered in more than 100 countries in the world. The MOTOROLA trade mark has been used continually on goods since 1930. Motorola has also established a significant online presence for its products and services through the registration of a variety of domain names incorporating its MOTOROLA trade mark, including the domain name registered on December 15, 1994.
The Complainant submitted evidence of its ownership of United States federal trade mark registrations for its MOTOROLA trade mark dating from as early as 1943. It states that as a result of its extensive use and advertising of the MOTOROLA trade mark, including use on Internet websites located at domain names incorporating the MOTOROLA trade mark, the MOTOROLA trade mark has become well-known.
The Complainant also claims to possess rights in the names of various mobile phone models, including the highly successful “Razr” (pronounced as “razor”) line of mobile phones. The Complainant launched the “Razr” line of mobile phones in 2004, and with over 130 million of the original “Razr” mobile phones sold, it became the best-selling clamshell phone in the world.
The Complainant is the exclusive licensee of the RAZR trade mark for mobile phones from the trade mark owners, Razor USA LLC and Razor IP Sub LLC. The RAZR trade mark has been registered in the United States and throughout the world, and each of the RAZR trade mark applications and registrations is valid and subsisting.
Since 2004, the Complainant has continued to introduce new mobile phones under the RAZR trade mark including RAZR 2, RAZR V and RAZR V3. The Motorola RAZR V3 was the first and main phone of the Motorola Razr series.
The disputed domain names were registered on November 10, 2004. 5. Parties’ Contentions A. Complainant
1. The disputed domain names are confusingly similar to the marks MOTOROLA and RAZR (“the Complainant’s trade marks”) in which the Complainant has rights as they incorporate the MOTOROLA trade mark in its entirety and a common misspelling of the RAZR trade mark, “Razor”.
2. The Respondents have no rights or legitimate interests in the disputed domain names and this is supported by the fact that the Respondents have not made demonstrable preparations to use the disputed domain names in connection with any bona fide offering of goods or services. Instead, the Respondents are passively holding the disputed domain names which does not constitute use in connection with an offering of goods and services. The corresponding websites feature links that when clicked on, direct users to sponsored links for other commercial websites which offer goods and services competitive and/or related to those of the Complainant, including mobile phones. Such links to third-party sites, such as those on the Respondents’ webpages, are not legitimate use under the Policy because presumably the Respondents receive “click through” income whenever an Internet user clicks on one of the links. Furthermore, the Respondents have no agreements, express or implied, with the Complainant authorizing them to use the Complainant’s marks. Neither have the Respondents been personally identified or commonly known by names comprising, in whole or in part, the terms “MOTOROLA” or “RAZR”. The Respondents have neither registered nor applied for any trade mark comprising, in whole or in part, the terms “MOTOROLA” or “RAZR”.
3. The disputed domain names were registered and are used in bad faith. The fact that the Respondents registered the disputed domain names without the Complainant’s authorization is, in and of itself, evidence of bad faith. By virtue of the Complainant’s United States and worldwide trade mark and service mark registrations, and the long use and popularity of the Complainant’s mobile phones, the Respondents had constructive notice of the Complainant’s rights to the Complainant’s marks, prior to acquiring the disputed domain names. It is inconceivable that the Respondents could have coincidentally registered the disputed domain names without first knowing of the Complainant and its popular RAZR mobile phones, and without intentionally infringing upon the Complainant’s trade marks.
The timing of the Respondents’ registration of the disputed domain names also suggests bad faith and an intention to capitalize on the success of the Complainant’s popular “Razr” mobile phones. The “Razr” phones were released for sale in the third quarter of 2004, just months before the Respondents registered the disputed domain names which incorporate a mis-spelling of the RAZR trade mark. The registration of multiple domain names that are confusingly similar to established trade marks is evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy stipulates that the Complainant has to establish the following before it can successfully obtain an order for the remedy requested in these proceedings, namely the transfer of the disputed domain names:
(a) The disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(b) The Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(c) The disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant’s MOTOROLA trade mark is, without doubt, a well-known mark and the Complainant has shown that it has rights to the mark.
As regards the RAZR trade mark, the Complainant has submitted evidence of its status as the exclusive licensee of the trade mark for use in relation to mobile phones from the trade mark owners, Razor USA LLC and Razor IP Sub LLC. Although the RAZR trade mark is not a registered trade mark of the Complainant, there is no doubt that it has, as exclusive licensees of the RAZR trade mark, rights therein (see Teva Pharmaceutical USA, Inc. v US Online Phamacies,WIPO Case No. D2007-0368: “As the controlling parent corporation and exclusive licensee of the trade mark owner, Complainant has sufficient rights to satisfy Policy, paragraph 4(a)(i)”; and Komatsu Deutschland GmbH v. Ali Osman / ANS,WIPO Case No. D2009-0107: “The Panel acknowledges and agrees with the Complainant that in previous instances, past panels have permitted parties with beneficial rights to a trademark to assert their claims”).
The evidence submitted by the Complainant also shows use and extensive promotions of the RAZR V3 trade mark in relation to mobile phones since its launch in the third quarter of 2004. As such, the Panel finds that the Complainant has obtained rights at common law in the RAZR V3 trade mark which satisfies the requirements of paragraph 4(a)(i) of the Policy.
The Panel finds that the disputed domain names are indeed confusingly similar to the trade marks MOTOROLA, RAZR and RAZR V3 in which the Complainant has rights. The disputed domain name is a combination of the MOTOROLA mark and the word “Razor” which is visually and phonetically similar to the trade mark RAZR. The disputed domain name is a combination of the MOTOROLA mark and the term “razorv3” which is visually and phonetically similar to the trade mark RAZR V3 in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
In the Panel’s view, the Complainant has established a prima facie case that the Respondents have no rights or legitimate interests in respect of the disputed domain names. There is no evidence from the Respondents which rebut or contradict the Complainant’s contentions (i) that the Complainant has never entered into any agreement with the Respondents authorizing them to use the Complainant’s marks; (ii) that the Respondents have not been commonly known by the names comprised in the disputed domain names in whole or in part; and (iii) that the Respondents have not made any demonstrable preparations to use the disputed domain names in connection with any bona fide offering of goods or services.
Whilst the use of domain names to direct users to sponsored links is not objectionable per se, in this case, the trade marks MOTOROLA, RAZR and RAZVR V3 are clearly well-known marks and therefore, unless there is clear unequivocal evidence proffered by the Respondents to show that notwithstanding the nature of the said trade marks, they have rights or legitimate interests in respect of the disputed domain names, the Panel cannot but make a finding in the Complainant’s favour. There is no basis for the Panel to expect that the Respondents would be commonly known by the disputed domain names. As the Respondents have not put forward any evidence in support, the Complainant’s prima facie case remains unchallenged.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is of the view that the fame of the trade marks MOTOROLA, RAZR and RAZR V3 is such that the registration of an identical or confusingly similar domain name incorporating the said trade marks and/or mis-spellings thereof by someone who is not licensed, authorized or affiliated with the Complainant would be a strong prima facie indication of bad faith (see Google Inc. v. Eamonn Smyth,WIPO Case No. D2011-1023: “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 Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163: “ is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”)
The timing of the registration of the disputed domain is a further indication of bad faith. Considering how well-known the MOTOROLA and RAZR trade marks are and were at the time of registration of the disputed domain names, it would be implausible that the Respondents were unaware of the Complainant and of its business and trade marks.
The Panel finds that the circumstances of this case fall within the provisions of paragraph 4(b) (iv) of the Policy: “by using the domain name, [the Respondents] have intentionally attempted to attract, for commercial gain, Internet users to [their] web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark[s] as to the source, sponsorship, affiliation, or endorsement of [the Respondents’] web site or location or of a product or service on [their] web site or location”.
For the reasons set forth above, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy. 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.
Francine Tan
Sole Panelist
Date: December 4, 2012
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