WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Motorola, Inc. v. Mr. Josip Broz
Case No. D2002-1063
1. The Parties
The Complainant is Motorola Inc., 1303 E. Algonquin Road, Schaumburg, Illinois 60196-1079, United States of America.
The Respondent is Mr. Josip Broz, Unit 218, 28 Old Brompton Road, London SW7 3SS, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is <motorolaunlocking.com>, registered with Easyspace.com, 2 Park Court, Pyrford Road, West Byfleet, Surrey KT14 6SD, United Kingdom of Great Britain and Northern Ireland.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 20, 2002. On November 21, 2002, the Center transmitted by email to Easyspace a request for registrar verification in connection with the domain name at issue. On November 25, 2002, Easyspace 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 administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 November 27, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2002. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on December 18, 2002.
The Center appointed Gunnar Karnell as the sole Panelist in this matter on January 17, 2003. 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
In accordance with Paragraph 3(b)(xiii) of the Rules, the Complainant has agreed to submit, only with respect to any challenge that may be made by the Respondent to a decision by the Administrative Panel, to transfer or cancel the domain name that is the subject of its Complaint, to the jurisdiction of the courts at the location of the domain name holders address, as shown for the registration of the domain name in the concerned registrarís WHOIS database at the time of the submission of the Complaint to the Center.
The Complainant has referred to MOTOROLA as a world wide known trademark and in particular to its status as a common law trademark, also referring to documents evidencing registration of 14 U. K. registrations of the trademark MOTOROLA for goods and services, classes 7, 9, 11, 16, 17, 20, 25, 37, 38, 41 and 42, as well as one U. K. registration of a figure-mark M in a Circle devise mark (class 9). Some of the MOTOROLA registrations mentioned also depict the M in a Circle device (with disclaimers for the use of the letter "M"). The trademark MOTOROLA is also contained in a number of domain names.
5. Partiesí Contentions
Motorola Inc. is the owner of trademarks in various countries of the world, being represented in some 70 countries by sites and offices. Information about the company and its products is provided at "http://www.motorola.com."
The Complainant provides integrated communication solutions and embedded electronic solutions. It manufactures mobile telephones. Products and services are varied. It provides embedded chip system level and end to end network communication solutions for the individual, work team, vehicle and home. In the U. K., the Complainant uses its trademark MOTOROLA in relation to inter alia telephone communication products, services and accessories.
In April 2002, it came to the attention of the Complainant that the website <motorolaunlocking.com> used the trademark MOTOROLA in its domain name and that, at that, it also Ė just preceding the domain name Ė showed the figure-mark as mentioned here above. The impression given was that it was an official website of the Complainant, when, in fact, that was not the case. Investigations showed that the registrant was an individual acting under the name of the late Yugoslavian Marshal Tito (Ü 1980). The address listed for the Respondent on the WHOIS database is not the physical address of Josip Broz (whoever he may be), but the address of Mail Boxes Etc., 8 Tottenham Court Road, London W1T 1BL, U. K., his e-mail address being a hotmail account. Furthermore, investigations have shown that individuals using the names of Andre Skuro/AndreSkoro/AKSO were all using the same address Ė Unit 218, 28 Old Brompton Road, London SW/ 3SS, U. K. Ė to register .co.uk domain names. It is evident that the Respondent is using a number of different identities to register domain names. The trading address on the <motorolaunlocking.com> web site belongs to Mail Boxes Etc. The Complainant submits that the Respondentís use of a fictional name and a front company mail box suggests that the Respondent does not intend to use the domain name for legitimate business.
The website attached to the domain name offers for sale software designed to unlock MOTOROLA mobile phones. An individual would want to unlock a mobile phone to allow the phone to be used with a simcard from another service provider than the original one, to which the phone was locked. This would violate the terms of the standard agreement between an individual and a service provider. Unlocking would also enable the use of the mobile phone after it had been locked by the service provider, e. g. after report about theft of the phone. Each phone model requires different software to unlock it.
The Complainant does not sell unlocking software. However, software supplied by the Complainant can be modified by unscrupulous programmers to perform an unlocking function. The Complainant submits that the software offered from the Respondentís website must be unauthorised modified software or specially created unlocking software, created without the Complainantís authorisation. Attempts during the investigation to buy unlocking software offered for sale by the <motorolaunlocking.com> website have failed.
Recent attempts to access the website have shown that the domain name now resolves to a front page from the domain name registrar, stating that it is "registered for a client" or "for a client by Easyspace." However, it is still registered in the Respondentís name. There must be a strong likelihood that the Respondent will use the domain name as used before.
a) Identity or confusing similarity
The Complainant submits that the domain name is identical with the trademark MOTOROLA, contending that the suffix "unlocking" is descriptive of the products offered through the website attached to the domain name and that it should be ignored in the context of the current dispute. Alternatively, the Complainant submits that the domain name is confusingly similar to the Complainantís unregistered and registered trademark MOTOROLA. The Complainant also submits that the domain name is identical to or confusingly similar to the Complainantís own domain name <motorola.com>.
b) Rights or legitimate interests
The Respondent has no rights or legitimate interest in the domain name.
The Respondentís use of the domain name is not connected to a bona fide offering of good or services. Goods offered for sale and attempted to be purchased have not been supplied. Any software offered for sale or supplied through the website will be unauthorised. There is no kind of authorisation from the Complainant. There is no evidence found that the Respondent is commonly known by the domain name. Consequently, the Respondentís domain name cannot be considered registered and used bona fide. The Respondent uses it with intent for commercial gain by misleadingly diverting consumers to the website by using the Complainants trademark in its domain name. Consumers can believe that the use is endorsed by the Complainant and/or that the software emanates from or is authorised by it or that it can be used legitimately. The Complainant does not have any control over what may be supplied to a consumer over the website. The software may damage Motorolaís mobile phones or be used for illegitimate purposes and it is unlikely that it is the Complainantís own unmodified software that is sold by Respondent. Also, consumers may believe that the Complainant endorses the unlocking of mobile phones. Association and perceived endorsement as mentioned would tarnish the Complainantís trademark.
c) Use in bad faith
The Complainant submits that the domain name <motorolaunlocking.com> was registered and is being used in bad faith to attract consumers to the Respondentís website for financial gain, seeking payment for the software offered by his website. The use has created a likelihood of confusion with the Complainantís trademark as to the source, affiliation or endorsement of the Respondentís goods/website, a confusion further compounded by the unauthorised use of the Complainantís M in a Circle device trademark on the website. The Complainant also submits that the domain name may have been registered primarily for the purpose of causing disruption or embarrassment to the Complainant. The software offered for sale can be used by consumers to violate their contractual agreements with their mobile service providers, those being among the Complainantís largest and most important customers. By linking the domain name to the sale of such software the Respondent must have known that a link between such software and the Complainant was thereby suggested and must have known that this would be likely to disrupt the Complainantís business or cause the Complainant embarrassment. The Complainant also submits that the Respondentís registration details constitute an attempt to hide its real identity and thwart any efforts by interested parties to bring legal proceedings. Bad faith can be inferred where the Respondent uses the name of a non-existent business entity, such as, in the case at hand, the name of a deceased famous individual and covert postal addresses.
d) Request remedy
The Complainant requests that the Administrative Panel issue a decision that <motorolaunlocking.com> be transferred to the Complainant.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
a) Identical or Confusingly Similar
The domain name <motorolaunlocking.com> is confusingly similar to the registered trademarks MOTOROLA notwithstanding the added gTLD ".com" and the word "unlocking", the latter being just descriptive of what must be understood as related only as an attachment, referring to products or services provided under the trademark MOTOROLA.
b) Rights or Legitimate Interests
The Complainant has engaged in considerable efforts to establish contact with the Respondent, without any other success than to have found use of the domain name together with the Complainantís M in a Circle device on replies to an order about an unlocking device that never ended in any delivery. In serious business, a party may, under restricting circumstances, be allowed to use another partyís trademark without authorisation in order to indicate e.g. ability to provide services or appliances particularly suited for goods carrying the mark. The circumstances in this case do not provide any excuse for the manner in which the Complainantís trademarks have been used by the Respondent. The Panel concludes from the Complainantís statements, supported by documentation provided to the Panel, that the Respondent has no rights, nor any legitimate interests in the domain name.
c) Registered and Used in Bad Faith
The Complainant has pointed out a substantial number of reasons, supported by textual evidence, why it should be understood that the domain name has been registered and is used in bad faith. The Panel finds that the Respondent must have had and currently has the intention to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, affiliation or endorsement of the Respondentís goods and/or service on the website. This confusion will evidently be reinforced by the combined use of the M in a Circle device trademark together with the domain name. Also, the combination attests effectively to the use in bad faith of the domain name. Furthermore, the character of the goods offered gives to understand that the domain name may well have been registered primarily for the purpose of causing disruption of business or embarrassment to the Complainant. Other circumstances, indicated by the Complainant in support of its contentions of registration and use in bad faith, surely indicate deviant behaviour from legitimate business practices on the part of the Respondent. The Panel finds that the domain name has been registered and is being used in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <motorolaunlocking.com> be transferred to the Complainant.
Dated: January 23, 2003