WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Motorola Inc. v. Zhoushanjeweldesign
Case No. DCC2002-0003
1. The Parties
The Complainant is Motorola, Inc. a Delaware corporation with its principal place of business in Schaumberg, Illinois, USA. The Complainant is represented by Mr. John Gibbs of Phillips Ormonde & Fitzpatrick, Solicitors, of Melbourne, Victoria, Australia.
The Respondent is zhousanjeweldesign, wei jiang, of Zhoushan, Zheijang, China. The Respondent has not filed a Response and is not represented.
2. The Domain Name and Registrar
The domain name at issue is <motorola.cc>.
The domain name is registered with eNic Corporation of Seattle, WA, USA (the "Registrar"). The domain name was first registered on June 17, 2002.
3. Procedural History
The Complaint submitted by the above Complainant was received on September 18, 2002, (email) and September 24, 2002, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
On September 19, 2002, a request for Registrar verification was transmitted by the WIPO Center to the Registrar, requesting it to:
- Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
- Confirm that the domain name <motorola.cc> is registered with it.
- Confirm that the Respondent is the current registrant of the domain name.
- Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the building contact for the domain name.
- Confirm that the Uniform Domain Dispute Resolution Policy ("UDRP") applies to the domain name.
- Indicate the current status of the domain name.
- Indicate the specific language of the registration agreement as used by the registrant for the domain name.
- Indicate whether the domain name registrant has submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising form the use of the disputed domain name.
- Confirm that the domain name will remain locked during the pending administative proceedings.
By email dated October 2, 2002, the Registrar advised WIPO Center as follows:
- It has received a copy of the Complaint.
- It is the Registrar of the domain name registration <motorola.cc>.
- The UDRP applies to the domain name.
- The Respondent is shown as the administrative and billing contact. A telephone number was also given for the Respondent.
- The language of the registration agreement is English. The Respondent agreed to the terms of the registration agreement online by pressing an ‘I agree’ button.
- The Registrar will act in accordance with Paragraphs 3 and 7 of the Uniform Domain Name Dispute Resolution Policy ("UDRP") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (the "Policy").
- The domain name was to be locked as from that date.
- The domain name registrant is bound by the guidelines set out in the Rules.
Having verified that the Complaint satisfied the formal requirements of the UDRP and the Rules for Uniform Domain Name Resolution Policy ("Rules"), the WIPO Center on October 2, 2002, transmitted by post-courier and by email a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent as named in the Complaint.
The Complainant elected to have its Complaint resolved by a sole panelist: It has duly paid the amount required of it to the WIPO Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. No response was filed by the Respondent and a Notice of Respondent’s Default was sent by the Center on October 28, 2002. The Center had received an email communication from the Respondent on October 11, 2002, complaining that the documents he had received were in English and asking for a translation. The WIPO Center replied in October 14, 2002, that the proceeding was in the English language and that no translation was possible.
The Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted to him a Statement of Acceptance and requested a declaration of impartiality and independence.
The Panelist duly advised acceptance and forwarded to the Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On November 4, 2002, the Center forwarded to the Panel by courier the relevant submissions and the record. The projected decision date is November 18, 2002.
The Panel has independently determined and agrees with the assessment of the Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
4. Factual Background
Complainant is the proprietor of numerous trademarks for the name ‘Motorola’ in the United States, Australia and many other countries. The Complainant has manufactured and promoted numerous products and services worldwide by the use of this mark since at least 1943. The trademarks cover a huge range of radio, telecommunications and other areas.
The Complainant owns top level domain names incorporating the words ‘Motorola’. The Complainant has spent large sums on promotion and advertising of the ‘Motorola’ brand in various countries.
The Respondent redirects traffic to the site of the disputed domain name to the site of one of the Complainant’s principal competitors, <nokia.com>.
5. Parties’ Contentions
The disputed domain name is identical to the trademarks in which the Complainant has rights.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has given him none.
There is no evidence of the Respondent’s use of or intention to use the domain name in connection with a legitimate offering of goods or services. The Respondent is not known by the disputed domain name.
The disputed domain name was registered so that its traffic is redirected to the website of a competitor of the Complainant. The Respondent is using the name in bad faith misleadingly to divert customers and to tarnish its well-known mark.
The Respondent has made no submissions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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".
The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:
- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- That the Respondent has no legitimate rights or interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
The disputed domain name is identical to the Complainant’s registered trademarks. The Panel considers the first criterion proved.
As to the second criterion, the Complainant gave the Respondent no legitimate rights or interest in respect of the domain name. That fact, on its own, can be sufficient to prove the second criterion. Paragraph 4(c) of the Policy sets out matters which a Respondent is entitled to raise which, if found by a Panel to be proved based on an evaluation of all evidence presented, should demonstrate a Respondent’s rights or legitimate interest to a domain name. None of these have been demonstrated. The second criterion is therefore proved.
As to bad faith registration and use, the Panel considers this criterion proved for the reasons:
(a) The Complainant’s mark is distinctive and is well-known and used in many countries over a wide variety of goods and services. It is well-known in Australia which administers the Cocos Islands which have the Internet cctld <.cc>.
(b) There is no evidence of any bona fide use of the name by the Respondent.
(c) The Respondent redirects traffic to the disputed domain name to a website of a competitor of the Complainant.
For the foregoing reasons, the Panel decides:
(a) That the domain name <motorola.cc> is identical to the trademark to which the Complainant has rights; and
(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) That the domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <motorola.cc> be transferred to the Complainant.
Hon. Sir Ian Barker QC
Dated: November 12, 2002