The Complainant is Motorola, Inc., Illinois, United States of America, represented by Katten Muchin Rosenman LLP, United States of America.
The Respondent is ECM Electronics, New York 11735, United States of America.
The disputed domain name <motorola2wayradios.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2009. On October 14, 2009, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain name. On October 15, 2009, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant 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 Respondent of the Complaint, and the proceedings commenced on October 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 9, 2009.
The Center appointed Timothy D. Casey as the sole panelist in this matter on November 18, 2009. 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.
Complainant has used the trademark MOTOROLA (the “Motorola marks”) for goods since 1930, including, more recently, communications and electronics products, such as two-way radios. Complainant is the owner of at least eighteen registered trademarks in the United States and numerous additional registered trademarks in over 100 countries. Complainant's trademark registrations date back to 1943 and are well known around the world.
Complainant contends that the Motorola marks are famous and that prior WIPO panels have recognized the distinctiveness of Motorola marks. Complainant first notified Respondent of its rights in the Motorola marks in January 2009 and demanded Respondent cease and desists from further use. Respondent initially replied that it would be making arrangements to switch domain names and would discontinue use of the disputed domain name once a new name had been registered. Subsequent correspondence generated no further response from Respondent until a demand by Complainant's outside counsel prompted a reply from Respondent's outside counsel that it would not comply with Complainant's demands.
Complainant contends that the disputed domain name is identical to and incorporated in its entirety the Motorola mark and is being used in connection with the types of products sold by Complainant, namely two-way radios. Complainant contends that the addition of descriptive words such as “2wayradios” in the disputed domain name and the use of the generic top level domain of “.com” does not obviate similarity or confusion.
Complainant contends that Respondent has no right or legitimate interests in the disputed domain name. Respondent has no agreements with Complainant authorizing its use of the Motorola Marks and is not an authorized dealer, distributor or reseller, and even if it were, Complainant contends that such authorized parties are not permitted to use the Motorola Marks in a domain name. Complainant further contends that Respondent is not personally identified, or commonly known, by the term Motorola, only uses the disputed domain name for its website, and goes by the name ECM Electronics. Complainant also notes that Respondent owns no trademark registration for any mark comprised, in whole or in part, of the name Motorola and has not applied for use. Complainant lastly contends that Respondent use is commercial, does not constitute fair use, and infringes upon and is likely to cause confusion with the Motorola Marks.
Complainant contends that the disputed domain name was registered in bad faith with full knowledge of the Motorola Marks by virtue of Complainant's numerous trademark registrations around the world, which put Respondent on constructive notice of Complainant's rights in the Motorola Marks, prior to acquiring the disputed domain name. Complainant speculates that Respondent might attempt to claim that its use is not bad faith because the disputed domain name was registered several years ago (actually more than six years ago), but argues that Complainant's long delay is not a bar to this action and does not transform Respondent's use of the disputed domain name into a good faith use. Complainant further contends that Respondent's use of the dispute domain name has been for the purpose of intentionally attracting, for commercial gain, Internet user to Respondent's website, which Respondent sells Complainant's and other parties' products, including its own brand of competitive products.
Complainant requests the disputed domain name be transferred to Complainant.
Respondent is in default and did not reply to Complainant's contentions.
In the absence of any reply and the default by Respondent, the discussion and findings will be based upon Complainant's contentions and any reasonable position that can be attributable to Respondent.
Under paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before Complainant can succeed in an administrative proceeding under the Policy.
The disputed domain name fully and completely incorporates the Motorola Marks. The fact that the disputed domain name further includes certain descriptive phrases associated with Respondent's use of the disputed domain name to market and sell Complainant's products, as well as competitive products, or utilizes a generic top level domain, is of no merit.
The Panel finds the disputed domain name to be confusingly similar to the Motorola Marks and this element of the Policy to be met by Complainant.
Respondent does not allege it has any rights or legitimate interest in the disputed domain name or any parts thereof. Respondent has not been authorized by Complainant to utilize the Motorola Marks in the disputed domain name. Respondent does not appear to be personally identified with, or commonly known by, the term Motorola in any fashion, other than selling certain Motorola products. Respondent appears to operate under the name ECM Electronics and to sell its competitive products under a name that is not similar to the Motorola Marks, except in relation to the website. Respondent's use is clearly commercial and does not appear to constitute any form of fair use.
The Panel finds that Respondent does not have any rights or legitimate interest in the dispute domain name and this element of the Policy to be met by Complainant.
Respondent is seemingly in the business of selling two-way radios and other types of communications products, including those products made by Complainant. It is highly unlikely that Respondent was not aware of the Motorola Marks, which has been in use since 1930 and federally registered in the United States since 1943, prior to registering the disputed domain name. Respondent has used the disputed domain name for the bad faith purpose of driving commercial business to its website, which sells Complainant's products, as well as numerous competitive products, including Respondent's separately branded products. Respondent's only apparent contention regarding any right to use the disputed domain name has been in the form of a denial to a separate cease and desist demand made by Complainant, which is independent of the present dispute and of itself avails Respondent little in the present circumstances.
The fact that it took Complainant over six years to discover Respondent's use of the dispute domain name and/or to do anything about Respondent's use may be somewhat remarkable, but has no immediate bearing on the present decision. It is well established that the doctrine of laches, and similar equitable defenses, have no binding application under the Policy, and that a delay in pursuing rights under the Policy per se is not necessarily fatal to a complainant's case under the Policy. Only the time period between when the disputed domain name is registered and Complainant establishes its trademark rights has any relevance. In this case, Complainant began using the Motorola Marks more than 70 years before Respondent first registered the disputed domain name. The fact that it took Complainant another six years to discover this fact does not change the Panel's determination that the registration and use by Respondent was in bad faith. Accordingly, this element of the Policy has been met by Complainant.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <motorola2wayradios.com> be transferred to the Complainant.
Timothy D. Casey
Dated: November 30, 2009