World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Motorola Trademark Holdings, LLC v. Michael Fournier

Case No. D2012-1990

1. The Parties

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 Respondent is Michael Fournier of Toulouse, France.

2. The Domain Names and Registrar

The disputed domain names <motarolarazr.com>, <motocellphone.com>, <motocellphones.com>, <motomobiles.com>, <motophones.com>, <motorazer.com>, <motorazor.com>, <motorazorv3.com>, <motorazrv.com>, <motorolarazer.com>, <motorolarazerv3.com>, <motorolarazrv.com> and <motov3.com> are registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 9, 2012. On October 10, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 10, 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 October 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2012.

The Center appointed Andrew F. Christie as the sole panelist in this matter on November 13, 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 is a wholly owned subsidiary of Motorola Mobility LLC, which is a successor of Motorola Inc. Since 1928 the Complainant, through its predecessors-in-interest, affiliated companies and licensees, collectively known as “Motorola”, has been in the business of innovation in the communication and electronics industries. Motorola is a well-known, worldwide innovator and provider of numerous goods, including, but not limited to, mobile phones.

Motorola offers its goods under the MOTOROLA trademark. The MOTOROLA trademark has been used continually since 1930. It is registered in over 100 countries, with the first registration dating from 1943. Motorola has established a significant online presence for its products and services through the registration of a variety of domain names incorporating its MOTOROLA trademark, including the domain name <motorola.com>.

The Complainant is also the owner of various trademark registrations consisting of the characters MOTO, either on their own or together with other words or characters, such as MOTOSPEAK and HELLOMOTO (collectively the “MOTO trademarks”). The MOTO trademarks are registered in over 100 countries, with the first registration dating from 2005.

Motorola is the exclusive licensee, in relation to mobile phones, of the RAZR trademark, which is owned by Razor USA LLC and Razor IP Sub LLC. Since 2004 Motorola has sold mobile phones using or incorporating the RAZR trademark, including RAZR V, RAZR V3, and MOTORAZR.

The disputed domain names were all registered between November 21, 2004, and November 28, 2004. The Complainant has provided screenshots of the websites to which the disputed domain names resolve, showing that all but one contain links that direct users to sponsored links for other websites, which offer goods and/or services relating to the Complainant and/or its competitors. The website to which the disputed domain name <motarolarazr.com> resolves has a heading but no content.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names, all of which were registered after Motorola’s first use of the MOTOROLA and MOTO trademarks, and after the introduction of its mobile phones sold under the RAZR trademark, are either identical to, incorporate in their entirety, and/or are comprised of common misspellings of, the Complainant’s trademarks, and are therefore confusingly similar to its trademarks. The Complainant contends that the Respondent has engaged in “typosquatting”, that is “taking advantage of common misspelling made by Internet users who are looking for a particular provider of goods or services, in order to obtain some benefit therefrom”.

The Complainant contends that the Respondent has no legitimate interests in the disputed domain names because: (i) the Respondent has not made demonstrable preparations to use the disputed domain names in connection with any bona fide offering of goods or services, but rather is passively holding them; (ii) all but one of the disputed domain names (<motarolarazr.com>) feature links that, when clicked on, direct users to sponsored links for other commercial websites offering goods and services competing against or relevant to the Complainant, which presumably provide income to the Respondent; (iii) the Respondent has no agreements with the Complainant authorizing it to use the Complainant’s trademarks; (iv) the Respondent has not been commonly known by the names comprised, in whole or in part, of the terms “Motorola”, “moto” or “razr”; and (v) the Respondent neither owns any trademark registrations for any mark comprised, in whole or in part, of the terms “Motorola”, “moto” or “razr”, nor has applied for any such trademark registrations.

The Complainant contends that the disputed domain names were registered and are being used in bad faith because: (i) the Respondent registered them without Motorola’s authorization; (ii) by virtue of the Complainant’s trademark registrations and the long use and popularity of Motorola mobile phones, the Respondent had constructive notice of the Complainant’s rights to the Complainant’s trademarks prior to acquiring the disputed domain names; (iii) registration of multiple domain names that are confusingly similar to established trademarks is evidence of bad faith; and (iv) the Respondent registered the disputed domain names under a fictitious mailing address, resulting in the return of at least one of the Complainant’s cease and desist letters, and the Respondent had done this previously as outlined in the case La Maison Coloniale Int. v. Michael Fournier, WIPO Case No. D2007-0643.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain names fall into one of three categories:

(1) Domain names the first part of which consists of the Complainant’s trademark MOTOROLA or a misspelling thereof, followed by the characters “razr” or a misspelling thereof, in some cases with the additional characters “v3” or “v”, followed by the gTLD identifier – that is, <motarolarazr.com>, <motorolarazer.com>, <motorolarazerv3.com>, and <motorolarazrv.com>.

(2) Domain names the first part of which consists of the Complainant’s trademark MOTO, followed by the characters “razr” or a misspelling thereof, in some cases with the additional characters “v3” or “v”, followed by the gTLD identifier – that is, <motorazer.com>, <motorazor.com>, <motorazorv3.com>, and <motorazrv.com>.

(3) Domain names the first part of which consists of the Complainant’s trademark MOTO, followed by words descriptive of mobile phone products or by the character “v3”, followed by the gTLD identifier – that is, <motocellphone.com>, <motocellphones.com>, <motomobiles.com>, <motophones.com>, and <motov3.com>.

The disputed domain names in category (1) incorporate the whole of the Complainant’s registered trademark MOTOROLA or an obvious misspelling thereof. This Panel finds that neither the addition of the characters “razr” (or a misspelling thereof) nor the addition of the characters “v3” or “v” lessens the inevitable confusion of these disputed domain names with the Complainant’s MOTOROLA trademark, since these additional characters are used by the Complainant in conjunction with its MOTOROLA trademark (in the case of “razr”, under exclusive license from the owner of the RAZR trademark).

The disputed domain names in category (2) incorporate the whole of the Complainant’s registered trademark MOTO. This Panel finds that neither the addition of the characters “razr” (or a misspelling thereof) nor the addition of the characters “v3” or “v” lessens the inevitable confusion of these disputed domain names with the Complainant’s MOTO trademark, since these additional components are used by the Complainant in conjunction with its MOTO trademark (in the case of “razr”, under exclusive license from the owner of the RAZR trademark).

The disputed domain names in category (3) incorporate the whole of the Complainant’s registered trademark MOTO. This Panel finds that neither the addition of the words “cellphone”, “cellphones”, “mobiles”, “phones” nor the characters “v3” lessens the inevitable confusion of these disputed domain names with the Complainant’s MOTO trademark, since these additional components are either words descriptive of the products in respect of which the Complainant uses its trademark MOTO or are characters used by the Complainant in conjunction with its MOTO trademark.

Accordingly, this Panel finds that each of the disputed domain names is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its MOTOROLA or MOTO trademarks, or its exclusively licensed RAZR trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain names, or that it has, for any other reason, rights or legitimate interests in the disputed domain names. The evidence provided by the Complainant shows that the disputed domain names were used to resolve to web sites containing either no content or links that direct users to sponsored links for other websites, which offer goods and/or services relating to the Complainant and/or its competitors. According to the present record, the disputed domain names are not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in any of the disputed domain names.

C. Registered and Used in Bad Faith

The disputed domain names were registered in November 2004. This is many decades after the first use and registration of the MOTOROLA trademark, and before the Complainant first used its MOTO trademark and the RAZR trademark under exclusive license. The evidence on the record provided by the Complainant with respect to the use of its MOTOROLA and MOTO trademarks, and the use of the RAZR trademark under exclusive license, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy this Panel that, at the time the disputed domain names were registered, the Respondent most likely knew of the Complainant’s MOTOROLA and MOTO trademarks, and the RAZR trademark, and knew that it had no rights or legitimate interests in the disputed domain names. The evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain names indicates that the Respondent has used the disputed domain names to attract, or to attempt to attract, for commercial gain, Internet users to websites by creating confusion with the Complainant’s trademarks as to the affiliation of those websites. Additionally, under the circumstances described above, this Panel finds that the use of the disputed domain name <motarolarazr.com> to be consistent with a finding of bad faith under this Policy element, – as per paragraph 3.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). For all these reasons, this Panel is satisfied 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 <motarolarazr.com>, <motocellphone.com>, <motocellphones.com>, <motomobiles.com>, <motophones.com>, <motorazer.com>, <motorazor.com>, <motorazorv3.com>, <motorazrv.com>, <motorolarazer.com>, <motorolarazerv3.com>, <motorolarazrv.com>, and <motov3.com> be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Dated: November 27, 2012

 

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