Complainant is Motorola Trademark Holdings, LLC of Libertyville, Illinois, United States of America, represented by Katten Muchin Rosenman LLP, United States of America.
Respondent is PeaceSearch.com, Ltd. of New York, New York, United States of America.
The disputed domain name <motorolasmartphones.com> is registered with Dynadot, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2011. On November 18, 2011, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the disputed domain name. On November 19, 2011, Dynadot LLC 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 Respondent of the Complaint, and the proceedings commenced on November 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 12, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 14, 2011.
The Center appointed Sandra J. Franklin as the sole panelist in this matter on January 26, 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.
Complainant is an internationally known provider of mobile phones, including smart phones, and other consumer products. Complainant owns hundreds of trademark registrations around the world for the mark MOTOROLA, which has been in use since 1928.
Respondent registered the domain name <motorolasmartphones.com> on April 4, 2010. The domain name resolves to a parked page featuring third party links including competitors of Complainant.
1. Respondent’s <motorolasmartphones.com> domain name is confusingly similar to Complainant’s MOTOROLA mark.
2. Respondent does not have any rights or legitimate interests in the <motorolasmartphones.com> domain name.
3. Respondent registered and is using the <motorolasmartphones.com> domain name in bad faith.
Respondent did not reply to Complainant’s contentions.
Paragraph 15(a) of the Rules instructs this 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., NAF Claim No. 95095 (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009 (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has presented sufficient evidence of its trademark registrations to establish rights in its marks under Policy paragraph 4(a)(i). See Google, Inc. v. DktBot.org, NAF Claim No. 286993 and Honeywell Int’l Inc. v. r9.net, NAF Claim No. 445594, where the panels similarly found that a complainant’s trademark registrations around the world are sufficient for it to establish Policy paragraph 4(a)(i) rights in its asserted mark.
Respondent’s <motorolasmartphones.com> domain name contains Complainant’s entire mark while adding the generic and descriptive terms “smart” and “phones,” insufficient to distinguish the disputed domain name from Complainant’s MOTOROLA mark. UDRP Panels in Novell, Inc. v. Kim, NAF Claim No. 167964 and Am. Int’l Group, Inc. v. Ling Shun Shing, NAF Claim No. 206399, found that adding terms to a mark in the domain name that are directly related to complainant’s business does not go far enough to distinguish the domain name from the mark. Adding the gTDL does not help, as all domain names must have a gTDL. See Trip Network Inc. v. Alviera, NAF Claim No. 914943 and Isleworth Land Co. v. Lost in Space, SA, NAF Claim No. 117330 (finding that the addition of a generic top-level domain (“gTLD”) such as “.com” is irrelevant to this analysis.) Therefore, the Panel finds that the <motorolasmartphones.com> domain name is confusingly similar to Complainant’s MOTOROLA mark under Policy 4(a)(i).
The Panel finds that Complainant has satisfied Policy paragraph 4(a)(i).
Complainant has alleged that Respondent does not have rights or legitimate interests in the <motorolasmartphones.com> domain name. Under Policy 4(a)(ii), Complainant is required to produce a prima facie case in support of its allegations and then the burden of production shifts to Respondent to prove it possesses rights or legitimate interests in the disputed domain name. The Panel finds Complainant has adequately established a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not possess rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., NAF Claim No. 118277 (“Because Complainant’s submissions constitute a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy 4(a)(ii)”); see also Am. Express Co. v. Fan Suhendro, NAF Claim No. 129120 (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name”). The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy 4(c).
Complainant states that it has not authorized Respondent to use its mark. The WhoIs information for the disputed domain name identifies “PeaceSearch.com, Ltd” as the registrant. Therefore, the Panel finds that based upon the WhoIs information and Complainant’s arguments, Respondent is not commonly known by the <motorolasmartphones.com> domain name under Policy 4(c)(ii). See Tercent Inc. v. Lee Yi, NAF Claim No. 139720 (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy 4(c)(ii) does not apply); see also Reese v. Morgan, NAF Claim No. 917029 (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WhoIs information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Further, Complainant alleges that the disputed domain name resolves to third party links from which Respondent derives “click-through” fees when misdirected Internet users click the links. The Panel finds that Respondent’s use of the domain name to post links to third-party websites for financial benefit does not amount to a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy 4(c)(iii). See Skyhawke Techs., LLC v. Tidewinds Group, Inc., NAF Claim No. 949608 (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy 4(c)(i), or a legitimate noncommercial or fair use under Policy 4(c)(iii).”); see also Tercent Inc. v. Lee Yi, NAF Claim No. 139720 (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
The Panel finds that Complainant has satisfied Policy, paragraph 4(a)(ii).
Respondent’s use of the <motorolasmartphones.com> domain name constitutes bad faith disruption to Complainant’s business. The website displays hyperlinks leading to competitors’ websites and away from Complainant’s website. The Panel concludes that such use of the disputed domain name is proof of bad faith registration and use pursuant to Policy 4(b)(iii). See Persohn v. Lim, NAF Claim No. 874447 (finding bad faith registration and use pursuant to Policy 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., NAF Claim No. 914854 (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy 4(b)(iii)).
Respondent’s use of the disputed domain name to intentionally misdirect Internet users to the corresponding website for financial gain is also evidence of bad faith registration and use pursuant to Policy 4(b)(iv). See TM Acquisition Corp. v. Warren, NAF Claim No. 204147 (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also Zee TV USA, Inc. v. Siddiqi, NAF Claim No. 721969 (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that Complainant has satisfied Policy, paragraph 4(a)(iii).
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 name <motorolasmartphones.com> be transferred to Complainant.
Sandra J. Franklin
Sole Panelist
Dated: February 9, 2012