WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Motorola Trademark Holdings, LLC v. shaoxiaogen, xiaogen shao, gaohaolvshishiwusuo, shenzhongchao, zhongchao shen

Case No. D2012-1780

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 Respondents are shaoxiaogen, xiaogen shao, gaohaolvshishiwusuo, shenzhongchao, zhongchao shen, of Beijing, China.

2. The Domain Names and Registrars

The disputed domain names <atrixhd.com>, <droidblade.com>, <droidfighterhd.com>, <droidrazrhd.net>, <fighterdroid.com>, <fightermoto.com>, <fightermotorola.com>, <hellomotorola.com>, <himotorola.com>, <motofighter.com>, <motofighter.net>, <motorolaatrixhd.com>, <motorolablade.com>, <motoroladroidblade.com>, <motoroladroidfighter.com>, <motoroladroidfighter.net>, <motoroladroidrazrhd.com>, <motorolafighter.com>, <motorolafighter.net>, <motorolahd.com>, <motorolapay.com>, <motorolaqinara.com>, <motorolarazrblade.com>, <motorolarazrhd.com>, <motorolatouch.com>, <motorolavanquish.com>, <motorola5g.com>, <razrhd.net>, <razrmaxxhd.com>, <razrv.com>, <turnmoto.com> and <turnmotorola.com> are registered with Jiangsu Bangning Science & Technology Co Ltd.

The disputed domain names <droidm.com>, <motoroladroidm.com>, <motoroladroidrazrmaxxhd.com>, <motorolascalpel.com> and <motoroladroidrazrm.com> are registered with eName Technology Co Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2012. On September 5, 2012, the Center transmitted by email to Jiangsu Bangning Science & Technology Co Ltd a request for registrar verification in connection with 32 of the disputed domain names. On September 6, 2012, Jiangsu Bangning Science & Technology Co Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Respondent sent an email communication to the Center on September 10, 2012. The Complainant filed an amended Complaint on September 11, 2012 adding 5 additional disputed domain names. On September 14, 2012, the Center transmitted by email to eName Technology Co Ltd a request for registrar verification in connection with the additional disputed domain names. On September 14, 2012, eName Technology Co Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the additional disputed domain names and providing the contact details. On September 14, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding by the specified due date.

The Center verified that the Complaint together with the amended 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 Respondents of the Complaint, and the proceeding commenced on September 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2012. The Respondents did not submit any Response. Accordingly, the Center notified the parties of the Respondents’ default on October 12, 2012.

The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on October 24, 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

A. Complainant

The Complainant is a company incorporated in the State of Illinois in the United States of America.

The Complainant is the owner of numerous registrations worldwide for the trade marks MOTOROLA, MOTO and ATRIX, and is the licensee of the trade marks RAZR and DROID, in respect of numerous goods and services, in particular mobile phones and devices (together, the “Trade Marks”).

The Complainant’s MOTOROLA trade mark is a well-known trade mark.

B. Respondent

The Respondents¹ are individuals apparently with addresses in China.

C. The Disputed Domain Names

The table in Schedule A lists relevant registrant and registrar information for each of the disputed domain names in the WhoIs records at the time of filing of the amended Complaint, and the status of each of the disputed domain names at the time of filing of the amended Complaint.

The disputed domain names were registered on the following dates:

<atrixhd.com> July 5, 2012

<droidblade.com> March 27, 2012

<droidfighterhd.com> March 19, 2012

<droidrazrhd.net> July 1, 2012

<fighterdroid.com> March 19, 2012

<fightermoto.com> March 19, 2012

<fightermotorola.com> March 19, 2012

<hellomotorola.com> February 19, 2012

<himotorola.com> February 19, 2012

<motofighter.com> March 5, 2012

<motofighter.net> March 5, 2012

<motorolaatrixhd.com> July 5, 2012

<motorolablade.com> March 27, 2012

<motoroladroidblade.com> March 27, 2012

<motoroladroidfighter.com> February 23, 2012

<motoroladroidfighter.net> February 23, 2012

<motoroladroidrazrhd.com> February 19, 2012

<motorolafighter.com> March 5, 2012

<motorolafighter.net> March 5, 2012

<motorolahd.com> February 19, 2012

<motorolapay.com> February 19, 2012

<motorolaqinara.com> April 17, 2012

<motorolarazrblade.com> March 28, 2012

<motorolarazrhd.com> April 14, 2012

<motorolascalpel.com> September 3, 2012

<motorolatouch.com> February 19, 2012

<motorolavanquish.com> April 17, 2012

<motorola5g.com> February 19, 2012

<razrhd.net> July 1, 2012

<razrmaxxhd.com> April 19, 2012

<razrv.com> July 10, 2012

<turnmoto.com> March 16, 2012

<turnmotorola.com> March 16, 2012

<droidm.com> August 23, 2012

<motoroladroidm.com> August 23, 2012

<motoroladroidrazrmaxxhd.com> September 6, 2012

<motoroladroidrazrm.com> September 6, 2012

5. Parties’ Contentions

A. Complainant

The Complainant made the following submissions in the Complaint.

The Complainant is a well-known manufacturer and distributor of innovative goods and services, including mobile phones and devices. It has been using the MOTOROLA trade mark since 1930.

The Complainant has been using for many years the Trade Marks in respect of its mobile phones and devices worldwide.

The disputed domain names are confusingly similar to the Trade Marks. They incorporate in their entirety the Trade Marks.

The Respondent has no rights or legitimate interests in respect of the disputed domain names. The disputed domain names have been either linked to parking websites with sponsored links to third party websites offering for sale competing mobile phones and devices (the “Websites”), or linked to the same Chinese language websites, or are being passively held.

The Respondent has registered and used the disputed domain names in bad faith as:

1. They comprise the Complainant’s well-known Trade Marks and the Respondent should or ought to have known of the Complainant’s trade mark rights when registering the disputed domain names;

2. Most of them have been redirected to parking pages offering commercial sponsored links, thereby taking advantage of the Complainant’s reputation and goodwill in order to generate profits; and

3. The disputed domain names have been offered for sale at prices exceeding their registration costs.

The Respondent first contacted the Complainant’s legal advisers by email sent from the email address “n[…]@gmail.com” on May 5, 2012 offering to sell 27 of the disputed domain names. In subsequent email communications, including emails sent from both of the Respondent’s email addresses “n[…]@gmail.com” and “k[…]@yahoo.cn”, the Respondent and the Respondent’s agent, […] Thomas:

1. Offered to sell 35 of the disputed domain names to the Complainant for USD 2,200 on September 5, 2012;

2. Offered to sell all 37 of the disputed domain names to the Complainant for USD 2,000 on September 10, 2012; and

3. Offered to sell all 37 of the disputed domain names to the Complainant for USD 1,500 by further email sent on September 10, 2012

B. Respondent

The Respondent sent an email communication to the Center on September 10, 2012, but it did not reply to the Complainant’s substantive contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the registration agreements for the disputed domain names is Chinese.

Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English.

Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) Electrical Appliance Co. Ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).

The Complainant has requested that English be the language of the proceeding for the following reasons:

(1) Its communications with the Respondent and its agent have all been in English;

(2) The disputed domain names use English text and not Chinese characters;

(3) The Websites are mainly English language websites; and

(4) Conducting the proceeding in a language other than English would delay the proceeding, would incur significant translation costs on the part of the Complainant, and would be unfair to the Complainant.

The Respondent did not file a Response and did not file any submissions with respect to the language of the proceeding.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).

Six of the disputed domain names were previously linked to the same Chinese language website “www.stsjtq.com”. Whilst this might support a suggestion the Respondent is not proficient in the English language, the link has since been removed and each of these six disputed domain names is, at the time of this Decision, being passively held.

No less than 20 of the disputed domain names have been linked to English language parking websites with sponsored links.

Furthermore, the Respondent and/or its representatives have entered into English language email negotiations with the Complainant and its legal advisers with respect to the offer for sale of the disputed domain names.

The Panel therefore finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.

In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.

Having considered all the matters above, the Panel determines under paragraph 11(a) that the language of the proceeding shall be English.

6.2. Consolidation of Respondents

UDRP jurisprudence suggests consolidation of multiple respondents may be appropriate, under paragraphs 3(c) and 10(e) of the Rules, even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve (Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281).

In the present case, as particularised in Schedule A, the registrant in the WhoIs record at the time of filing of the amended Complaint in respect of 20 of the disputed domain names is apparently the same person,

shaoxiaogen xiaogen shao. The registrant for a further 5 of the disputed domain names is shaoxiaogen gaohaolvshishiwusuo. The individual registrant for these 5 disputed domain names, shaoxiaogen, is apparently the same person as the registrant for the 20 disputed domain names registered in the name of shaoxiaogen xiaogen shao.

The registrant in the WhoIs record at the time of filing of the Complaint in respect of the remaining 12 disputed domain names is apparently the same person, shenzhongchao zhongchao shen.

The listed contact information in respect of each of the disputed domain names is largely the same. The same email address, “n[…]@gmail.com”, is listed for each of the 25 disputed domain names listed in the name of shaoxiaogen. The same email address, “k[…]@yahoo.cn”, is listed for the remaining 12 disputed domain names.

32 of the disputed domain names share the same Registrar, Jiangsu Bangning Science & Technology Co Ltd, and the remaining 5 disputed domain names share the same Registrar, eName Technology Co Ltd.

Each of the disputed domain names comprises at least one of the Trade Marks of the Complainant in its entirety². The disputed domain names have been used in the same manner in respect of websites displaying sponsored commercial links, with the same colour schemes and layout, or otherwise have been linked to the same Chinese language website, or have been passively held.

The Respondent has offered to sell all 37 of the disputed domains to the Complainant, by emails from “n[…]@gmail.com” and “k[…]@yahoo.cn”, sent to the Complainant’s representatives.

All of the above clearly suggests common control is being exercised over the disputed domain names.

In all the circumstances, the Panel determines, under paragraph 10(e) of the Rules, that consolidation of the Respondents in respect of each of the disputed domain names is procedurally efficient and equitable to all the parties.

Accordingly, the Panel, having regard to all relevant circumstances, concludes that consolidation of the Respondents is consistent with the Policy and Rules, and comports with prior relevant UDRP decisions in this area.

6.3. Decision

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration which predate the dates of registration of the disputed domain names.

UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

It is also established that the addition of generic terms to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).

Each of the disputed domain names comprises at least one of the Trade Marks in its entirety. Some combine two. Many are identical with products or services offered by the Complainant under the Trade Marks. Insofar as some of the disputed domain names contain, in addition to the Trade Marks, additional letters or words, these are all generic words or letters, none of which serve to distinguish the disputed domain names from the Trade Marks in any significant way.

The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Marks and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain names:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organisation) has been commonly known by the disputed domain names even if the Respondent has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Marks. The Complainant has prior rights in the Trade Marks which precede the Respondent’s registration of the disputed domain names by many years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain names have been used either:

1. In respect of the Websites, which have not been authorised by the Complainant, and which provide sponsored links to third party websites, including those of the Complainant’s competitors; or

2. In order to attract Internet users redirected to the Chinese website “www.stsjtq.com”; or

3. Have been passively held.

There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.

There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.

The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:

By using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

Pursuant to paragraph 4(b)(i) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:

Circumstances indicating that the Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names’ registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names.

The Respondent has clearly engaged in a pattern of conduct of registering the disputed domain names comprising the Trade Marks, without the authorisation or approval of the Complainant, in order to profit by attracting users to the Websites, or alternatively, in order to offer them for sale at prices exceeding the Respondent’s reasonable registration costs. The Panel finds such use of the disputed domain names in this manner is clear evidence of bad faith.

The Panel therefore finds, in all the circumstances, the requisite element of bad faith has been satisfied, under paragraphs 4(b)(i) and 4(b)(iv) of the Policy.

For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.

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 <atrixhd.com>, <droidblade.com>, <droidfighterhd.com>, <droidrazrhd.net>, <fighterdroid.com>, <fightermoto.com>, <fightermotorola.com>, <hellomotorola.com>, <himotorola.com>, <motofighter.com>, <motofighter.net>, <motorolaatrixhd.com>, <motorolablade.com>, <motoroladroidblade.com>, <motoroladroidfighter.com>, <motoroladroidfighter.net>, <motoroladroidrazrhd.com>, <motorolafighter.com>, <motorolafighter.net>, <motorolahd.com>, <motorolapay.com>, <motorolaqinara.com>, <motorolarazrblade.com>, <motorolarazrhd.com>, <motorolascalpel.com>, <motorolatouch.com>, <motorolavanquish.com>, <motorola5g.com>, <razrhd.net>, <razrmaxxhd.com>, <razrv.com>, <turnmoto.com>, <turnmotorola.com>, <droidm.com>, <motoroladroidm.com>, <motoroladroidrazrmaxxhd.com> and <motoroladroidrazrm.com>be transferred to the Complainant.

Sebastian M.W. Hughes
Sole Panelist
Dated: November 7, 2012

SCHEDULE A

¹ For ease of reference, the Panel shall refer to the Respondents in the singular for the remainder of this Decision.

² Some contain two.