The Complainant is Motorola, Inc., Schaumburg, Illinois, United States of America, represented by Katten Muchin Rosenman LLP, United States of America.
The Respondent is R3 Media, Scottsdale, Arizona, United States of America,
represented by an internal representative.
2. The Domain Name and Registrar
The disputed domain name <motorazr.com> (the “Domain Name”)
is registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2006. On November 1, 2006, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On November 6, 2006, OnlineNic, Inc. d/b/a China-Channel.com 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 administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 November 16, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2006. The Response was filed with the Center on December 6, 2006, and a Revised Response was filed on December 8, 2006.
The Center appointed Thomas D. Halket as the sole panelist in this matter on December 18, 2006. 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.
On January 17, 2007, based on paragraphs 10(d) and 12 of the Rules of the Policy,
the Panel invited the Complainant to submit by January 23, 2007, any evidence
which it has (i) that the Respondent registered the disputed domain name with
knowledge of the Complainant’s then current or anticipated trademark rights
in the word MOTORAZR and (ii) of the date of Complainant’s first use of
that word as a trademark. Respondent was permitted to file an answer limited
to new matters in the Complainant’s submission on or before January 29, 2007.
Both parties made such filings.
4. Factual Background
Complainant is a global leader in various electronics and communications businesses including wireless and broadband communications technologies, embedded electronic products, and design, manufacture and sale of cellular telephones. Complainant’s RAZR cellular telephone is one of Complainant’s current popular product offerings. It commenced marketing those phones in or about May 2004.
Complainant has been identified by its MOTOROLA trademark and trade names for several decades. Complainant states that it has also been known and identified by its abbreviated MOTO trademarks and trade names for many years. In that regard, it also contends that it has used its MOTO and MOTORAZR trademarks continuously since their adoption. From the Complainant’s pleadings, it does not appear to be making any claims in this proceeding in relation to separate use of the term “RAZR” as a mark.
The exhibits to the Complaint contain a TARR web site search for USPTO filings on MOTO and MOTORAZR. With respect to MOTO, the search reveals that the application was filed on January 15, 2001, the notice of allowance was dated December 14, 2004, and that a request for a third extension of time to file a statement of use was recently granted. For MOTORAZR, the search reveals that the application was filed on June 28, 2005, and that it is currently published for opposition. There are no dates of first use for either mark listed in the search. Complainant does allege that it commenced using the MOTORAZR mark in May 2004, presumably when it started marketing the RAZR line of phones, but has provided no evidence of such date of use for MOTORAZR, either in its original filing or in its supplemental filing, notwithstanding the express invitation of the Panel to do so. Respondent, apparently assuming that a trademark registration filing is the equivalent of the use of that trademark, contests that allegation.
Respondent, or its representative, apparently stated on July 27, 2004, on a website named “www.phonemag.com” that “Motorola should rename the handset to MOTORAZR (it just sounds coo[l]).” Complainant alleges that Respondent made such statement knowing, or having reason to know, of Complainant’s “MOTO family” of marks and that “Motorola would later be unveiling this new phone under the name MOTORAZR.” Respondent claims that its remark was innocent and that, based on Complainant’s failure to register the mark at the time, “Motorola clearly was not interested in using the MOTORAZR name” at the time of the product launch.
The Domain Name was registered by Respondent on July 29, 2004.
Respondent alleges that it started using it shortly thereafter, an allegation
which does not seem to have been refuted by Complainant. The parties do strongly
contest the nature of Respondent’s web site. Respondent claims it is in
the nature of a news service site for many cellular products which is funded
by revenue from advertisements placed on it. Complainant claims Respondent is
using the Domain Name to misdirect customers to advertising sites for commercial
gain.
5. Parties’ Contentions
A. Complainant
Complainant alleges:
(a) The Domain Name is identical and confusingly similar to a trademark or service mark in which the Complainant has rights;
(b) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(c) The Domain Name was registered and is being used by Respondent in bad faith.
B. Respondent
Respondent denies these allegations.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: “(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and, (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and, (iii) that the domain name has been registered and is being used in bad faith.”
Paragraph 4(b) provides that for the purposes of Paragraph 4(a)(iii) the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The Panel notes that this has been a difficult case to decide, particularly on the basis of the limited evidence provided and within the more narrow confines of the UDRP process.
A. Identical or Confusingly Similar
The first part of the Policy is composed of two tests: whether the domain name in question is identical or confusingly similar to a trademark or service mark and whether the complainant has rights in that mark. There is no question that the Domain Name is identical to the MOTORAZR mark.
The question of whether the Domain Name is confusingly similar to the MOTO mark is not so clear. Complainant seems to claim that its use and rights in the mark MOTO give it rights under the Policy in what it claims is the MOTO family of marks - that is, MOTO used with another word, coined or not, or even a series of letters. But surely that claim, if indeed Complainant is making it, can not be sustained, even if one assumes that Complainant has rights in MOTO itself. If it were sustained, Complainant would be able to claim that marks such as MOTO and RWAY combined (that is - MOTORWAY) or MOTO and RCROSS combined (MOTORCROSS) or MOTO and RCYCLE (MOTORCYCLE) were confusing similar to MOTO. That result would not be tenable; something more is necessary. In the instant case, that something more would be rights in the other word or letters in the combination, here namely RAZR, or in the combination itself. However in the present proceedings, the Complainant’s pleadings primarily assert rights in MOTO and MOTORAZR, rather than RAZR.
The second test of this part of the Policy is whether Complainant has rights in the claimed MOTORAZR mark. Although disputing the date on which Complainant obtained its rights, even Respondent apparently initially conceded in its first response that Complainant now has such rights. In its second filing, however, Respondent seems to contest whether Complainant ever has used MOTORAZR as a trademark notwithstanding the TARR information.
The TARR report does indicate that Complainant filed an application for a trademark registration for MOTORAZR. Provided there is evidence of use, such an application may contribute to establishing Complainant rights in the mark sufficient for the purposes of the Policy. Complainant has offered evidence of some current use of MOTORAZR as a mark. While there is uncertainty as to when these rights were first acquired, the Panel will assume for this part of the Policy that Complainant has some rights in the mark MOTORAZR. While the date on which Complainant obtained those rights may be of significance for other parts of the Policy, they are not relevant to this part – this part of the Policy only speaks in the present. According to established precedent, Complainant need only have the rights at the time the Complaint was filed.
To sum up, the Panel finds that the Domain Name is identical or confusingly similar to the MOTORAZR mark in which Complainant has rights.
B. Rights or Legitimate Interests
Because of the Panel’s finding under the third part of the Policy, the
Panel also need not determine whether the Respondent has any rights or legitimate
interests in respect of the Domain Name. In particular, the Panel was not required
to decide the impact of the disputed nature of Respondent’s website –
that is, whether a “news service website”, as Respondent alleges
his is, that includes advertisements for products that may or may not be produced
by Complainant, can be a bona fide use in the circumstances presented
here. See, e.g., among other cases cited by Complainant, DFO, Inc. v. Christian
Williams, WIPO Case No. D2000-0181.
C. Registered and Used in Bad Faith
The final part of the Policy is whether the domain name in question was registered
and is being used in bad faith. Here, the case turns on whether the Respondent
registered the Domain Name in bad faith. A finding of bad faith registration
in violation of paragraph 4(a)(iii) of the Policy requires that the Respondent
had knowledge of a mark in which the Complainant has demonstrated rights or,
in appropriate circumstances (e.g. anticipated mergers, or inside knowledge
of business plans), is likely to have rights. See, e.g., ExecuJet Holdings
Ltd. v. Air Alpha America, Inc. WIPO Case
No. D2002-0669.
The Complaint asserts that: “Respondent registered the <motorazr.com> domain name in bad faith with full knowledge of the MOTORAZR mark and the MOTO Family of Marks. Indeed, it is simply not possible to conceive of any plausible circumstance where Respondent could have coincidentally registered the domain name without first knowing of and intentionally infringing upon the MOTORAZR mark and the MOTO Family of Marks.”
The Panel is unable to find on the basis of the evidence provided that Complainant has met its burden to establish that the Domain Name was registered in bad faith. Simply put, despite having been expressly invited to do so by the Panel, Complainant has failed to either allege or prove a date of first use of the MOTORAZR mark, and has not otherwise provided information allowing the Panel to conclude that the Respondent was at the time of the registration of the Domain Name aware of Complainant’s alleged likely future use of such mark.
As to actual use, the first date pertinent to Complainant’s use of MOTORAZR
established conclusively is June 28, 2005, the filing date of Complainant’s
trademark registration application set forth in the TARR report. That date is
almost one year after the registration of the Domain Name. Of course, to be
sure it is the earlier of the use of the mark by it or its registration and
not, as Respondent contends, its registration only that would be determinative
in this regard. There are many WIPO decisions holding that unregistered marks
are a sufficient basis on which to base a claim under the Policy. See, e.g.,
Antonio de Felipe v. Registerfly.com, WIPO
Case No. D2005-0969, CavinKare Private Limited v. LaPorte Holdings, Inc.
and Horoshiy, Inc.,D2004-1072
and Sibyl Avery Jackson v. Jan Teluch, WIPO
Case No.D2002-1180. But no such earlier use has been shown by Complainant.
Complainant does allege that it did so use the mark, but it is an allegation which is contested by Respondent and Complainant has offered no underlying proof of the allegation. It has submitted no dated first-use publication containing the mark. Even the TARR search does not contain a specified date of first use. Furthermore, the application for registration is dated over a year after the alleged date of first use and almost one year after the Domain Name was registered and used by Respondent.
The Domain Name is a combination of two words each of which Complainant may
very well have been using at the time of the registration of the Domain Name.
Citing decisions such as Kudos Information Limited v. Kudos Systems, WIPO
Case No. D2004-0015, Complainant argues that its trademark rights need not
be in existence on the day the Domain Name was registered if it can be reasonably
concluded that Respondent then ought to have been aware that Complainant would
likely be using the mark or marks in question. Panels have indeed held that
an awareness of likely use may in appropriate circumstances be a valid basis
on which to find a violation of the Policy as noted above. However in the present
case, the Panel believes such factors as the disputed nature of Respondent’s
site, Complainant’s significant delay in attempting to register the mark
and the unexplained reasons therefore, the disputed, unplead and unproven timing
and nature of Complainant’s first use of the MOTORAZR mark and the absence
of any claim based on or relevant evidence about the RAZR mark are all reasons
for caution in applying it to this matter.
The record contains no explanation of why the evidence of Complainant’s real and actual use of MOTORAZR is so thin, why a year passed from product launch to trademark application, and why Complainant failed to respond to the Panel’s express invitation to provide further information. In the present abbreviated proceedings, with these questions and issues open, the Panel on balance concludes that it has no choice but to decline to make a finding of bad faith in this matter.
This conclusion however should not be construed as an endorsement of Respondent’s use of the Domain Name or a finding that such use does not infringe any mark which Complainant may own or otherwise violate any other right at law which Complainant may have; only that, under the facts established in the record, Complainant has failed to meet its burden of proof that the Domain Name violates the Policy. In particular, the Panel finds difficult to swallow Respondent’s claim that, because he allegedly “coined” the term MOTORAZR, this somehow establishes the Respondent’s rights in the disputed domain name. The Panel notes in this respect that MOTORAZR is an obvious combination of the Complainant’s existing MOTO mark and the term RAZR, a term it seems Respondent simply took from Complainant’s first announcement of its new “Motorola RAZR V3” handset in the course of 2004. However this may be, it is not an issue on which the Complainant has chosen to make arguments and present evidence in the present proceedings.
Perhaps pertinent United States law would provide Complainant with a cause
of action in court to cancel or transfer the Domain Name. Such a proceeding
would be a fully contested one, with a full evidentiary proceeding for the parties.
On the other hand, because the instant proceedings under the Policy are necessarily
abbreviated, the Panel, with some regret, does not feel that the state of the
record provides an adequate basis for a final determination in this case.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Thomas D. Halket
Sole Panelist
Dated: February 15, 2007
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