WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Motorola Solutions, Inc. v. Harsh Patel, Technotek

Case No. D2020-0997

1. The Parties

The Complainant is Motorola Solutions, Inc., United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Harsh Patel, Technotek, India, self-represented.

2. The Domain Name and Registrar

The disputed domain name <vertexstandard.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2020. On April 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 2020, 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. On April 23 and 24, 2020, the Center received email communications from the Respondent in response to which the Center sent an email to the Parties regarding possible settlement. On April 29, 2020, the Complainant requested the proceeding to continue.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2020. On May 20, 2020, the Respondent requested for extension of the Response due date. Accordingly, the Center granted the Respondent the automatic four calendar day extension for response under paragraph 5(b) of the Rules. The Response was filed with the Center on May 25, 2020.

The Center appointed Luca Barbero as the sole panelist in this matter on June 3, 2020. 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 active in mission-critical communications, providing technology platforms for communication across command center software and video security solutions.

In 2008, the Complainant completed its tender offer to acquire a controlling interest in two-way radio provider Vertex Standard LMR, Inc. (“Vertex Standard”) for about USD 186 million. The Complainant tendered about 5.4 million shares for a 78% ownership stake. On January 1, 2012, the Complainant took full ownership of Vertex Standard. Vertex Standard was founded in 1973 with a focus on two-way radios for the amateur, marine and avionics segments.

The Complainant’s wholly owned subsidiaries Vertex Standard, USA Inc. and Vertex Standard Co., Ltd are the owners of several trademark registrations for VERTEX STANDARD, including the following, as per trademark certificates submitted as Annex 1 to the Complaint:

- United States trademark registration No. 1673843 for VERTEX (word mark), filed on June 26, 1990, and registered on January 28, 1992, in international class 9;

- United States trademark registration No. 2378101 for VERTEX STANDARD (word mark), filed on September 11, 1998, and registered on August 15, 2000, in international class 9;

- International trademark registration No. 750776 for VERTEX STANDARD (word mark), registered on December 27, 2000, in international class 9;

- Canadian trademark registration No. TMA580512 for VERTEX STANDARD (word mark), registered on May 2, 2003, in international class 9;

- Indian trademark registration No. 1001216 for VERTEX STANDARD (word mark), registered on April 3, 2001, in international class 9.

The Complainant is also the owner of the domain name <motorolasolutions.com>, which was registered on May 30, 2000, and is used by the Complainant to promote its products and services under the trademarks MOTOROLA and VERTEX STANDARD.

The disputed domain name was registered on October 20, 1999, and currently redirects to the website “www.reviewbilly.com”, providing reviews, comparisons and news about various products. Based on the screenshots submitted by the Complainant, the disputed domain name was pointed, at the time of the filing of the Complaint, to an undeveloped website, while before it redirected to the website “www.fbvideodowload.site”, providing a tool which enables to download videos from the Facebook website.

The disputed domain name was registered by the Complainant until the Complainant inadvertently failed to renew the registration for the disputed domain name in October 2019. The Respondent registered the disputed domain name shortly thereafter.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to the trademark VERTEX STANDARD in which the Complainant has rights, as it reproduces the trademark in its entirety with the mere addition of the generic Top Level Domain “.com”.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons:

- Based on the Respondent’s name as shown in the WhoIs records, the Respondent is not commonly known by the disputed domain name;

- As the Respondent has used the disputed domain name to redirect Internet users to a blank page, it has thus failed to make legitimate use of the disputed domain name;

- The Respondent’s previous redirection of the disputed domain name to a third-party website where users were able to download free videos also did not amount to a bona fide offering of goods and services.

The Complainant states that the Respondent registered and is using the disputed domain name in bad faith since:

- The Respondent assumed control of the disputed domain name on December 1, 2019, which is significantly after the Complainant filed its trademark applications for VERTEX STANDARD trademarks and the Complainant’s first use in commerce of the VERTEX STANDARD mark in 1973;

- The Complainant and its trademark VERTEX STANDARD are known internationally, with trademark registrations across numerous countries, including India;

- Due to the nature and world renown of the Complainant’s trademark, it is likely that the Respondent was well aware of the existence of the Complainant’s trademark rights at the time of registration;

- The disputed domain name resolves to an inactive website and is currently not being used;

- Due to the Complainant’s longstanding rights to the disputed domain name and the trademark VERTEX STANDARD and the identity of the disputed domain name with such trademark, the Respondent’s registration of the disputed domain name can only be taken as intending to cause confusion among Internet users as to the source of the disputed domain name and, furthermore, any use of the disputed domain name whatsoever, whether actual or theoretical, would have to be in bad faith;

- In addition to the disputed domain name, the Respondent also owns other domain names that misappropriate third-party well-known trademarks;

- The Respondent has failed to reply to the Complainant’s cease and desist letter.

B. Respondent

The Respondent states that it purchased the disputed domain name legally and in good faith through a GoDaddy auction, paying a considerable amount of money (USD 1,030.00), after it lapsed due to lack of renewal from the Complainant and points out that, if the Complainant was willing to keep the disputed domain name, it should have renewed it upon its expiry.

The Respondent also states that it is willing to transfer the disputed domain name to the Complainant provided that the Complainant pays the same amount spent by the Respondent for the purchase of the disputed domain name through the GoDaddy auction.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights over the trademark VERTEX STANDARD based on the trademark registrations cited under section 4 above, owned by the Complainant’s wholly-owned subsidiaries Vertex Standard, USA Inc. and Vertex Standard Co., Ltd, and the related trademark certificates submitted as Annex 1 to the Complaint.

As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

In the case at hand, the Complainant’s trademark VERTEX STANDARD is entirely reproduced in the disputed domain name, with the mere addition of the generic Top-Level Domain “.com”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0).

In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical to the trademark in which the Complainant has established rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

In the case at hand, the Complainant has made a prima facie case and the Respondent has failed to raise any convincing circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks. Moreover, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name or a name corresponding to the disputed domain name.

The Panel also finds that, in view of the use of the disputed domain name made by the Respondent to redirect users to an undeveloped website - at the time of the filing of the Complaint - or to third-party websites displaying contents unrelated to VERTEX STANDARD – before the filing of the Complaint and at the time of the drafting of this Decision -, the Respondent has not shown that it made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that intended to make a legitimate, noncommercial or fair use of the disputed domain name. Furthermore, the Panel notes that the Respondent has failed to provide any explanation as to the reason why it selected the disputed domain name.

Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.

According to section 3.9 of the WIPO Overview 3.0, “the transfer of a domain name registration from a third party to the respondent is not a renewal and the date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith”.

As to bad faith at the time of registration, the Panel notes that, in light of the prior registration and use of the Complainant’s trademark VERTEX STANDARD, including in India, where the Respondent is based, and in view of the widely known character of the Complainant’s trademark, the Respondent was more likely than not aware of the Complainant’s trademark.

Moreover, in view of the notoriety of the Complainant’s trademark, the Panel finds that the Respondent acted in opportunistic bad faith at the time of registration, since the disputed domain name is so obviously connected with the Complainant that its very selection by the Respondent, which has no connection with the Complainant, suggests the disputed domain name was acquired with a deliberate intent to create an impression of an association with the Complainant.

With reference to the use of the disputed domain name, as highlighted above, the disputed domain name was pointed, before the filing of the Complaint, to a third-party website enabling to download Facebook videos and is currently redirected to a website providing reviews on various topics unrelated to the Complainant’s trademark VERTEX STANDARD. At the time of the filing of the Complaint, the disputed domain name was instead redirected to a website under construction displayed under the disputed domain name.

In view of the foregoing and in light of the identity of the disputed domain name with the Complainant’s distinctive trademark, the Panel finds that, on balance of probabilities, the Respondent registered the disputed domain name to intentionally attempt to attract and divert Internet users looking for the Complainant’s products to other online locations, by causing a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolved and the related content, according to paragraph 4(b)(iv) of the Policy.

Furthermore, the fact that the Respondent acquired the disputed domain name at auction upon its expiry due to the Complainant’s lack of renewal, and used it in connection with the websites described above, suggests that the Respondent, which has not provided any evidence of rights or legitimate interests in the disputed domain name, might have registered the disputed domain name in order to attempt to derive profit from the resale of the same to the Complainant and/or to benefit from the likelihood of association with the Complainant and its trademark.

In addition, the Panel also finds that the Respondent’s registration of further domain names incorporating third-party trademarks and the Respondent’s failure to reply to the Complainant’s cease and desist letter are additional elements demonstrating its bad faith.

Therefore, the Panel finds that the Complainant has also proven the requirement prescribed by paragraph 4(a)(iii) of the Policy.

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 name <vertexstandard.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: June 17, 2020