Motorola, Inc. and Symbol
Technologies, Inc. v. Domain Manager
Claim Number: FA0802001142633
PARTIES
Complainant is Motorola, Inc. and Symbol
Technologies, Inc. (“Complainant”),
represented by Robert M. Wasnofski, of Dorsey & Whitney, LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <motorolaradiobatteries.com>, and <symbolscannerbatteries.com>,
registered with Moniker Online Services, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Richard Hill as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 4, 2008; the
National Arbitration Forum received a hard copy of the Complaint on February 4, 2008.
On February 8, 2008, Moniker Online Services, Inc. confirmed by
e-mail to the National Arbitration Forum that the <motorolaradiobatteries.com>, and <symbolscannerbatteries.com>
domain names are registered with Moniker Online
Services, Inc. and that the Respondent is the current registrant of the
name. Moniker
Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On February 19, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 10, 2008 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@motorolaradiobatteries.com and
postmaster@symbolscannerbatteries.com by e-mail.
An electronic copy of the Response was received on March 10, 2008.
However, the Response is deficient under ICAAN Rule 5 because a hard copy of
the Response was not received prior to the Response deadline.
On March 18, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard Hill as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant alleges that has used and/or registered the name and
marks MOTOROLA and SYMBOL in many countries around the world and that these
marks are well-known in connection with its products. The MOTOROLA mark is famous, in particular
for radios and mobile communication products, including batteries for such
devices. The SYMBOL mark is also famous
in connection with enterprise mobility solutions, such as bar code scanners, rugged
mobile computers, and batteries for such devices.
According to the Complainant, the disputed domain names are essentially
identical and certainly confusingly similar to the Complainant’s marks.
The Complainant alleges that the Respondent cannot demonstrate that it
has any rights or legitimate interests in the disputed domain names. To the extent that the Respondent is using
the disputed domain names, it is doing so to operate pay-per-click websites
from which it derives revenue. Further,
some of the links at those websites direct consumers to websites that offered
batteries other than the genuine products produced by the Complainant. Such use of the Complainant’s marks
misleadingly diverts consumers to the disputed domain names in violation of the
Policy.
According to the Complainant, the Respondent registered the disputed
domain names without a bona fide basis for such registration in an
attempt to capitalize unfairly on the goodwill of the Complainant’s famous
marks.
Further, says the Complainant, the Respondent is also using the disputed
domain names in bad faith with an intent to deceive
the public into believing that its websites are associated in some manner with
the Complainant, thus obtaining a free ride on the Complainant’s famous marks
and diverting Internet traffic intended for the Complainant.
In other words, says the Complainant, the Respondent registered and is
using the disputed domain names to intentionally attract Internet users to its
websites by creating the false impression that the sites are affiliated with or
sponsored by the Complaint, and this for the purpose of commercial gain. This violates the Policy.
B. Respondent
The Respondent states that it was not made aware of cease and desist letters from the Complainant. If these letters were sent to Moniker Privacy
Services, it was not informed at all.
It states that, as soon as it became aware of the complaints from the
Complainant, it took the actions requested by the Complainant.
Respondent further states that, while it does not agree with many of the Complainant's statements and repeated allegations of "bad faith" acts, it is in fact very agreeable to resolve this matter amicably and in good faith.
And the Respondent states that it
agrees to transfer both of the disputed domain names to the Complainant without
further delay.
FINDINGS
The Panel will not make any findings of fact,
for the reasons explained below.
DISCUSSION
The Panel notes that although the Respondent’s
electronic submission was received in a timely manner, the Respondent failed to
submit a hard copy before the Response deadline as required by ICANN Rule
5. In accordance with Rules 10(a), 10(b) and 10(d), the Panel nevertheless decides
to accept the Response. See Blue
Martini Software, Inc. v. Entredomains, Inc., D2000-0917 (WIPO, Nov. 24, 2000)
(“The Rules specify the requirements of a Response to a Complaint filed in
accordance with the Policy … . Regrettably, Respondent
has failed to comply with its obligations. … To expedite the resolution of this
matter, however, I have considered the Response as if it had been properly
submitted.”); see also Parfums Christian Dior v. 1 Netpower, Inc.,
D2000-0022 (WIPO, Mar. 3, 2000) (“While
this email does not formally constitute a Response as defined by paragraph 5 of
the Rules, its content will be taken into account in the analysis of this
matter.”).
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 this case, the parties have both asked for the domain name to be
transferred to the Complainant. This
Panel holds that in this UDRP proceeding, in accordance with a general legal
principle governing arbitrations as well as national court proceedings, that it
would not be appropriate for it to act nec
ultra petita nec infra petita, that is, that it should not here issue a
decision that would be either less than requested, nor more than requested by
the parties. Since the requests of the
parties in this case are identical, the Panel recognizes the common request,
and finds it unnecessary in the circumstances to make findings of fact or of
compliance (or not) with the three requisite elements of the Policy.
A similar conclusion was reached by the Panel in Boehringer
Ingelheim International GmbH v. Modern Limited ‑ Cayman Web Development, FA 133625 (Nat. Arb. Forum,
Jan. 9, 2003) and in Alstyle
Apparel/Active Wear v. Schwab,
FA 170616 (Nat. Arb. Forum, Sept. 5, 2003). See Malev Hungarian Airlines,
Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In
this case, the parties have both asked for the domain name to be transferred to
the Complainant . . . . Since the
requests of the parties in this case are identical, the Panel has no scope to
do anything other than to recognize the common request, and it has no mandate
to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum
June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to
comply with Complainant’s request, the Panel felt it to be expedient and
judicial to forego the traditional UDRP analysis and order the transfer of the
domain names.”).
For the reasons indicated above, the Panel
need not consider this element of the Policy.
For the reasons indicated above, the Panel
need not consider this element of the Policy.
For the reasons indicated above, the Panel
need not consider this element of the Policy.
DECISION
For all the foregoing reasons, and given the common request of the
parties, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <motorolaradiobatteries.com> and <symbolscannerbatteries.com>
domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: April 1, 2008
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