Motorola, Inc. and Symbol Technologies, Inc. v. Marina Popova (M) Sdn Bhd
Claim Number: FA0809001222964
Complainants are Motorola, Inc. and Symbol Technologies, Inc. (“Complainant”), represented by Robert
M. Wasnofski, of Dorsey & Whitney, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <symbolbarcodescanner.info>, registered with GoDaddy.com Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainants submitted a Complaint to
the National Arbitration Forum electronically on
On
On September 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 30, 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@symbolbarcodescanner.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainants request that the domain name be transferred from Respondent to Complainants.
A. Complainants make the following assertions:
1. Respondent’s <symbolbarcodescanner.info> domain name is confusingly similar to Complainants’ SYMBOL mark.
2. Respondent does not have any rights or legitimate interests in the <symbolbarcodescanner.info> domain name.
3. Respondent registered and used the <symbolbarcodescanner.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Symbol Technologies Inc. is a wholly-owned
subsidiary of Complainant Motorola, Inc.
Complainants are in the business of manufacturing and selling mobile
communication products and services, including barcode scanners. Under the SYMBOL mark, Complainants
specifically provide repair, maintenance, and management services through which
Complainants manufacture, sell and install replacement parts for barcode
scanners. Complainants registered the
SYMBOL mark with the United States Patent and Trademark Office (“USPTO”) multiple
times, including Registration Number 1,340,396 issued
Respondent registered the <symbolbarcodescanner.info>
domain name on
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., FA 95095 (Nat. Arb. Forum July 31, 2000) (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, D2000-0009 (WIPO Feb. 29, 2000) (“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 Complainants must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In accordance with previous precedent on this issue, the
Panel finds that Complainants’ USPTO registration for the SYMBOL mark
adequately confers rights in the mark to Complainants pursuant to Policy ¶
4(a)(i). See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122
(Nat. Arb. Forum
Respondent’s <symbolbarcodescanner.info>
domain name
contains Complainants’ SYMBOL mark in its entirety and adds the generic terms
“barcode scanner” and the generic top-level domain (“gTLD”) “.info.” Complainants’ business that is marketed under
the SYMBOL mark specifically relates to barcode scanners, so the addition of
these terms only adds to the confusing similarity of the disputed domain
name. Since the addition of a gTLD is
irrelevant to an analysis under the Policy, the Panel concludes that the <symbolbarcodescanner.info>
domain name is confusingly simlar to Complainants’ SYMBOL mark pursuant to
Policy ¶ 4(a)(i). See Whitney Nat’l Bank
v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions
of generic words with an obvious relationship to Complainant’s business and a
gTLD renders the disputed domain name confusingly similar to Complainant’s mark
pursuant to Policy ¶ 4(a)(i).”); see also
Accenture Global Servs. GmbH v. Alok
Mishra, D2007-0559 (WIPO
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainants have alleged that Respondent lacks rights and legitimate interests in the <symbolbarcodescanner.info> domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainants have established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant under Policy ¶ 4(a)(ii), the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name).
According to Complainants, Respondent is not commonly known,
as an individual, business, or organization, by the <symbolbarcodescanner.info> domain name. The
WHOIS information identifies Respondent as “Marina Popova (M) Sdn Bhd,” and there is no evidence in the record to
contradict this. Therefore, the Panel
finds that Respondent is not commonly known by the <symbolbarcodescanner.info>
domain name pursuant to Policy ¶
4(c)(ii). See M. Shanken
Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3,
2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the
WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
Respondent is using the <symbolbarcodescanner.info>
domain name
to display a list of hyperlinks advertising various barcode scanner products
and services offered by Complainants and their competitors. The Panel concurs with Complainants’
arguments and presumes that Respondent earns click-through fees for each
redirected Internet user. The Panel
finds that such use does not constitute a bona
fide offering of goods and services under Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards,
FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s
diversionary use of the complainant’s marks to send Internet users to a website
which displayed a series of links, some of which linked to the complainant’s
competitors, was not a bona fide offering of goods or services); see also Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2004) (“Respondent’s appropriation of the
SAFLOK mark to market products that compete with Complainant’s goods does not
constitute a bona fide offering of goods and services.”).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Respondent is using the <symbolbarcodescanner.info> domain name to display a list of hyperlinks advertising various barcode scanner products and services offered by Complainants and their competitors. This is likely to disrupt Complainants’ business by diverting potential customers to Respondent’s website. The Panel therefore finds that such registration and use of the <symbolbarcodescanner.info> domain name evidences bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Svcs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent’s <symbolbarcodescanner.info>
domain name,
which is confusingly similar to Complainants’ SYMBOL mark, is likely to cause
confusion among customers searching for Complainants’ barcode scanners. Specifically, customers may become confused
as to the affiliation, endorsement, or sponsorship of the competing scanners
advertised by the links on Respondent’s website. Respondent presumably receives click-through
fees for each misdirected Internet user, and is therefore attempting to
commercially benefit from this likelihood of confusion between Respondent’s <symbolbarcodescanner.info> domain name and the
goodwill associated with Complainants’ SYMBOL mark. Therefore, the Panel finds that Respondent’s
registration and use of the <symbolbarcodescanner.info>
domain name
evidences bad faith pursuant to Policy ¶ 4(b)(iv). See
Metro. Life Ins. Co. v. Bonds, FA
873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute
bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent
is taking advantage of the confusing similarity between the
<metropolitanlife.us> domain name and Complainant’s METLIFE mark in order
to profit from the goodwill associated with the mark.”); see also Asbury Auto. Group,
Inc. v.
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <symbolbarcodescanner.info> domain name be TRANSFERRED from Respondent to Complainants.
James A. Carmody, Esq., Panelist
Dated: October 20, 2008
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