Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Motorola, Inc. , Schaumburg, IL, USA ("Complainant") represented by Fritz E. Berckmueller, Katten, Muchin Zavis. The Respondent is Geoff Brien, Kenner, LA, USA ("Respondent").

The domain name at issue is motoroladigitaldna.com registered with Register.com.

The Panelist 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 the panelist in this proceeding.

Hon. James A. Carmody, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on November 1, 2000; The Forum received a hard copy of the Complaint on October 30, 2000.

On November 6, 2000, Register.com confirmed by e-mail to the Forum that the domain name motoroladigitaldna.com is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On November 6, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 27, 2000 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@motoroladigitaldna.com. by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On December 1, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed the Hon. James A. Carmody as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Uniform 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 Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

Complainant alleges the following regarding the domain name motoroladigitaldna.com:

B. Respondent

Respondent did not submit any response.

Complainant, Motorola Inc. has been doing business under its MOTOROLA mark since 1948, marketing, manufacturing and promoting a vast array of products and services. Complainant holds at least fourteen federal trademark registrations for MOTOROLA.

Since 1998, Complainant has also marketed manufactured and promoted products under the mark DIGITAL DNA. Complainant holds at least one federal trademark registration for DIGITAL DNA. In addition, Complainant has at least six federal trademark applications pending before the United States Patent and Trademark Office. Each of these applications was filed before Respondent registered the domain name at issue, motoroladigitaldna.com.

Respondent registered the domain name on May 11, 2000. Thereafter, the domain name was ‘parked’ and offered for sale to the general public at Greatdomains.com. By letter dated June 27, 2000, Complainant contacted Respondent, through outside counsel, advising it of Complainant’s asserted rights in the marks MOTOROLA and DIGITAL DNA, and demanding that Respondent permanently cease using and transfer the motoroladigitaldna.com domain name to Complainant within ten days.

The record indicates that Respondent sent a response to Complainant in September 2000, stating that it "would like to transfer the motoroladigitaldna.com domain name peacefully to Motorola for a small finders fee of $15,000."

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

The domain name motoroladigitaldna.com meets both parts of the ICANN Policy test under 4(a)(i). First, the domain name motoroladigitaldna.com is confusingly similar to the MOTOROLA and DIGITAL DNA marks. Second, Complainant has rights in these marks.

Based on its numerous federal trademark registrations, Complainant has established exclusive rights to use the MOTOROLA and DIGITAL DNA marks. Additionally, its federal registrations, combined with its continued use of the marks in commerce, confer implicit and explicit recognition of secondary meaning. Under the ICANN Policy, Complainant has rights in the marks incorporated into Respondent’s domain name.

An Internet user, upon seeing the domain name motoroladigitaldna.com, would likely believe that an association or affiliation existed between site identified by that domain name and the owner or licensed user of the mark. See Sporty's Farm L.L.C. vs. Sportsman's Market, Inc., [2000] USCA2 33; 202 F.3d 489 (2^nd Cir. 2000) cert. denied 120 S.Ct. 2719 (2000), ("For consumers to buy things or gather information on the Internet, they need an easy way to find particular companies or brand names. The most common method of locating an unknown domain name is simply to type in the company name or logo with the suffix ‘.com’ n3"). When an Internet user enters motoroladigitaldna.com, intending to reach a web site containing information about Complainant’s products or services, but is instead diverted to either a nonfunctional web site or an unrelated website, confusion results. Numerous Panels have determined that use of another’s mark as part of a domain name gives rise to confusing similarity. See General Electric Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that adding the generic term "direct" on to the Complainant’s marks (GE CAPTIAL and GECAL) does not alter the underlying mark held by the Complainant, and thus the Respondent’s domain names are confusingly similar); Confidential, Cupcake-Party, Cupcake Parade,and John Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to Complainant’s marks and likely to mislead internet users into believing that products and services offered by Respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered). Here, Respondent has not only used Complainant’s mark as part of a domain name but has created a domain name comprised entirely of marks owned by Complainant. Therefore, this Panel concludes that Complainant has satisfied ICANN Policy 4(a)(i).

There is no evidence to indicate that Respondent has any rights or legitimate interest in the domain name motoroladigitaldna.com. This lack of evidence, combined with complainant’s unanswered allegations, leads this Panel to hold that Respondent has no such rights. The ICANN Policy Rules clearly provide that in the absence of a response, a Panel may draw appropriate inferences, and shall proceed to a decision on the complaint. See ICANN Policy Rule (14).

Here, the evidence indicates that Respondent has (i) made no preparations to use the domain name in a bona fide offering of goods or services, (ii) is not commonly known by the domain name; and (iii) is not making a noncommercial or fair use of the domain name. Without any evidence to the contrary, this Panel must hold that Respondent has no rights or legitimate interest in the domain name motoroladigitaldna.com.

After registering the domain name motoroladigital.com, Respondent ‘parked’ the domain name at Greatdomains.com, where it was offered for sale to the highest bidder. Later, in an e-mail response by Respondent, it indicated to Complainant’s counsel its desire to transfer the domain name to Complainant for $15,000. This offer was made just four months after Respondent registered the domain name. Respondent’s e-mail response also indicates Respondent’s awareness that the domain name incorporated Complainant’s trade name and that Complainant would want to protect the domain name from exploitation.

These facts all indicate registration and use in bad faith in violation of ICANN Policy 4(b)(i). Respondent’s apparent knowledge of Complainant’s mark and Complainant’s desire to protect its mark from exploitation indicates registration in bad faith. See America Online Inc. v. Shenzhen JZT Computer Software Co. Ltd, D2000-0809 (WIPO Sept. 6, 2000) (finding that "gameicq.com" and "gameicq.net" are obviously connected with services provided with the world-wide business of ICQ and the very use by someone with no connection with the product suggests opportunistic bad faith).

Between May 2000 and September 2000, Respondent’s only use of the domain name has been to offer it for sale, both generally to the public, and specifically to Complainant. This behavior indicates registration and use in bad faith. See Kathryn Bridget Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the Respondent offered to sell the Domain Name to the Complainant for $10,000).

While selling domain names does not always indicate registration and use in bad faith, selling domain names that are confusingly similar to another’s trademark crosses the line from entrepreneurship to cybersquatting. See CBS Broadcasting Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) ("There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent"). In light of all these facts, this Panelist finds that the domain name motoroladigitaldna.com was registered and used in bad faith.

Complainant also argues that Respondent’s conduct indicates bad faith under ICANN Policy 4(b)(ii),(iii) and (iv). Because this panel finds bad faith registration and use under ICANN Policy 4(b)(i), it need not address Complainant’s additional arguments. However, the Panelist notes that Respondent does not appear to be engaged in a pattern of preventative conduct under 4(b)(ii), and Complainant and Respondent are not competitors under the meaning of 4(b)(iii).

Having established all three elements required under the ICANN Policy, this Panelist orders that the domain name motoroladigitaldna.com be transferred, as requested, from Respondent to Complainant.