Motorola, Inc. and Symbol Technologies, Inc. v. Geronimo Giovinazzo
Claim Number: FA0810001231037
Complainants are Motorola,
Inc. and Symbol Technologies, Inc. (collectively “Complainants”), represented by Robert
M. Wasnofski, of Dorsey & Whitney LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <symboleuropa.com>, registered with Enom, Inc.
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.
Mark McCormick as Panelist.
Complainants submitted a Complaint to the National Arbitration Forum electronically on October 24, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 27, 2008.
On October 30, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <symboleuropa.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 November 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 24, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on November 21, 2008.
Complainant filed an Additional Submission which was received on November 26, 2008 and was timely.
On December 1, 2008, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick as Panelist.
Complainants request that the domain name be transferred from Respondent to Complainant Motorola, Inc.
Complainants contend that Symbol Technologies, Inc. is a wholly owned
subsidiary of Motorola, Inc. They allege
that for more than thirty years Motorola and its predecessors have used the
SYMBOL mark in offering mobile communication products and services, including
repair, maintenance and management services.
They assert that Complainant Symbol owns
Respondent contends that he has a business called Symbol Reformas,
established in February 2007, which engages in building and home construction
and restoration in the Alcante Costa Blanca region of
C. Additional Submissions
In their Additional Submission, Complainants focus on the failure of Respondent to deny either actual or constructive knowledge of Complainants’ prior use of its SYMBOL mark and the fact that Respondent has after many months made no effort to put the disputed domain name to legitimate use. Moreover, Complainants contend that Respondent’s bad faith is shown by the fact that he uses the name Symbol Reformas in its business but registered the domain name <symboleuropa.com> and not the name he actually has used. Complainants also assert that Respondent’s failure to use the domain name is a bona fide offering of goods or services demonstrates that Respondent lacks rights or legitimate interests in the domain name.
1. Respondent’s domain name <symboleuropa.com> is confusingly similar to Complainants’ SYMBOL mark.
2. Respondent lacks rights or legitimate interests in the disputed domain name.
3. Respondent’s registration and planned use of the disputed domain name was in bad faith.
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.”
Paragraph 4(a) of the Policy requires Complainants to 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;
(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 <symboleuropa.com> domain name
contains Complainants’ SYMBOL mark followed by the geographical term “europa”
and the generic top level domain (“gTLD”) “.com.” The use of the geographical locater does not adequately
distinguish Respondent’s disputed domain name, especially when Complainants do
Because Complainants made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, Respondent has the burden to prove that it does have rights and legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). The record shows that (1) Respondent lacks authority from Complainants to use the disputed domain name, (2) the WHOIS information does not show any connection between Respondent and the SYMBOL mark, and (3) Respondent has not adduced any evidence that consumers associate the disputed domain name with Respondent rather than Complainants. On this basis, the Panel finds that Respondent is not commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006). Moreover, Respondent’s inactive use of the domain name does not constitute a bona fide offering of goods and services. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004). The Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of Policy ¶ 4(a)(ii).
Respondent’s failure after the better part of a year to make active use of the domain name demonstrates that registration was a bad faith registration and use. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007). Moreover, Respondent had at least constructive knowledge of Complainants’ rights in the SYMBOL mark at the time he registered the disputed domain name. This circumstance supplies a presumption of bad faith. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002). The Panel finds that Complainants have established that Respondent registered and used the domain name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <symboleuropa.com> domain name be TRANSFERRED from Respondent to Complainant Motorola, Inc.
Mark McCormick, Panelist
Dated: December 15, 2008
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