Motorola Solutions, Inc. and Symbol Technologies, Inc. v. Speedeenames.com and Andrea Fletcher
Claim Number: FA1106001393882
Complainant is Motorola Solutions, Inc. and Symbol Technologies, Inc. (“Complainant”), represented by Robert M. Wasnofski of Dorsey & Whitney, LLP, New York, USA. Respondent is Speedeenames.com and Andrea Fletcher (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <symbolscannersonline.com>, registered with ENOM, 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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 15, 2011; the National Arbitration Forum received payment on June 16, 2011.
On June 16, 2011, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <symbolscannersonline.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 17, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@symbolscannersonline.com. Also on June 17, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 13, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <symbolscannersonline.com> domain name is confusingly similar to Complainant’s SYMBOL mark.
2. Respondent does not have any rights or legitimate interests in the <symbolscannersonline.com> domain name.
3. Respondent registered and used the <symbolscannersonline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Motorola Solutions, Inc. and Symbol Technologies, Inc., own the SYMBOL mark. Complainant has multiple registrations for the SYMBOL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,340,396 issued June 11, 1985). Complainant uses the SYMBOL mark in conjunction with numerous goods and services, including bar code scanners, hand-held mobile computers, imagers, and more. Additionally, Complainant operates the <symbol.com> domain name to promote its products and services.
Respondent, Speedeenames.com and Andrea Fletcher, registered the disputed domain name on January 5, 2011. The <symbolscannersonline.com> domain name resolves to a website which contains pay-per-click advertising links and which advertises products, including those of Complainant’s competitors, which are linked to Amazon.com where the products are sold.
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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has 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 the instant proceedings, there are two Complainants acting as a single entity. The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” Complainants assert that Symbol Technologies, Inc. is the wholly-owned subsidiary of Motorola Solutions, Inc. which are both fully authorized to use the SYMBOL mark and are thus acting as a single entity. The Panel finds that Complainant has established a sufficient nexus between the two entities and accordingly will treat the two as a single Complainant for the purposes of this proceeding.
Complainant contends that its registration of the SYMBOL mark with the USPTO is sufficient for the Panel to find that it has established rights in the mark. Panels have previously determined that trademark registration is an appropriate basis for a complainant to demonstrate rights in a mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)). The registration of a trademark need not be in the country in which the respondent resides or operates to be valid as to rights under Policy ¶ 4(a)(i). See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Complainant has provided the Panel with documentation of its registrations of the SYMBOL mark with the USPTO (e.g., Reg. No. 1,340,396 issued June 11, 1985). The Panel finds that Complainant has established rights in the mark through trademark registration pursuant to Policy ¶ 4(a)(i).
Complainant alleges that the <symbolscannersonline.com> domain name is confusingly similar to its SYMBOL mark. Panels repeatedly find that the addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). In addition, panels have found that the addition of descriptive terms to a mark in a domain name fails to differentiate the domain name from the mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)). Respondent incorporated Complainant’s entire SYMBOL mark in the domain name. The mark is followed by the descriptive terms “scanners” and “online” and the gTLD “.com.” Without more done to distinguish the domain name from Complainant’s mark, the Panel finds that the <symbolscannersonline.com> domain name is confusingly similar to Complainant’s SYMBOL mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is met.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case in support of this allegation. Once a complainant has made a prima facie case, the burden shifts to the respondent to prove that it does have rights or legitimate interests. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); 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, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Due to Respondent’s failure to submit a response to the Complaint, the Panel may assume that Respondent lacks rights and legitimate interests. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also EK Success, Ltd. v. Yi-Chi, CPR0314 (CPR June 12, 2003) (“[T]he Respondent's default cannot simply be construed as an admission of the allegations contained in the Complaint.”). The Panel will review the record to determine if Respondent has any rights or legitimate interests.
Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS record for the disputed domain name along with the other information provided demonstrates to a panel whether a respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also 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). The information provided to the Panel does not suggest that Respondent is commonly known by the disputed domain name because it is using Complainant’s mark without authorization and the WHOIS information doesn’t suggest any connection between the domain name and Respondent. The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The disputed domain name resolves to inactive website which contains pay-per-click advertising links and which advertises products, including those of Complainant’s competitors, which are linked to Amazon.com where the products are sold. Panels have found that the use of a domain name to commercially benefit demonstrates a lack of rights and legitimate interests. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Respondent presumably receives compensation for the advertisements and links on its <symbolscannersonline.com> domain name. The Panel finds that Respondent’s use of the confusingly similar disputed domain name to benefit commercially is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has fulfilled the requirements of Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and used the disputed domain name in bad faith. Panels have found that domain names which resolve to websites featuring advertisements or links to a complainant’s competitors had been registered and used in bad faith. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors). Respondent’s <symbolscannersonline.com> domain name displays advertisements and links to various products, some of which are competitors of Complainant’s business. Internet users seeking Complainant’s website which find Respondent’s website may make their intended purchases through Complainant’s competitors who are advertised on the disputed domain name as opposed to through Complainant. As a result, the Panel finds that Respondent’s registration and use of the disputed domain name is a disruption to Complainant’s business under Policy ¶ 4(b)(iii).
Lastly, Complainant contends that Respondent’s registration and use of the disputed domain name is a direct result of the attraction for commercial gain it possesses. Panels have found that the registration and use of a confusingly similar disputed domain name because of its commercially gainful nature is evidence of bad faith. See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The advertisements and links displayed on Respondent’s domain name likely provide Respondent with a monetary award for each Internet user who is diverted through them. As such, it is in the interest of Respondent to use a domain name which is highly similar to Complainant’s mark to increase confusion and generate more Internet traffic. The Panel thus finds that Respondent’s registration and use of the disputed domain name was done as a result of its commercially gainful nature under Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶ 4(a)(iii) is 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 <symbolscannersonline.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 14, 2011
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