Apollo Industries Limited v. Motocentric
Claim Number: FA1108001405200
Complainant is Apollo Industries Limited (“Complainant”), represented by Keesonga Gore of Minott Gore, P.A., Florida, USA. Respondent is Motocentric (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <motocentric.com>, registered with Network Solutions, LLC.
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.
David S. Safran, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 29, 2011; the National Arbitration Forum received payment on September 2, 2011.
On August 29, 2011, Network Solutions, LLC. confirmed by e-mail to the National Arbitration Forum that the <motocentric.com> domain name is registered with Network Solutions, LLC. and that Respondent is the current registrant of the name. Network Solutions, LLC. has verified that Respondent is bound by the Network Solutions, LLC. 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 September 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 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@motocentric.com. Also on September 7, 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.
A timely Response was received and determined to be complete on September 28, 2011.
On October 4, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David S. Safran, as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that since obtaining of the domain in 2000, no commercial use has been made of it. That the Respondent is not commonly known by the domain name, the domain name is not currently in use, and the Respondent, a corporation based in the State of Colorado, was administratively dissolved by the State on November 2, 2003. Complainant further asserts that Respondent is not making any legitimate non-commercial or fair use of the domain name <motocentric.com> and that Respondent’s registered domain
creates a likelihood of confusion with Complainant’s trademark, having the potential to mislead or divert customers who are seeking the Complainant’s products or goods marketed under the trademark MOTOCENTRIC, when such customers find a non-active domain at <motocentric.com>. Still further, Complainant contends that Respondent’s domain attracts and/or misleads customers who are seeking to do business with the Complainant, which has established a brand identity, commercial recognition and good will in the United States in connection with its use of the trademark “MOTOCENTRIC” and that Respondent registered the domain without any intent to use it in connection with the bona fide sale of goods or services.
B. Respondent
It appears from the Respondent’s narrative response that:
1) It is not Respondent’s fault that Complaint failed to investigate the availability of the domain before registering as a trademark a word conceived and owned by another.
2) Respondent has entertained many offers for the sale the domain name at issue and are still considering offers from concerns globally, but never received any offer to purchase <motocentric.com> from Complainant.
3) That the domain name was registered for use by a company that, at the time, provided jobs for over forty U.S. citizens, and has been maintained since the termination of the company in the hope of finding a suitable purchaser.
Complainant has failed to establish that Respondent registered the domain name in bad faith.
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."
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 view of the finding with respect to bad faith, no evaluation of this element is deemed necessary.
In view of the finding with respect to bad faith, no evaluation of this element is deemed necessary.
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel further finds that Respondent has not registered the <motocentric.com> domain name in bad faith since it finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent argues that the registration of the domain name occurred prior to Complainant’s registration of the identical trademark, thus negating a finding of bad faith. The <motocentric.com> domain name was registered by Respondent on December 6, 2000. More than ten years later, in 2011, Complainant registered the MOTOCENTRIC mark (e.g., Reg. No. 3,938,789 registered March 29, 2011) with the USPTO. If the Panel finds that Respondent registered the disputed domain name prior to Complainant’s acquisition of rights in the MOTOCENTRIC mark, the Panel may find that Respondent could not have registered the <motocentric.com> domain name is bad faith under Policy ¶ 4(a)(iii). See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb.Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).
Furthermore, Respondent contends that the registration was in association with a legitimate business, the incorporation of which Complainant acknowledges was not terminated until several years after the domain was registered. Thus, the Panel finds that Complainant’s unsupported assertions of bad faith registration to be inadequate to establish that the domain was registered in bad faith. Supra, Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED
Accordingly, it is Ordered that the <motocentric.com> domain name REMAIN WITH Respondent.
David S. Safran Panelist
Dated: October 6, 2011
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