DECISION

 

Motorola, Inc. v. RTU Inc.

Claim Number: FA0210000127709

 

PARTIES

Complainant is Motorola, Inc., Libertyville, IL (“Complainant”) represented by Lisa K. Shebar, of Katten Muchin Zavis Rosenman.  Respondent is RTU Inc., Rolling Meadows, IL (“Respondent”) represented by Stephen H. Sturgeon, of Law Offices of Stephen H. Sturgeon & Associates.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <moscad.com>, registered with Network Solutions, Inc.

 

PANEL

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.

 

Rodney C. Kyle as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 7, 2002; the Forum received a hard copy of the Complaint on October 9, 2002.

 

On October 9, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <moscad.com> is registered with Network Solutions and that the Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 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 October 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 30, 2002 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@moscad.com by e-mail.

 

An extension to November 19, 2002 for Respondent to submit a Response was granted by the Forum on October 28, 2002.

 

A timely Response was received and determined to be complete on November 19, 2002.

 

Complainant filed a timely Additional Submission on November 25, 2002.

 

Respondent filed a timely Additional Submission on December 4, 2002.

 

On December 6, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Rodney C. Kyle as Panelist.

 

On December 19, 2002, the Panel extended the due date for its decision to 26 December 2002.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

Each Party cited and discussed one or more case decisions as part of their contentions. Mainly for brevity of these reasons for decision, the Panel has generally not set out those citations or discussions at length and has instead abstracted, or extracted from, those discussions.

 

A. Complainant

In the Complaint, Complainant basically makes five main contentions numbered herein as “(1)” through “(5)”:

            (1) as to Policy paragraph 4(a)(i), that

            (a) there exist and are owned by it

(i)                  two Japanese trademark registrations, 3197022 for MOSUKYADO and 3285842 for MOSUKADO MOSUKYADO, and that said expressions are the Japanese phonetic equivalents of MOSCAD (hereinafter generally “said mark”) (paragraph 12) and

(ii)                since before 10 January 2001, common-law trademark rights for said mark based on use of said mark in association with “certain communications products” in the United States since 1992, said use being through an authorized dealer system and being not only in the United States but throughout the world such that said mark is well known as associated with Complainant and has acquired a distinctiveness and secondary meaning signifying Complainant (paragraphs 11 to 14 and paragraph 20),

(b) said mark is fanciful and arbitrary and deserving of the most heightened protection (paragraph 20) and

(c) Respondent registered <moscad.com> and said domain name is substantially identical and confusingly similar to said mark (paragraphs 14 and 21);

(2)            apparently as to either or both of Policy paragraphs 4(a)(ii) and 4(a)(iii), as particularized in “(3)” and “(4)” of this list, that

(a) without authorization from Complainant (paragraphs 14 and 15)

(i)                  said registration of said domain name occurred on January 10, 2001 (paragraph 14),

(ii)                Respondent thereafter commenced using said registration of said domain name for a web site (paragraph 14) and

(iii)              despite Complainant having “no relationship with, or to, Respondent”, Respondent maintains said web site which makes repeated reference to Complainant, said mark, and a famous mark of Complainant i.e. MOTOROLA (paragraph  15),

(b)  said web site states that said web site is sponsored by Integrated Telecommunications Systems, Inc. (hereinafter “ITS”) and contains a link to the ITS web site <itsinfo.com> (paragraph 16),

(c)     ITS and Complainant entered a Motorola Communications Products Value Added Reseller Agreement effective September 15, 1998 (hereinafter “the ITS Agreement”) whereby ITS is an authorized dealer of Complainant’s MOSCAD products (paragraph 16),

(d)    Respondent is neither an authorized dealer of Complainant’s MOSCAD products nor otherwise authorized by Complainant to use said mark (paragraph 16),

(e)  exactly as stated in the Complaint,

(i)            “Even if ITS has purportedly conferred upon Respondent the right to use Complainant’s MOSCAD mark, ITS has no authority to do so since Section 9 of the ITS Agreement states, in part, that ITS ‘will not adopt . . . or use [Complainant’s] trademarks or trade names, or any confusingly similar word or symbol, . . . nor (to the extent [ITS] may have any power to prevent such use) allow such marks or names to be used by others’” (paragraph 17),

(ii)            “In addition, even if ITS’ standing as an authorized distributor of Complainant’s MOSCAD products would have ordinarily conferred ITS with the lawful right to use the MOSCAD mark to advertise its distributorship services, ITS contracted away any such right in the ITS Agreement.  Specifically, Section 9 of the ITS Agreement states that ITS may only use Complainant’s trademarks ‘[w]ith [Complainant’s] prior written approval,’ and the ‘Trademark and Proprietary Marks’ section of Attachment C to the ITS Agreement (the ‘Attachment’) prohibits ITS from using any of Complainant’s trademarks ‘except in a form specifically approved in advance in writing by [Complainant].’” (paragraph 18) and

(iii)            “Moreover, the Amendment executed September 15, 1998, to the ITS Agreement (the ‘Amendment’) further restricts ITS’ use of Complainant’s marks, including Complainant’s MOSCAD mark, as follows:

[ITS] hereby acknowledges the validity of the trademark ‘MOTOROLA’ . . . as well as all other proprietary marks which are affixed to the [MOSCAD] [p]roducts and agrees that the aforesaid trademarks and proprietary marks are and shall remain the property of [Complainant].  [ITS] shall not do anything to infringe upon, harm, or contest the validity of the aforesaid trademarks or other proprietary marks of [Complainant]. . . . [ITS] agrees that it shall not use the trademark ‘MOTOROLA,’ [or] any other [Complainant] trademark or tradename [sic], . . . as part of the name under which it conducts business.” (paragraph 18) and

(f)            on or before July 3, 2002 there were conversations between Respondent’s Administrative Contact, ITS, and Complainant, that said conversations were futile, and that thereafter written communications occurred, first on July 3, 2002 a cease-and-desist letter from Complainant’s in-house counsel to ITS which letter also requested Respondent to transfer the domain name registration to Complainant and then on August 14, 2002 a response thereto from an attorney purporting to represent an entity called UTS, Inc. and stating that said attorney had received a copy of said cease-and-desist letter and that UTS, Inc. had legally secured said domain name and will not tender it to Complainant (paragraph 19);

(3)  as to Policy paragraph 4(a)(ii), that

(a)  at all times relevant herein, Respondent has had no legitimate interest in said mark and, thus, no legitimate interest in the <moscad.com> domain name (paragraph 22), including that

(i)                  Respondent’s <moscad.com> web site identifies itself as “Your MOSCAD Marketplace” and states, “The MOSCAD Marketplace is the portal through which you can order MOSCAD products and utilities, access documentation, valuable news and information” (paragraph 22) and

(ii)                while Respondent appears to offer such products and services through its <moscad.com> web site, Respondent does so illegitimately by unlawfully holding itself out as being sponsored or authorized by, or affiliated with, Complainant when it is not, thereby causing confusion to consumers (paragraph 22),

(b)  if Respondent purports to derive an interest in the <moscad.com> domain name through sponsorship or authorization from, or affiliation with, ITS, then Respondent is acting equally unlawfully (paragraph 23) since

(i)                  pursuant to the ITS Agreement, ITS cannot use the MOSCAD mark in any manner without Complainant’s prior written approval, let alone allow other parties to use the MOSCAD mark (paragraph 23) and

(ii)                indeed, ITS is prohibited from allowing other parties to use the MOSCAD mark and, moreover, has an obligation to prevent such use to the extent that it can (paragraph 23),

(c)   Respondent has no agreements, legal or otherwise, with Complainant authorizing Respondent to use the MOSCAD mark (paragraph 24),

(d)  Respondent has not been personally identified, or commonly known, by names comprised, in whole or in part, of the term “MOSCAD” (paragraph 24),

(e)    Respondent owns no trademark registration for any mark comprised, in whole or in part, of the term MOSCAD, nor has Respondent applied for any such trademark registration (paragraph 24) and

(f)     any use by Respondent of the MOSCAD mark in connection with the offering of goods and services constitutes infringement of Complainant’s valid trademark rights (paragraph 24);

(4)  as to Policy paragraph 4(a)(iii), that

(a)  Respondent registered the <moscad.com> domain name in bad faith with full knowledge of Complainant and Complainant’s MOSCAD mark (paragraph 25),

(b) Respondent’s web site and <moscad.com> repeatedly refers to Complainant (paragraph 25),

(c)   by virtue of Complainant’s Japan trademark registration, Respondent was put on constructive notice of Complainant’s rights to the MOSCAD mark prior to registering the domain name (paragraph 25),

(d)  Respondent has been placed on actual notice of such rights by Complainant prior to Complainant instituting this administrative proceeding by virtue of Complainant’s oral and written communications with Respondent’s Administrative Contact, ITS (paragraph 25),

(e)  it is simply not possible to conceive of any plausible circumstance where Respondent could have coincidentally registered the domain name without first knowing of and intentionally infringing upon the MOSCAD mark (paragraph 25),

(f)   Respondent has used the <moscad.com> domain name in bad faith in violation of Policy paragraph 4(b)(iv) (paragraph 26), in that

(i)                  Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site at <moscad.com>, as well as ITS’ web site at <itsinfo.com>, by creating a likelihood of confusion with Complainant’s MOSCAD and MOTOROLA marks as to the source, sponsorship, affiliation, or endorsement of each web site (paragraph 26) and

(ii)                Respondent unlawfully holds itself out on its <moscad.com> web site as being sponsored or authorized by, or affiliated with, Complainant when it is not, thereby causing confusion to Internet users (paragraph 26) and

(g)    Respondent has used the <moscad.com> domain name in bad faith in violation of Policy paragraph 4(b)(iii) by preventing customers who are looking for either or both Complainant and Complainant’s authorized MOSCAD dealers at <moscad.com> from finding them, thereby disrupting the business of either or both of Complainant and Complainant’s authorized MOSCAD dealers (paragraph 27); and

(5)  that evidence that is rationally probative of contention

(a)  “(1)(a)(i)” of this list is in “registration information” attached as Complaint Exhibits F and G (paragraph 12),

(b)      “(1)(c)” and “(2)(a)(i)” of this list are in Complaint Exhibit D (paragraph 14),

(c)   “(2)(a)(ii)”, “(2)(a)(iii)”, “(2)(b)” of this list are in a copy of Respondent’s <moscad.com> web site attached as Complaint Exhibit H (paragraphs 15 and 16),

(d)  “(2)(c)”, “(2)(e)(i)”, and “(2)(e)(ii) and “(2)(e)(iii)” of this list are in a copy of the ITS Agreement attached as Complaint Exhibit I (respectively paragraphs 16, 17, and 18),

(e)  “(2)(f)” of this list is in a copy of said communications attached as Complaint Group Exhibit J (paragraph 19),

(f)   “(3)(a)(i)” of this list is in a copy of Respondent’s <moscad.com> web site attached as Complaint Exhibit H (paragraph 22) and

(g)            “(4)(d)” of this list  is in Complaint “Group Exhibit I” (paragraph 25).

 

B. Respondent

In the “Introduction” and “Conclusion” of the Response the Respondent respectively makes two somewhat repeated and interwoven contentions, basically as to the Panel’s powers in this proceeding.  They are, first, that a respondent’s contention that its dispute with a complainant is “not a clear case of ‘cybersquatting’ and ‘cyber piracy’“ and is instead “legitimate” creates a disability, of a panel appointed in a mandatory administrative proceeding under the Policy, against that panel determining the dispute; and, second, that a panel appointed in a mandatory administrative proceeding under the Policy has a disability against determining disputed factual matters.

 

In the main body of the Response, Respondent basically makes four main contentions herein numbered “(1)” through “(4)”. They are that as to Complaint contentions as to

(1)    Policy paragraph 4(a)(i), “the Complaint does not provide adequate proof, evidence or substantiation to prove that the Complainant has trademark rights that are controlling in this proceeding” and “the Complainant fails to present competent evidence that it has legal rights in the trademark”, and more particularly (but seemingly without limiting the generality thereof) that

(a)     Japan is a distant country and trademark registration therein, of a phonetic equivalent therein, does not suffice and

(b)    “there is not adequate proof of any common law trademark rights”, such that since “Complainant herein has not provided adequate proof of trademark rights, the Complaint fails to prove the first element that is required to obtain transfer of a domain name”;

(2)    Policy paragraph 4(a)(ii), Complainant has the burden of proof under Policy paragraph 4(a)(ii) and “has failed to prove that the Respondent has no rights or legitimate interest in respect of the domain name”, and more particularly that

(a)     as to Complaint contentions referred to above in “(3)(a)” and (5)(f)” of the list of Complainant’s contentions,

(i)            “Respondent is sponsored by, is an affiliate of and is of common ownership with [ITS]” and

(ii)            “ITS is a bona fide reseller of Motorola products as described in the Complaint”,

(b)    as to Complaint contentions referred to above in “(3)(b)” of the list of Complainant’s contentions,

(i)            the word “moscad”

(A)   is not mentioned in the ITS Agreement and

(B)   has not been proven to be a trademark or trade name of Complainant which is subject to the ITS Agreement,

(ii) “Complainant relies on a provision of a contract between Complainant and ITS stating that ‘with prior written approval, VAR may also use the Motorola trademarks and trade names to promote and solicit sales of the Product if VAR does so in strict accordance with the terms of (Attachment) to this Agreement”, and more particularly that

(A)   a bona fide reseller must utilize the trademarks and trade names of the products that the reseller is selling,

(B)      ITS has for many years utilized the Motorola trademarks and trade names to promote and solicit sales of the Motorola products and

(C)      management of Complainant expressed their approval and commendation for the efforts of ITS and its affiliate RTU, Inc.,

(iii) a panel appointed in a mandatory administrative proceeding under the Policy, has a disability against deciding a contract action and “Complainant’s arguments based on the interpretation of contract language” are an attempt to make this proceeding a contract action and are therefore an attempt to have the Panel act “outside the jurisdiction of the UDRP authority” and

(iv) the ITS Agreement is “a contract between the Complainant and ITS -- an legal entity separate and distinct from Respondent”,

(c)     as to Complaint contentions referred to above in “(3)(f)” of the list of Complainant’s contentions,

(i) “Complainant has not proven trademark rights” and

(ii) “Respondent’s sponsor was an authorized distributor of Complainant’s products”, plus exhaustion of rights (i.e. “a reseller of products has a right to utilize the product name as a part of the marketing activities”, and more particularly that “a reseller may display the brand of a product as a part of the marketing of the product”) and accordingly “that a respondent may display the name of the product in a domain name that the retailer uses as a part of the marketing of the product” and

(d)    a panel, appointed in a mandatory administrative proceeding under the Policy, has a disability against determining disputed factual matters;

(3)    Policy paragraph 4(a)(iii), Complainant has the burden of proof under Policy paragraph 4(a)(iii) and “Complainant’s filing does not provide adequate proof or evidence to support the allegation that Respondent acted in bad faith” and instead “the Respondent did not register the domain name in bad faith” but rather had “a legitimate interest”, and more particularly

(a)     as to Complaint contentions referred to above in “(4)(a)” and “(4)(c)” of the list of Complainant’s contentions,

(i) “Respondent’s principal did, in fact, conduct a US trademark search and, of course, did not find a trademark registration or application” and

(ii) “[i]t is unreasonable to hold that a respondent is put on constructive notice because of a phonetically similar trademark registered in a distant country” because “[i]t is virtually impossible for any registrant of a domain name to search for phonetically similar trademarks in all countries of the world”,

(b)    as to Complaint contentions referred to above in “(4)(f)” of the list of Complainant’s contentions, “resellers of a product have a right to utilize the trademark and description of the products as a part of the marketing of the products “,

(c)     as to Complaint contentions referred to above in “(4)(g)” of the list of Complainant’s contentions,

(i) “Respondent is marketing the products of Complainant”,

(ii) “Respondent is not attempting to give the impression that it is, in fact, the manufacturer of the Complainant’s products” and

            (iii) “[d]istributorships are intended to attract customers for the sale of a manufacturer’s products”, so “the use of a product name as a source or identification of the products is a perfectly acceptable use of the name of the manufacturer’s name in marketing activities” and “[a]ny retailer must advertise and market the brand of the product that is being retailed” whereas “[t]his argument presented by Complainant could be used to allege the wrongdoing of any retailer” and instead “[a]ny retailer has the implicit permission to display the brand name as an integral part of the retailing process” and

(d)    “[n]either Respondent, his company, his business activities nor any of his associates have”

(i) “had any intent for commercial gain to misleadingly divert consumers or to tarnish any alleged trademark/service mark”,

(ii) “registered or acquired the domain name in question for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is alleged to be the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name”,

(iii) “registered the domain name in question in order to prevent the owner of any trademark or service mark from reflecting the mark in a corresponding domain name, (and neither he, his company, his business activities nor any of his business activities have engaged in a pattern of such conduct)”,

            (iv) “registered the domain name for the purpose of disrupting the business of the complainant or any competitor” or

(v) “[b]y using the domain names in question, … attempted to attract, for commercial gain, Internet users to their web sites or other on-line location, by creating a likelihood of confusion with any alleged mark as to the source, sponsorship, affiliation, or endorsement of a web site or location or of a product or service on a web site or location”; and

(4)    that evidence that is rationally probative of contention

(a) “(2)(b)(ii)(C)” of this list is in “an affidavit of Mr. Thomas J. Cahill who was the National Business Manager of the VAR channel for Complainant” (displayed in the Response as Exhibit B) and

(b) each of “(3)(d)(i)”, “(3)(d)(ii)”, “(3)(d)(iii)”, “(3)(d)(iv)”, and “(3)(d)(v)” is in said Response Exhibit B and in an “Affidavit of Respondent’s owner” (displayed in the Response as Exhibit A) and in an “Affidavit of a business associate of Respondent” (displayed in the Response as Exhibit C).

 

C. Additional Submissions

Complainant’s Additional Submission basically includes the following:

(1)    as set out in Part II.A thereof: the Response should be refused as untimely in that the Respondent improperly (indeed under false pretenses and contrary to the Forum’s Supplemental Rules) obtained from the Forum a twenty day extension of time (from October 30, 2002 to November 19, 2002) for submitting a response and Complainant was prejudiced by that improperly obtained extension , and more particularly

(a)    this proceeding commenced on October 10, 2002 when the Forum served Respondent with the Complaint (and thereby a deadline of October 30, 2002 for submitting a response was set by Rule 5 of the Rules made under the Policy unless under that same Rule the Forum granted an extension prior to October 30, 2002),

(b)    by an Order on October 28, 2002 the Forum granted an extension to file a Response by November 19, 2002,

(c)     said Order was granted based on misrepresentations to the Forum by Respondent, and more particularly

(i) contrary to the requirement s of the Forum’s Supplemental Rule 6(a)(i) (that “Any request by the Respondent for an extension … must … be submitted after the parties have first conferred with each other to see if they could reach an agreement concerning the requested extension”) and 6(b) (that “No request for an extension will be approved if any of the conditions set forth in Paragraph 6(a) have not been performed”), Respondent failed to confer, or even attempt to confer, with Complainant’s attorney (who was Complainant’s authorized representative in this proceeding) before making any extension request and therefore Respondent was not entitled to said extension,

(ii) on October 25, 2002, prior to any communication with Complainant’s attorney; Respondent e-mailed the Forum, informally requesting an extension of time to respond to the Complaint and

(iii) still prior to any  communications with Complainant’s attorney, Respondent filed a formal extension request (which Complainant refers to as “dated October 27, 2002”) with the Forum, which request

(A)    contains and is premised on the following misrepresentation to the Forum: “In accordance with NAF Supp. Rule 6(a)(i) Respondent has conferred with Complainant concerning this request and Complainant has not yet responded”,

(B)     was followed, early in the morning on October 28, 2002, by a letter Respondent’s principal faxed to Complainant’s attorney , which letter  stated that “the NAF Supplemental Rules ‘require that we contact you to request your concurrence before we submit the [extension] request to the NAF’“ and “If I do not receive any communication from you by 4:00 PM today  (October 28, 2002), I will assume that you do not concur with the request for the extension”,

(C)    and faxed letter were in turn followed on October 28, 2002 by an e-mail of 8:36 a.m. from the Forum to the Complainant’s attorney and to Respondent’s principal, which e-mail was sent prior to Complainant’s attorney arriving at her office to see the faxed letter and had as an attachment the Order referred to in “(1)(b)” of this list and

(D)    was not received by Complainant’s attorney until the Forum faxed Complainant’s attorney a copy on November 25, 2002,

(iv) the Order has prejudiced Complainant by further delaying these proceedings while Respondent’s <moscad.com> web site continues to cause Complainant and its authorized MOSCAD distributors irreparable harm daily and

(v)            if the Rules and the Forum’s Supplemental Rules are to mean anything, they should be enforced and not disregarded  and the parties allowed to proceed despite failing to comply with such rules;

(2)    as set out in Part II.B of Complainant’s Additional Submission: even if the extension was not improperly obtained the Response should still be rejected because the Response

(a)    was still untimely, in that the deadline for both service and filing was November 19, 2002 and Respondent did not meet it and instead served Complainant’s attorney with the Response on November 20, 2002 and

(b)    even if filed in a timely way (i.e. by November 19, 2002) was, in view of the service referred to in “(2)(a)” of this list, not served in time and its Rule 5(b)(vii) statement is therefore a willful misrepresentation about timely service;

(3)    that evidence that is rationally probative of contention

(a)  “(1)(a)” of this list is in Exhibit A to the affidavit of Complainant’s attorney, which affidavit is attached to the main body of Complainant’s Additional Submission,

(b)    “(1)(b)” of this list is in a copy of the Forum’s Order that is Exhibit E to said affidavit,

(c)     “(1)(c)(i)” of this list is in paragraph 9 of said affidavit,

(d)    “(1)(c)(ii)” of this list is in paragraphs 3 and 9, and Exhibit B, of said affidavit,

(e)    “(1)(c)(iii)” (preamble) of this list is in paragraphs 8 and 9, and Exhibit H, of said affidavit,

(f)     “(1)(c)(iii)(A)” of this list is in Exhibit H of said affidavit,

(g)    “(1)(c)(iii)(B)” of this list is in paragraph 4, and Exhibit C, of said affidavit,

(h)   “(1)(c)(iii)(C)” of this list is in paragraph 5, and Exhibits D and E, of said affidavit,

(i)      “(1)(c)(iii)(D)” of this list is in paragraph 8, and Exhibit H, of said affidavit and

(j)      “(2)” of this list is in paragraphs 6 and 7, and Exhibits F and G, of said affidavit.

 

Respondent’s Additional Submission includes the following, basically in response to the correspondingly numbered points of the immediately preceding paragraph:

(1)    “In response to Complainant’s allegations with respect to the question of whether Complainant’s Counsel was consulted for consent to the extension, we point out that the facts do, in fact, indicate that a communication requesting consent was sent to Complainant’s Counsel.  Complainant’s Counsel could have consented or withheld consent.  Complainant’s counsel did not consent.  Accordingly, the decision of the NAF was based on the premise that Counsel did not consent.  The decision based on this premise was completely appropriate.   If, in the alternative, Complainant’s Counsel had consented, the same result would have occurred.  Furthermore, it is highly questionable whether Complainant has been prejudiced by this occurrence.  Prejudice has certainly not been proven.”; and

(2)    “Complaint alleges that a copy of the Response had not been sent to Complainant prior to the delivery to the NAF.  Complainant fails to prove this allegation.  Complainant alleges that Respondent sent the copy to Complainant at approximately 12:06 AM EASTERN time in the early morning of November 20.  Complainant then alleges that it was therefore impossible for the copy to be sent prior to the delivery to NAF by midnight on November 19.  However, Complainant overlooks the fact that the deadline for the submission to NAF is midnight CENTRAL time – which corresponds to 1:00 AM Eastern time.  Accordingly, the copy was sent to Complainant approximately one hour prior to the deadline.  Accordingly, the Complainant has failed to prove that the copy to Complainant was sent after the copy was delivered to NAF.”

 

FINDINGS

In this proceeding it has not been proven that “the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights” within the meaning of that expression as it occurs in Policy paragraph 4(a)(i).

 

DISCUSSION

INTRODUCTION

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 and 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 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.

 

In view especially of Rule 15(a), the Panel notes four rules and principles of law that it deems applicable to ascertaining whether each of those three elements have been proven. First, that

Both [dispositive] and evidential facts must, under the law, be ascertained in some one or more of four possible modes: 1. By judicial admission (what is not disputed); 2. By judicial notice, or knowledge (what is known or easily knowable); 3. By judicial perception (what is ascertained directly through the senses; cf. “real evidence”); 4. By judicial inference (what is ascertained by reasoning from facts already ascertained by one or more of the four methods here outlined).[1]

Second, especially as to mode “3”, that Rule 10(d) provides that “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.” Third, as to construing and applying Rule 10(d), especially as to whether mode “1” rather than mode “3” applies: a complainant’s pleading of fact that is not disputed (or, phrased differently, not “put in issue”) by a respondent against whom it is contended, is an admission by that respondent, so evidence tendered as being rationally probative of (i.e. as being “relevant to”) establishing that fact becomes immaterial, and hence inadmissible, as to establishing that fact.[2] Fourth, as to whether mode “2” rather than either of mode “1” or mode”3” applies, a canvassing of Anglo-American law and commentary shows that 

It was not desirable, nor indeed possible, to foreclose the trier’s use of background information but should the matter noticed be in the forefront of the controversy, should the fact be determinative, the law protected the adversary by insisting that the matter be so commonly known, and hence indisputable, that its notice could not prejudice the opponent.[3]

and that “The party who has the burden of proof on the issue may have to call on the trier to judicially notice the fact when it comes time to analyze the question.”[4]

 

PROCEDURAL MATTERS

Timeliness of Additional Submissions

Neither Party appears to have put in issue the timeliness of the other Party’s Additional Submission. The Panel finds each Party has admitted that the other Party’s Additional Submission is timely and in any event the Panel has used its discretion to determine whether to consider the Parties’ additional submissions.

 

Content of Additional Submissions

On substantive matters, neither Party’s Additional Submission provides anything (without attempting to respectively amend the Complaint or the Response) that was not already apparent to the Panel as being at issue as a result of the Complaint and the Response. The Panel has used its authority to determine the admissibility of each Party’s Additional Submission and has as a result considered the procedural points set out above under the heading of “C. Additional Submissions”.

 

Timeliness of Request for Response Deadline Extension

Respondent’s Additional Submission contention “(1)” puts in issue Complainant’s Additional Submission contentions “(1)” and “(3)(a)” to “(3)(i)”. As a result, the affidavit paragraphs and Exhibits referred to in those Complainant contentions are material evidence. They also appear to be relevant, and admissible, and in rejecting Complainat’s request that the Panel refuse the Response, the Panel notes nine aspects of them and about corresponding aspects of each Party’s Additional Submission. The Panel does so in a context that includes Broadcom Corp. v. Becker, FA0 98819 (Nat. Arb. Forum Oct. 22, 2001) wherein there was conferral between the parties prior to a formal extension request to the Forum and there was no information that caused the panel to question the propriety of the Forum’s decision to grant the extension request. (In this case, the Parties’ Additional Submissions put such conferral in issue.)

 

First, the faxed letter to formally request the Forum for an extension shows by its header that it was sent at or about 12:47 a.m. (i.e. at a little less than one o’clock in the morning) on October 28, 2002.

 

Second, the faxed letter to formally confer with Complainant about an extension shows by its header that it was sent at or about 12:54 a.m. (i.e. approximately seven minutes later but still at a little less than one o’clock in the morning).

 

Third, Complainant’s contentions emphasize the fax header information, and the reference in the fax body to “today (October 28, 2002)”, of the 12:54 a.m. fax yet preference the “10-27-02” signature-block date of the12:47 a.m. fax (by repeatedly referring to it as the “October 27, 2002 Extension Request”) to the complete exclusion of the 12:47 a.m. fax header information. (The Panel does however also note that the Forum’s “Response Extension Request Form” for instances when a complainant does not consent (i) has as its last paragraph “In accordance with Forum Supp. Rule 6(a)(i) Respondent has conferred with Complainant concerning this request and Complainant does not consent.”, but that in Respondent’s formal extension request the last three words of that paragraph were replaced by “has not yet responded”; and (ii) on the line below the signature blank, has “Dated:” followed by a date blank, but that in Respondent’s formal extension request that text and blank were moved up to the same line as, and to the right of, the signature blank and the text was replaced by “Date:”.)

 

Fourth, and basically despite the third of these nine aspects, Respondent was indeed remiss with its formal extension request: by seven minutes at a little less than one o’clock in the morning and by the inaccuracy associated with the difference between the signature-block date and the date that the request was faxed.

 

Fifth, however, the informal extension request e-mail of October 25, 2002 was part of an e-mail string (started by the Forum on October 10, 2002 which served the Complaint on the Respondent and copied Complainant, ICANN, and the Registrar) that had as its subject-line the rather attention-getting “RE: Motorola, Inc. v. RTU Inc.- FA0210000127709- Commencement” and by which Complainant was at least notified of Respondent’s desire for an extension. (It seems to the Panel that the better approach would have been for Respondent to have made Complainant an addressee of a like e-mail or at least have included, as did the initial e-mail of the string, both a salutation to and content for Complainant’s representative.) The issue is therefore at least partly whether by that October 25, 2002 e-mail Complainant was entitled to consider itself as only notified of, rather than confered with as to, Respondent’s desire for an extension, and whether Complainant did not have to promptly object to either or both of the Forum and Respondent (e.g. then or shortly after October 28, 2002) and was instead entitled to object only four weeks later (i.e. on 25 November, 2002, after the Response was submitted), even though the October 28, 2002 e-mail from the Forum invited each Party to “Please review the attached document” and clearly  indicated that the attachment was the Order since the e-mail shows the attachment file name as “Extension Granted - Complainant Does not Consent.doc”. It seems to the Panel that since the October 28, 2002 e-mail from the Forum was sent as part of an adjudicative proceeding, by an administrator of that proceeding, the e-mail implied such an opportunity to object and the absence of an expressed invitation to object is not determinative.

 

Sixth, the doctrine of de minimis non curat lex is to the effect that jural law “does not care for, or take notice of, very small or trifling matters” or “does not concern itself about trifles”.[5]

 

Seventh, the doctrine applies against the Complainant’s contentions, especially in the sense that those seven minutes are a trifle or a very small or trifling matter.

 

Eighth, the seventh of these nine aspects seems especially so when considering whether in view of the above circumstances Complainant was prejudiced.

 

Ninth, particularly regarding the eighth of these aspects, suppose Respondent had instead sent the same formal conferral fax to Complainant in the first few hours of October 28, 2002, and then, seven minutes later, had sent to the Forum the same faxed formal request of the Forum for an extension; Respondent might well be considered to have complied, although there would still be the difference between the date of signing and the date of faxing and as a result there would still possibly be the representation to the Forum that as of the date of signing the Parties had conferred whereas at least in a formal sense (as contrasted with the October 25, 2002 e-mail) they had not. Or suppose Respondent had sent virtually the same formal conferral fax to Complainant (referring instead to “tomorrow (October 28, 2002)”) but had done so in the last few hours of October 27, 2002, and then, seven minutes later, but still in the same calendar day, had sent to the Forum the same faxed formal request of the Forum for an extension; it would have been that much clearer that Respondent had complied. In either event, the result basically would have been the same as in the present case.

 

Timeliness of Service and Filing of the Response

Respodent’s Additional Submission contention “(2)” puts in issue Complaint’s Additional Submission contentions “(2)” and “(3)(j)”. Assuming, without deciding, that the Response was a day late, the doctrine of de minimis non curat lex would also be applicable against Complainant’s contentions on this issue. As to accepting such day-late submissions see e.g. Arthur Guinness Son & Co. (Dublin) Ltd. v. Feeney O’Donnell and John O’Donnell, D2000-1710 (WIPO Feb. 9, 2001) and University of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000).

 

CONTENDED DISABILITIES OF PANEL

As for Respondent’s first such general contention (i.e. their contention that their dispute with Complainant is “not a clear case of’ cybersquatting’ and ‘cyber piracy’“ and is instead “legitimate”, creates a disability of the Panel against determining the dispute), the Panel disagrees. In making that contention, Respondent quotes from paragraph 4.1(c) of the ICANN Second Staff Report that the fact that the Policy “does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger’s trademark) is a feature of the policy, not a flaw.” The Panel does not disagree with that passage quoted by Respondent, but it must be read in the context of at least two other passages.

 

A first contextual passage is from the White Paper (i.e. the U.S. Government “Statement of Policy on Management of Internet Names and Addresses” 63 Fed. Reg. 31741 published 10 June 1998, at 31747) and is as follows: “ … cyberpiracy (as opposed to conflicts between trademark holders with legitimate competing rights)”. In this proceeding, Respondent is not contended to be a “trademark holder” within the meaning of that expression as it occurs in that passage from the White Paper, and is instead basically contended to be a re-seller with privileges as to a trademark (sometimes commonly referred to as liberties as to a trademark but in any event not trademark rights in a narrower sense). Disputes between contended trademark holders and contended re-sellers are, and have frequently been decided to be, susceptible to resolution by mandatory administrative proceedings under the Policy. (See e.g. Stanley Logistics, Inc. v. Motherboards.com, FA 128068 (Nat. Arb. Forum, Dec. 2, 2002) and cases cited therein.) Respondent’s first such contention is in that sense and to that extent therefore wrong.

 

A second contextual passage is the text that immediately follows Respondent’s quoted passage from paragraph 4.1(c) of the ICANN Second Staff Report, along with part of paragraph 4.5(c) from that same Report. The contextual passage is as follows: “The policy relegates all ‘legitimate’ disputes-- such as those where both disputants had longstanding trademark rights in the name when it was registered as a domain name-- to the courts. … It should be emphasized that a finding of ‘legitimate’ right under paragraph 4(c) means only that the streamlined dispute resolution procedure is not available and that the dispute is a legitimate one that should be decided by the courts.” That passage indicates that in this proceeding it would be a “finding”, and not merely a contention, of Policy paragraph 4(c) “rights or legitimate interests” that would basically make the Policy inapplicable to the dispute. Respondent’s first such contention is in that sense and to that extent therefore wrong.

 

As for Respondent’s second such contention (i.e. that the Panel has a disability against determining disputed factual matters), the Panel disagrees. There is no rule of law and no provision (expressed or implied) of the Policy or of the Rules made under the Policy or of the Forum’s Supplemental Rules made thereunder that support Respondent’s contention. (Indeed, Rules 15(a), 10(a), and 10(d) appear to indicate quite the contrary.) Respondent’s second such contention is in that sense and to that extent therefore wrong.

 

Respondent cites and quotes from three panel decision passages in support of Respondent’s first and second contention of Panel disabilities, but those passages cannot have the effect contended for them by Respondent. If they were to the effect contended for them by Respondent, they would indicate that once a dispute is submitted (i.e. in accordance with Policy paragraph 4(a) for a mandatory administrative proceeding under the Policy) then all that would have to occur for the dispute to no longer be subject to, or decidable under, the Policy would be for the respondent to contend against the complaint’s contentions e.g. by pleading Policy paragraph 4(c) “rights or legitimate interests” or by submitting evidence. This paragraph, and the three immediately preceding paragraphs hereof illustrate that those three panel decision passages cannot have that effect. Instead, even conflicting evidence is no bar to resolution of disputes that are submitted to a mandatory administrative proceeding under the Policy: see e.g. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., D2000-1525 (WIPO Jan. 29, 2001) citing both Electronic Commerce Media, Inc. v. Taos Mountain, FA 95344  (Nat. Arb. Forum Oct. 11, 2000) and Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).

SUBSTANTIVE MATTTERS

Identical or Confusingly Similar

The Response does not put either of Complaint contentions “(1)(c)” or “(5)(b)” in issue so the facts contended thereby are admitted and evidence submitted as being rationally probative thereof is immaterial thereto.

 

Response contention “(1)” puts in issue Complaint contentions “(1)(a)(i)” and “5(a)”. As a result, Complaint Exhibits F and G are material evidence. They also appear to be relevant, and admissible, and the Panel especially notes two points about them. First, the owner named in those exhibits is Motorola K.K. of Minato, Tokyo, Japan, which person therefore does not appear to be Complainant. Second, those exhibits are not evidence that Complainant (as contrasted with Motorola K.K. of Minato, Tokyo, Japan) has Policy 4(a)(i) trademark “rights” in those contended registrations; indeed, in this proceeding there is no such evidence.

 

Response contention “(1)” also puts in issue Complaint contentions “(1)(a)(ii)” and “(1)(b)”. As a result, the Panel notes that in this proceeding there is no evidence that Complainant has Policy 4(a)(i) common-law trademark “rights” in MOSCAD: see the above list of Complaint contentions, wherein there is a conspicuous absence of reference to evidence that is contended to be ratonally probative of Complaint contentions “(1)(a)(ii)” and “(1)(b)”.

 

The Panel also notes that even if either or both of Complaint Exhibits H and I were contended to be be rationally probative of Complaint contentions “(1)(a)(ii)” and “(1)(b)”, said Exhibits are insufficient evidence that Complainant has Policy 4(a)(i) common-law trademark “rights” in MOSCAD. In so noting, the Panel is especially aware of three aspects of those exhibits. First, section 2 of the ITS Agreement includes that “The defined term Product refers to all the Motorola products and accessories listed in Attachment A”, and said Attachment A appears to be an attachment to and part of the ITS Agreement but in said Attachment A the area that appears to be for such listing is blank. Second, however, and especially as a result of the occurrence of the word “refers” in that section 2 provision, that provision is not necessarily exhaustive. Third, an Attachment H appears to be an attachment to and part of the ITS Agreement, said Attachment H is as to “marketing responsibility for Products” and as to “performance standards for the Products” and, in the “Performance standards” part of that attachment, there is a list headed “Products” which includes “MOSCAD ET AL”. However, in contrast to the third of those three aspects and solely by way of illustrative example, suppose there were Asynchronous Transfer Mode products and that such products were produced by a corporation named Xyz Limited and were, or were by contract to be, marketed as “Xyz ATM products”; that would not prove on the balance of probabilities that there exist trademark rights in ATM, or even an acknowledgement by the person who is to do the marketing that there exist trademark rights in ATM, let alone that Xyz Limited has such rights-- product lines, or other product designations, are not necessarily trademarks. 

 

In view of the three immediately preceeding paragraphs hereof, the Panel finds that in this proceeding there is no evidence, or at least not sufficient evidence, that Complainant has Policy 4(a)(i) “rights” in MOSCAD.

 

The Panel also makes two further findings. First, that from the above discssion of judicial notice (i.e. the “Fourth” sentence in the third paragraph of the “Introduction” to this Discussion), both quoted passages are especially applicable in this case; yet Complainant did not “call on the trier to judicially notice the fact when it comes time to analyze the question”, such that in the circumstances of this particular case judicial notice is not available to this Panel as to whether Complainant has Policy 4(a)(i) “rights” in MOSCAD. Second, that from the above discussion of judicial inference (i.e. mode “4” referred to in the “First” sentence of the “Introduction” to this Discussion), in this particular case there have not been facts already ascertained by one or more of judicial admission, judicial notice, judicial perception, and judicial inference as to whether Complainant has Policy 4(a)(i) “rights” in MOSCAD, such that in the circumstances of this case it cannot be ascertained by judicial inference that Complainant has Policy 4(a)(i) “rights” in MOSCAD.

 

In view of all of the above, the Panel finds that in this proceeding it has not been proven on the balance of probabilities that “the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights” within the meaning of that expression as it occurs in Policy paragraph 4(a)(i).

 

Rights or Legitimate Interests

In view of all of the above, and especially the second paragraph of the “Introduction” to this Discussion together with the immediately preceding paragraph hereof, the Panel need not discuss this topic.

 

Registration and Use in Bad Faith

In view of all of the above, and especially the immediately preceding paragraph hereof, the Panel need not discuss this topic.

 

DECISION

In view of all of the above, the Panel dismisses the Complaint.

 

 

 

Rodney C. Kyle, Panelist

Dated: December 26, 2002

 

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