Motorola Solutions, Inc. v. Carsten Gallini
Claim Number: FA2212002024058
Complainant is Motorola Solutions, Inc. (“Complainant”), represented by Jennifer M. Mikulina of McDermott Will & Emery LLP, Illinois. Respondent is Carsten Gallini (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <molorolasolutions.com>, registered with Google LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., as Panelist.
Complainant submitted a Complaint to Forum electronically on December 14, 2022; Forum received payment on December 14, 2022.
On December 15, 2022, Google LLC confirmed by e-mail to Forum that the <molorolasolutions.com> domain name is registered with Google LLC and that Respondent is the current registrant of the names. Google LLC has verified that Respondent is bound by the Google 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 December 20, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2023 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@molorolasolutions.com. Also on December 20, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Respondent filed a Response to the Complaint on December 20, 2022.
On December 27, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Carol Stoner, Esq., as Panelist.
Complainant requests that the domain name <molorolasolutions.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it is a global leader in public safety and enterprise security, offering mission critical communications products, solutions and services for communities and businesses. Complainant also contends that it is the exclusive licensee of the mark MOTOROLA SOLUTIONS, which is registered with the United States Patent and Trademark Office (“USPTO”) on March 02, 2021, with Reg. No. 6, 281, 257.
Complainant contends that Respondent’s <molorolasolutions.com> mark is virtually identical and confusingly similar to Complainant’s mark because it merely replaces the letter “t” with the letter “l” and adds the “.com” generic top-level domain.
Complainant contends that Respondent has no legitimate interests in the <molorolasolutions.com> domain name, as it is not commonly known by this name, and is not authorized or licensed to use the name. Complainant contends that Respondent does not use the disputed domain for a bona fide offering of goods or services or legitimate non-commercial or fair use. Complainant also contends that the disputed domain resolves to a page, both passing off as Complainant and criticizing Complainant, which page currently resolves to an inactive webpage.
Complainant further contends that Respondent engaged in typosquatting. Complainant lastly alleges that Respondent had actual knowledge of Complainant’s rights in the disputed mark and registered the mark for the purpose of criticism of Complainant, and thus registered and used the mark in bad faith.
B. Respondent
Respondent replied to Forum on December 20, 2022. In his Response, Respondent said that the domain in question was put up as a satire domain and shared around the advanced user community as a joke and that it received positive reactions among the Techs.
Respondent offered to transfer the domain name to the Complainant. However, Respondent also contended that he had zero ability to transfer the locked domain, due to the completely understandable UDRP Complaint.
PRELIMINARY ISSUE: CONSENT TO TRANSFER
Respondent in his Response, says, “As I have no malicious intentions if yall want the domain transferred you can have it.” Respondent then disclaims his ability to transfer a locked domain and concludes with, “Please let me know how MSI wants to proceed.” The plain construction of Respondent’s declarations is one of consent to transfer, as it similarly comports with Complainant’s demand for transfer of the disputed domain. Therefore, Panel will recognize the twin requests of the parties. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant…Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.).
As Respondent has consented to transfer of the disputed domain name <molorolasolutions.com> Panel will make no factual or legal findings.
DISCUSSION
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.
As Respondent has consented to transfer of the disputed domain name <molorolasolutions.com> Panel will not discuss proof of the abovementioned three elements required to obtain an order that a domain name should be cancelled or transferred.
Given that both Complainant and Respondent concur that the domain name <molorolasolutions.com> should be transferred to Complainant, the Panel concludes that said relief shall be GRANTED.
Accordingly, it is Ordered that the <molorolasolutions.com> domain name be TRANSFERRED from Respondent to Complainant.
Carol Stoner, Esq., Panelist
Dated: January 09, 2023
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