Motorolaradiobatteries.com, Symbolscannerbatteries.com

The timeline behind motorolaradiobatteries.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Motorola, Inc. and Symbol Technologies, Inc. v. Domain Manager Claim Number: FA0802001142633 PARTIES Complainant is Motorola, Inc. and Symbol Technologies, Inc. (“Complainant”), represented by Robert M. Wasnofski, of Dorsey & Whitney, LLP, New York, USA. Respondent is Domain Manager (“Respondent”), Gurgaon, India. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <motorolaradiobatteries.com>, and <symbolscannerbatteries.com>, registered with Moniker Online Services, Inc. PANEL 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. Richard Hill as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on February 4, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 4, 2008. On February 8, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <motorolaradiobatteries.com>, and <symbolscannerbatteries.com> domain names are registered with Moniker Online Services, Inc. and that the Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 February 19, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 10, 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 postmaster@motorolaradiobatteries.com and postmaster@symbolscannerbatteries.com by e-mail. An electronic copy of the Response was received on March 10, 2008. However, the Response is deficient under ICAAN Rule 5 because a hard copy of the Response was not received prior to the Response deadline. On March 18, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant The Complainant alleges that has used and/or registered the name and marks MOTOROLA and SYMBOL in many countries around the world and that these marks are well-known in connection with its products. The MOTOROLA mark is famous, in particular for radios and mobile communication products, including batteries for such devices. The SYMBOL mark is also famous in connection with enterprise mobility solutions, such as bar code scanners, rugged mobile computers, and batteries for such devices. According to the Complainant, the disputed domain names are essentially identical and certainly confusingly similar to the Complainant’s marks. The Complainant alleges that the Respondent cannot demonstrate that it has any rights or legitimate interests in the disputed domain names. To the extent that the Respondent is using the disputed domain names, it is doing so to operate pay-per-click websites from which it derives revenue. Further, some of the links at those websites direct consumers to websites that offered batteries other than the genuine products produced by the Complainant. Such use of the Complainant’s marks misleadingly diverts consumers to the disputed domain names in violation of the Policy. According to the Complainant, the Respondent registered the disputed domain names without a bona fide basis for such registration in an attempt to capitalize unfairly on the goodwill of the Complainant’s famous marks. Further, says the Complainant, the Respondent is also using the disputed domain names in bad faith with an intent to deceive the public into believing that its websites are associated in some manner with the Complainant, thus obtaining a free ride on the Complainant’s famous marks and diverting Internet traffic intended for the Complainant. In other words, says the Complainant, the Respondent registered and is using the disputed domain names to intentionally attract Internet users to its websites by creating the false impression that the sites are affiliated with or sponsored by the Complaint, and this for the purpose of commercial gain. This violates the Policy. B. Respondent The Respondent states that it was not made aware of cease and desist letters from the Complainant. If these letters were sent to Moniker Privacy Services, it was not informed at all. It states that, as soon as it became aware of the complaints from the Complainant, it took the actions requested by the Complainant. Respondent further states that, while it does not agree with many of the Complainant's statements and repeated allegations of "bad faith" acts, it is in fact very agreeable to resolve this matter amicably and in good faith. And the Respondent states that it agrees to transfer both of the disputed domain names to the Complainant without further delay. FINDINGS The Panel will not make any findings of fact, for the reasons explained below. DISCUSSION The Panel notes that although the Respondent’s electronic submission was received in a timely manner, the Respondent failed to submit a hard copy before the Response deadline as required by ICANN Rule 5. In accordance with Rules 10(a), 10(b) and 10(d), the Panel nevertheless decides to accept the Response. See Blue Martini Software, Inc. v. Entredomains, Inc., D2000-0917 (WIPO, Nov. 24, 2000) (“The Rules specify the requirements of a Response to a Complaint filed in accordance with the Policy … . Regrettably, Respondent has failed to comply with its obligations. … To expedite the resolution of this matter, however, I have considered the Response as if it had been properly submitted.”); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO, Mar. 3, 2000) (“While this email does not formally constitute a Response as defined by paragraph 5 of the Rules, its content will be taken into account in the analysis of this matter.”). 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.” In this case, the parties have both asked for the domain name to be transferred to the Complainant. This Panel holds that in this UDRP proceeding, in accordance with a general legal principle governing arbitrations as well as national court proceedings, that it would not be appropriate for it to act nec ultra petita nec infra petita, that is, that it should not here issue a decision that would be either less than requested, nor more than requested by the parties. Since the requests of the parties in this case are identical, the Panel recognizes the common request, and finds it unnecessary in the circumstances to make findings of fact or of compliance (or not) with the three requisite elements of the Policy. A similar conclusion was reached by the Panel in Boehringer Ingelheim International GmbH v. Modern Limited ‑ Cayman Web Development, FA 133625 (Nat. Arb. Forum, Jan. 9, 2003) and in Alstyle Apparel/Active Wear v. Schwab, FA 170616 (Nat. Arb. Forum, Sept. 5, 2003). See Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. 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.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”). Identical and/or Confusingly Similar For the reasons indicated above, the Panel need not consider this element of the Policy. Rights or Legitimate Interests For the reasons indicated above, the Panel need not consider this element of the Policy. Registration and Use in Bad Faith For the reasons indicated above, the Panel need not consider this element of the Policy. DECISION For all the foregoing reasons, and given the common request of the parties, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <motorolaradiobatteries.com> and <symbolscannerbatteries.com> domain names be TRANSFERRED from Respondent to Complainant. Richard Hill, Panelist Dated: April 1, 2008 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.