Generic Top Level Domain Name (gTLD) Decisions

Complainant is Motorola, Inc., Schaumburg, IL, USA ("Complainant") represented by Fritz E. Berckmueller, of Katten, Muchin, Zavis. Respondent is Diana Gomez, Hollywood, FL, USA ("Respondent").

The domain name at issue is <motorolapagerrepair.com> registered with Network Solutions.

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as a panelist in this proceeding. Carolyn Marks Johnson sits as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 27, 2001; the Forum received a hard copy of the Complaint on March 28, 2001.

On April 2, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <motorolapagerrepair.com> is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 April 2, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 23, 2001 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@motorolapagerrepair.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On April 27, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 alleges that:

B. Respondent did not submit a Response to this proceeding.

Since 1943, Complainant has marketed, manufactured and promoted a vast array of products and services in the United States and internationally with its famous MOTOROLA mark. Among the goods and services provided are the apparatus for wireless paging and installation and repair of electronic equipment.

Complainant has federally registered its MOTOROLA marks since February 9, 1943 and has a family of marks incorporating the word "PAGER" for the service and repair of radio pagers.

Complainant has also established a significant on-line presence through registration of domain names incorporating its MOTOROLA marks, including the following: <motorola.com>, <motorola.net>, <motorola.org>, <motorolapager.com>, <motorolapager.net> and <motorolarepair.com>. Complainant seeks out and transacts business through these on-line web sites.

Respondent’s domain name, which was registered on January 3, 2000, is connected to a web site that offers pager repair services. Respondent is not affiliated with Complainant

and has not been licensed to use Complainant’s mark.

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(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.

Complainant has established rights in its MOTOROLA mark. Respondent’s domain name incorporates Complainant’s distinctive MOTOROLA mark with the generic terms "pager" and "repair," which describe products and services that Complainant provides. See Yahoo! Inc. and GeoCities v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to Complainant’s marks and likely to mislead Internet users into believing that products and services offered by Respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered).

The Panel finds that the domain name, <motorolapagerrepair.com>, is confusingly similar to Complainant’s trademark. Policy ¶ 4(a)(i).

Complainant has established rights in the MOTOROLA mark. Respondent is engaging in an offering of goods and services in connection with the disputed domain name that might otherwise be a bona fide commercial use of the generic words used were it not for the fact that the nature of the goods and services Respondent offers through the domain name are in competition with Complainant and use Complainant’s mark. Such an offering of goods and services in the name of another and in competition with another through a disputed domain name is not a noncommercial or fair use. See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that "unauthorized providing of information and services under <statefarm-claimshelp.com> cannot be said to be the bona fide offering of goods or services"); see also Ullfrotté AB v. Bollnas Imports, D2000-1176 (WIPO Oct. 23, 2000) (finding that although Respondent legitimately sells goods originating from Complainant, this does not give him the right to register and the use the mark as a domain name without the consent of the holder of the trademark).

Respondent is not affiliated with Complainant and is not commonly known by the name "motorolapagerrepair." See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

The Panel finds that Complainant has established rights to and legitimate interests in the mark contained within the domain name registered by Respondent and that Complainant uses its mark to offer the same services and goods offered by Respondent through the disputed domain name. The Panel also finds that Respondent established no rights or legitimate interests in the mark contained within the domain name registered by Respondent. Policy ¶ 4(a)(ii).

Respondent registered and used Complainant’s mark in the domain name in dispute and Respondent’s use of that domain name is creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, and endorsement of the Respondent’s web site and services. This is evidence of bad faith. See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered and used the domain name <statefarmnews.com> in bad faith because Respondent intends to use Complainant’s marks to attract the public to the web site without permission from Complainant).

Therefore, the Panel finds that Complainant has met the requirement of showing that Respondent registered and used the domain name in issue in bad faith. Policy ¶ 4(a)(iii).

Having established all three elements required under the ICANN Policy, the Panel orders that the domain name <motorolapagerrepair.com> be transferred, as requested, from Respondent to Complainant.