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Motorola loses Razr domain name case

Failure to provide evidence

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Motorola has lost a battle to gain control of the domain name motorazr.com because it failed to prove when it started using the term Moto Razr. The domain name will be kept by its US owner R3 Media.

In a domain name dispute resolution process overseen by the Artibration and Mediation Center of the World Intellectual Property Organisation (WIPO), Motorola attempted to win control of motorazr.com, a site carrying news and adverts relating to mobile phones.

Motorola said that R3 Media acted in bad faith when it registered the domain name in 2004 and that the site is being used to generate advertising revenue by association with it. "[R3 Media] claims it is in the nature of a news service site for many cellular products which is funded by revenue from advertisements placed on it," said the WIPO ruling. "[Motorola] claims [R3] is using the domain name to misdirect customers to advertising sites for commercial gain."

The case hung on whether or not the domain name was registered in bad faith and in breach of trade mark rights held by Motorola.

Motorola began marketing its Razr line of mobile phones in May 2004 and the motorazr.com domain was registered by R3 in July 2004. Motorola did not file a trade mark application for Motorazr until June 2005, almost a year after the domain name registration.

It is possible for a domain name to be passed to a brand holder who does not hold a trade mark registration, but the company must provide proof to the WIPO arbitrator that the trade marked phrase was used by the company at the relevant time. Motorola failed to do this.

"There are many WIPO decisions holding that unregistered marks are a sufficient basis on which to base a claim," wrote the Panellist Thomas Halket. "[Motorola] does allege that it did so use the mark, but it is an allegation which is contested by [R3] and [Motorola] has offered no underlying proof of the allegation. It has submitted no dated first-use publication containing the mark."

"The record contains no explanation of why the evidence of [Motorola]'s real and actual use of Motorazr is so thin, why a year passed from product launch to trademark application, and why [Motorola] failed to respond to the Panel’s express invitation to provide further information," wrote Halket. "In the present abbreviated proceedings, with these questions and issues open, the Panel on balance concludes that it has no choice but to decline to make a finding of bad faith in this matter."

Halket emphasised that this did not mean that he approved of R3's use of the domain. He wrote that he found it "difficult to swallow" R3's claim that, because R3 "allegedly 'coined' the term MOTORAZR, this somehow establishes [R3's] rights in the disputed domain name."

He added that a court would be a more appropriate forum for Motorola to pursue its claim.

See: The ruling

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OUT-LAW.COM is part of international law firm Pinsent Masons.

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