Motorola resorts to reverse domain hijacking of motorazr.com
Update: Motorola resorts to reverse domain hijacking of motorazr.com
Think back to May 2004, when Motorola launched the first RAZR phone. Do you recall the company ever using the name or term MOTORAZR? I sure don’t, and that is because they hadn’t.
To make a long story short, Motorola is trying to use a legal tactic to take away what is rightfully ours – the mobile phone news site .
Motorazr.com was registered on July 28, 2004, after which it was immediately put into use as a news service and community website. Motorazr.com had already been providing news to the mobile community for two years, when without any prior notifications Motorola’s lawyers sent a Cease & Desist Order on August 31, 2006.
Motorola makes the following claims in their C&D Order: First, that is identical or confusingly similar to a trademark to which they have the rights. Second, that we don’t have the rights to, or a legitimate interest in the domain name. And third, that the domain name was registered in bad faith and is being used in bad faith.
In hope of explaining the legitimacy of the motorazr.com site, I had a brief discussion with Motorola’s lawyer, Julie P. Setren; unfortunately, we could not reach an understanding. Ms. Setren initially requested that I redirect the site to any domain name other than motorazr.com, and I said no, because I legitimately own and use the site. Then she offered money, asking “how about $1,500 (the cost of going through arbitration) for the domain?” I said “no thank you, the website isn’t for sale.” I ended the conversation by telling Ms. Setren that the motorazr.com site will stay up and running unless I’m ordered by law to take it down. That’s when Motorola brought in the WIPO (World Intellectual Property Organization) Arbitration and Mediation Center (the Center).
Let me sum up Motorola’s complaint and my response – in case you don’t want to read through all the legal mumble jumbo.
Motorola claims that we infringed upon their Trademark. This trademark did not exist until their initial filing date of June 28, 2005, and it was not awarded to them until November 11, 2006. With those dates in mind, and knowing that we created motorazr.com in July, 28, 2004, how could our site infringe upon a mark that was non-existent nearly 11 months before, when the site was first created?
Today, December 6, 2006 is the absolute last day for us to send in our response. In that response, I break down each of the points Motorola raised and defend our rights to the domain . I’ve sent in our response and I’ve also decided that today is the day I will make this story public.
I’ve heard numerous stories where large companies will bully smaller companies and get away with it, but I never expected to be in that position. All we can do now is wait for the arbitrator to come back with a verdict.
With that said, I’m very curious to read your thoughts on the matter.
Our response:
http://docs.google.com/View?docid=ddvfjbqc_9v5ms3s
Motorola’s complaint:
http://docs.google.com/View?docid=ddvfjbqc_10g4wrt6
Read Motorola’s Cease & Desist
25 Comments, Comment or Ping
David G. Pope
The Motorolla trademark did not exist when he registered the domain name. The owner said the website is not for sale. I think Motorolla needs Cease & Desist. Leave the guy alone.
Dec 7th, 2006
Mak
Quite an incredible story. It seems to me that Motorola is extremely foolish to open up this can of worms.
As is clear from their own Complaint, “Motorazr” was a term used in commerce in connection with mobile phones, well before they bothered to register it, and raises questions regarding whether this term qualifies for registration (and whether they own it if it does). One wonders whether or not Motorola disclosed this fact in their application to the PTO, and whether their application is invalid as a result? I hope that you will let the PTO know that you were using this name, and dispute the trademark registration. It could well be that they do not have any right to a trademark of this term given the facts stated in their Complaint. Moreover, it could be that your rights to the name — despite the fact that you didn’t register it — are superior to Motorola’s.
Dec 7th, 2006
Lobo Gris
Good for you for standing up for your rights. I for one hope you prevail in your dispute.
Lobo Gris
Dec 7th, 2006
jim
I just read about this guy in the wall street journal - his site unbox.it along with slashgear and slashphone is in the video as well
http://online.wsj.com/article_email/SB116545349170642892-lMyQjAxMDE2NjA1NzQwNTczWj.html
http://online.wsj.com/public/page/8_0004.html
Dec 7th, 2006
conway
If they registered the rights to that name a full 11 months after you did then its their fault. You shouldn’t be to blame. At the very least they should offer you a reasonable compensation. Maybe not a million but certainly they can do better than $1500.00.
And if they don’t then they shouldn’t get your site name period.
Dec 7th, 2006
MDXMEHI
Don’t give up! Keep your name…Corporate Bullying!
Dec 7th, 2006
dc2000
What a bunch of crap, Go away Motorola, no one needs you. Trying to push a company around.. Pfft
Dec 7th, 2006
Ian
This is absolutely unacceptable. It is not new that big companies are using undercut methods to bully smaller ones. I think you guys have a strong case against Motorola. If some sensible jury listens carefully to your claims and rights to the domain/site, i am certain everything will be smooth.
Good luck,
Ian
Dec 7th, 2006
bigb
Motorola should estimate how much they may spend to have laywers get what they want in this case the dirty low-down stinkin hard way, and then offer that amount for this domain… at least that way they might come close to what the domain is actually worth to them. I understand it’s not for sale… hell I wouldn’t give it up to Motorola after all the bullying anyway.
Unfortunately, they do now have the trademark, and even though your site was up long before they registered that trademark… they have it, not you. I’m not sure what legal precedent there is in a case like this, but it seems they may have a strong case. Had you registered motorazr.com as a trademark when you started the site, you’d be in a much better position now.
I’m not defending the pukes at Motorola, though. I applaud your steadfastness. Stick to your guns on this one. I’m routing for you!
bigb
Dec 7th, 2006
Kev
I believe the best way to stick it back to them would be to counter sue motorola for the trademark rights since you owned the domain name first and established it well before there product was ever brought forward. This in effect gives you marketing rights to the name as a product label if you had a reasonable readership before they applied for the trademark license.
Dec 7th, 2006
Double Trouble
There is plenty of jurisprudence in this area under the udrp. Fortunately these precident rulings favor of registrants who registered domains prior to the granting and registration of a corresponding trademark.
This is rudimentary stuff and I hope (sorry didn’t read the complaint and response…..no need here!) that you have asked the panel for a ruling of reverse domain name hijacking which if levied would allow you to recover the costs of preparing and defending the action brought against you by the complainant.
Good luck.
Dec 7th, 2006
G
Don’t let it go. I hope you have the resources to extend the hold out. Don’t hesitate to get signed memorandum from your readers.
Dec 7th, 2006
rage
I’ve had this happen to me, exact same scenario, several years ago. Beyond.com wanted my domain name, claims they own the rights to the name, and claims I’m using it in bad faith. Same offer of $1500. I had my lawyer send out all correspondence back to them. Ruled in my favor I got to keep the name, and I lost about $5k in legal fees. They then offered me to buy my domain name for $5000, eventually up to $80,000. I refused as it was my business name and $80k wasn’t worth it. Beyond.com eventually went away, and now they are in dot-com heaven.
Dec 7th, 2006
kevin
whats that old saying you snooze you lose with all the high powered intelligent people working for moto you would think of those idiots would have thought about getting that site way back before they ever realeased that crappy razr so I say screw moto. This guy was just a lil bit smarter then them a registering it early either, pay him big or go away motorola
Dec 7th, 2006
Ron Hughes
I guess all this WorldWideWibble negative publicity will have lost MotoRollover more than the paltry $1500 extortion they’ve “offered”. Even their Briefs suspect they’ve a weak case - otherwise, they’d simply have pinched the Name for nowt.
Dec 7th, 2006
Michael
I’m not a lawyer and I don’t play one on television, but it does seem a bit unfair that Motorola would try and bully their way into a domain that you’ve owned long before it would seem that Motorola was even considering it. That said, I also believe that because you were using the domain before their registration that you retain the right to use the domain - I guess arbitration will decide whether that assumption is correct.
Best of luck to you on this, as I would like to see what “seems right” to prevail. Please be sure to let us all know if you need financial assistance to battle your case. Although frequently not rich, I believe that most of us would be willing to toss a few bucks towards defending the rights of the individual, and the blogging community is obviously quite large.
~geek
Dec 7th, 2006
Mark
Motorola can go to hell. It’s pretty &^%$ that a company like that would try and do something like that. AND it would be even worse if a free market economy like the US would premit this to go through. I live in Egypt, and it’s normal that crap like this happens, and unfortunately you cannot do anything. In a country like the US, people like you should be protected from companies like them. You have all the proof. They snooze, they loose. Best of luck to you!
Dec 7th, 2006
Mark
Just a quick response to Michael’s posting: I’d be willing to donate $100 to your cause. Anyone with me?!
Dec 7th, 2006
M
Sounds like something Bill Gates would do….
Dec 7th, 2006
David Stone
You have obviously shown precendence. I would send them a cease and desist showing that you had already put equity into the term motorazr, which they obviously stole from you. Threaten to counter sue for diluting the intentions of your brand through their commercialization and mass marketing of your term.
I had a similar situation with a community oriented site which used the name of a local college mascot. We got a cease and desist from the state attorney general, baisically we told them to shove off and they had no specific right to the term (there were several retail outlets in the neighborhood that also used the name). To solidify our stand we took the time to trademark our domain and it just so happened the trademark for the mascot wasn’t taken so we got that too! In the end we just had to make a clear distinction on our site that we were not a sanctioned part of the university.
Pick up a book on Trademark law and talk big, but don’t jump to lawyers and an expensive defense. You got there first that is all the proof you need, any dilution of their trademark is their fault for being unoriginal.
Dec 7th, 2006
Larry Rowe
re: comment about gates and microsoft
not sure they are as preditory. i know someone who owned the website live.com. MS wanted it for their product group and paid a substantial sum for the name. not sure how much because confidentiality was required. but, it wouldn’t suprise me if it was 10’s or 100’s of thousands.
Dec 7th, 2006
Jeff
One thing people need to remember, You can’t register a domain and then say, “I’ll sell it to you for this much since you want it so bad.”
According to the U.S. federal law known as the Anti-Cybersquatting Consumer Protection Act, cybersquatting is registering, trafficking in, or using a domain name with bad-faith intent to profit from the goodwill of a trademark belonging to someone else. The cybersquatter then offers to sell the domain to the person or company who owns a trademark contained within the name at an inflated price.
http://en.wikipedia.org/wiki/Anticybersquatting_Consumer_Protection_Act
Dec 8th, 2006
steve
doesnt seem like moto owns the mark razr - there’s another company beating them to the mark:
Dec 9th, 2006
Balidha
Hey Vincent, i think Motorola’s trying a real game on you because if they know they registered way after your domain. It dont matter whether they are using it as trade mark or a web domain, they cant use it while another company is in use of it. Or else, i would think Motoroala’s marketing department should have did a little research on it before they even made a final decision for the trade mark for sure. If anything, i would also think some would even out of curiosity google some thing like that just so to make sure there is no such other company with the same name for their product/web site/school,college, to mention but a few things you can imagine.
On that note, i think Motorola is very suable for using your web name for their product and then come behind you threatening you so you feel like you are in the wrong yet they are. You ought to sue them for all the damages and inconveniences done unto you establishment. I think they are being outright unfair there and they know what they are doing. Also, do not give up your domain for them especially after their sneaky approach on you.
Otherwise, i would rather they should have contacted you, appologized to that they didnt realize the RAZR title was already in use and they’d registered it as a trademark for one of their cool products and they wish to work with you some gradual process where you would actually start publishing info about their product on your site little by little while you phases yours into another closely related title. This way your site visitors wouldnt be inconvenieced as well as Motorola would eventually have the web to their related product and there would be a mutual understanding between the two of you.
By that suggestion, i dont mean you should do that with them for a small compensation. Motorola ofcourse would have to incurr all the costs of the procedure plus a formal purchase of your domain and all the costs and expenses invoved as you can figure out. That is the way to do things in a civilizes world, not grabbing from small people because they are big.
Hope this gives you some ideas to seek further legal advice on this Nguyen
God Bless!
Dec 11th, 2006
Harold Pick
I have had the same problem with that compayn
and may have soem inside info for you.
Thanks
Harold
Mar 3rd, 2007
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