WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Research in Motion Limited v. Domains by Proxy, Inc. and Kafiint
Case No. D2008-0164
1. The Parties
The Complainant is Research in Motion Limited of Waterloo, Ontario, Canada, represented by Novak Druce & Quigg LLP of Houston, Texas, United States of America (“USA”).
The Respondents are Domains by Proxy, Inc. of Scottsdale, Arizona, USA, and Kafiint of Colleyville, Texas, USA.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2008, naming Domains by Proxy, Inc. as the respondent. The Center transmitted its request for registrar verification to the Registrar by email on February 1, 2008. The Registrar replied by email the same day confirming that it was the registrar of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registration, that the Domain Name would remain locked during this proceeding subject to expiry of the registration, and that the registration agreement was in English and contained a submission by the registrant to the jurisdiction at the location of its principal office. However, the Registrar stated that the respondent identified in the Complaint was not the registrant of the Domain Name and provided the contact details in respect of the registration on its Whois database, which identified the registrant as Kafiint. The Center drew this to the attention of the Complainant by email on February 11, 2008, and invited the Complainant to submit an appropriate amendment to the Complaint. The Complainant submitted an amended Complaint adding Kafiint as respondent by email on February 15, 2008.
The Center verified that the Amended Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on February 21, 2008. The notification by email appears to have been transmitted successfully to the contact address provided in respect of the registration in the Registrar’s database. In accordance with paragraph 5(a) of the Rules, the due date for the Response was March 12, 2008. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on March 20, 2008.
The Center appointed Jonathan Turner as the sole panelist in this matter on March 25, 2008. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. Having reviewed the file, the Panel is satisfied that the Amended Complaint complied with applicable formal requirements, was duly notified to the Respondents and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant designs, manufactures and markets wireless communication products, including smartphones and accessories which it has supplied under the mark BLACKBERRY since 1999. The Complainant’s BLACKBERRY smartphones are available on over 270 wireless networks in about 110 countries around the world. In year ended March 3, 2007, the Complainant reported revenue in excess of US$3 billion and had about 8 million subscribers. The Complainant has registered BLACKBERRY as a trademark in the USA and many other countries.
The Domain Name was registered on April 22, 2003. In August 2007 the registrant was identified on the Registrar’s database as Domains by Proxy. The Complainant’s representatives sent a cease and desist letter to Domain by Proxy dated August 21, 2007. Domains by Proxy replied by email on August 27, 2007, stating that it provided a proxy registration service enabling registrants to maintain anonymity, that it had notified its customer of the Complaint, and that it was allowing the customer three business days to respond. Domains by Proxy sent a further email to the Complainant’s representatives on August 30, 2007, stating that it had not received a response from its customer within the allotted time.
The Domain Name resolves to a website which offers for sale accessories for the Complainant’s smartphones under the BLACKBERRY mark. Some of these accessories are supplied by the Complainant and some are not. The website also provides links to other websites which offer products competing with those supplied by the Complainant. The Respondent, Kafiint, is not an authorized distributor of or otherwise affiliated to the Complainant. Kafiint has registered a number of other domain names which incorporate the marks of suppliers of mobile telephones, such as , , , and .
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its famous and distinctive BLACKBERRY mark, pointing out that the addition of the generic word “accessories” and the top level domain suffix do not dispel confusion, particularly as the Complainant sells accessories under this mark.
The Complainant submits that the Respondent, Kafiint, has no rights or legitimate interests in relation to the Domain Name or any corresponding name. The Complainant points out that Kafiint is not affiliated with it and is not authorized to use the BLACKBERRY mark and that it is using the mark on the website for both authentic products supplied by the Complainant and other suppliers’ products, without distinguishing between them.
The Complainant cites various Panel decisions under the Policy for the proposition that a reseller has no right or legitimate interest in a domain name containing the supplier’s mark registered without its consent. The Complainant further claims that under US law an unauthorized reseller must not use the supplier’s mark in a way which is likely to confuse customers as to an affiliation between the supplier and the reseller. The Complainant further points out that the website at the Domain Name does not comply with the criteria set out in the Panel’s decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 if these be applicable.
The Complainant adds that Kafiint is not making non-commercial or fair use of the Domain Name and that it has not been commonly known by the Domain Name.
The Complainant further alleges that the Domain Name was registered and is being used in bad faith, in particular to attract, for commercial gain, Internet users to Kafiint’s website by creating a likelihood of confusion with the Complainant’s BLACKBERRY mark as to the source, sponsorship, affiliation or endorsement of that website. The Complainant also submits that Kafiint’s concealment of its identity, refusal to respond to the Complainant’s cease and desist letter, and pattern of registering domain names incorporating marks of others constitute further evidence of bad faith.
B. Respondents
As noted above, the Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.
In applying these criteria, it is appropriate to consider Kafiint as the real registrant and Respondent, since the Domain Name was registered in the name of Domains by Proxy as its nominee to maintain its anonymity: see Xtraplus Corporation v. Flawless Computers,WIPO Case No. D2007-0070, and Media West-GMP, Inc. and Gannett Satellite Information Network, Inc. v. Registrant [624819] Services LLC,WIPO Case No. D2007-0169. References to the Respondent in this discussion refer accordingly to Kafiint.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s default as it considers appropriate. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
A. Identical or Confusingly Similar to Mark in which Complainant has Rights
It is clear that the Complainant has registered and unregistered rights in the mark BLACKBERRY.
The Panel is satisfied that the Domain Name is confusingly similar to this mark. The addition of the generic term “accessories” and the top level domain suffix do not dispel confusion. Many Internet users would suppose that the Domain Name refers to a website of the Complainant selling smartphone accessories.
The first requirement of the Policy is satisfied.
B. Rights or Legitimate Interests of Respondent
In accordance with paragraph 4(c) of the Policy, a registrant may demonstrate that it has rights or legitimate interests in a domain name where (i) it used or made demonstrable preparations to use the domain name or a corresponding name in connection with a bona fide offering of goods or services before notice of the dispute; (ii) it has been commonly known by the domain name; or (iii) it is making a legitimate non-commercial or fair use of the domain name without intent to misleadingly divert consumers or tarnish the complainant’s mark. These examples are not exhaustive, but can be regarded as indicating the kinds of circumstances which may be regarded as giving rise to a right or legitimate interest of a registrant in a disputed domain name.
It has been generally accepted that where a registrant of a domain name uses it for reselling goods or services supplied by the complainant, it can be making a bona fide offering, and thus have a legitimate interest in a domain name, if the following conditions are met:
(a) there is an actual offering of the goods or services by the registrant;
(b) the website at the domain name is used to sell only the trademarked goods or services;
(c) the website accurately discloses the registrant’s relationship with the trademark owner; and
(d) the registrant has not sought to corner the market in domain names reflecting the complainant’s mark.
See paragraph 2.3 of the Center’s “Overview of WIPO Panel Views on Selected UDRP Questions” and cases cited there, including Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
In this case, it is clear from the undisputed evidence that the second and third of the above conditions are not met. In these circumstances, the Panel finds that the Respondent was not making a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
The Panel does not consider that the Respondent has been commonly known by the Domain Name. Even if it has become so known as a result of its use of the Domain Name, this does not give rise to a right or legitimate interest where the use has not complied with the conditions stated above. It is also clear that the Respondent is not making non-commercial use of the Domain Name, and the use cannot be regarded as fair for the reasons discussed.
In all the circumstances the Panel concludes that the Respondent does not have any right or legitimate interest in respect of the Domain Name. The second requirement of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel considers that the Respondent is using the Domain Name in order to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s BLACKBERRY mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent thereby obtains unfair commercial gain in the form of profits on the sale of products not supplied by the Complainant and click-through commissions from sponsored links to websites selling products competing with those supplied by the Complainant. This constitutes evidence of registration and use in bad faith in accordance with paragraph 4(b)(iv) of the Policy. This evidence has not been rebutted by the Respondent.
The Panel concludes that the Domain Name was registered and is being used in bad faith. The third requirement of the Policy is satisfied.
7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name, , be transferred to the Complainant.
Jonathan Turner
Sole Panelist
Dated: April 8, 2008
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