WIPO Domain Name Decision D2008-0165 for blackberryaccessories.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Research in Motion Limited v. WG/Shahbaz Khan

Case No. D2008-0165

 

1. The Parties

The Complainant is Research in Motion Limited of Ontario, Canada, represented by Novak Druce & Quigg LLP of Texas, United States of America (“USA”).

The Respondent is WG/Shahbaz Khan of Texas, USA.

 

2. The Domain Name and Registrar

The disputed domain name, (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on January 31, 2008, and in hard copy on February 5, 2008. 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, implicitly confirming that it was the registrar of the Domain Name; confirming that the Domain Name had been placed under a locked status to prevent transfers or changes during the proceedings and that its registration agreement is in English and requires the registrant to submit to the jurisdiction of the courts of King County, Washington; and providing the contact details of the registrant on its database.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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 Respondent of the Complaint, and the proceedings commenced on February 12, 2008. The notification appears to have been delivered successfully by email and courier to the contact addresses on the Registrar’s database. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 3, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2008.

The Center appointed Jonathan Turner as the sole panelist in this matter on March 18, 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 Complaint complied with applicable formal requirements, was duly notified to the Respondent 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 by the Respondent on August 29, 2004 and resolves to a website which offers smartphones and accessories for sale under the BLACKBERRY mark. Some of these are supplied by the Complainant and some are not. The Respondent is not an authorized distributor of or otherwise affiliated to the Complainant. The Complainant sent the Respondent a cease and desist letter on August 21, 2007 but received no reply.

Prior to that letter, the Respondent’s home page carried a banner containing “Blackberry Accessories” in a logo followed by the words “No.1 Source for Blackberry Accessories”. Following the letter, the banner was changed to read: “Unofficial site for Consumer information on Blackberry Phones and Accessories”, followed by a link entitled “Terms of Use/Trademarks, click here--->” to a web page containing further disclaimers. Footings were also added, stating: “Blackberry (C) and RIM (C) are trademarks of Research In Motion. RIM does not endorse B. To Visit RIM’s official website, click here”. A similar heading and footings were applied to the other main pages of the site.

 

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 has no rights or legitimate interests in relation to the Domain Name or any corresponding name. It points out that the Respondent is not affiliated with it and is not authorized to use the BLACKBERRY mark and that the Respondent 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 Respondent’s website 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 the Respondent 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 the Respondent’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 further submits that bad faith is not negated by the Respondent’s addition of ineffective disclaimers following the Complainant’s cease and desist letter.

B. Respondent

As noted above, the Respondent 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. Each of these requirements will be considered in turn below.

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 of the above conditions is not met. It is also clear that the third condition was not met before the Respondent received notice of the dispute in the form of the Complainant’s cease and desist letter. 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 for commercial gain by creating a likelihood of confusion with the Complainant’s BLACKBERRY mark as to the source, sponsorship, affiliation or endorsement of its website. This constitutes evidence of registration and use in bad faith in accordance with paragraph 4(b)(iv) of the Policy.

The Respondent’s addition of disclaimers following the Complainant’s cease and desist letter does not negate bad faith. The disclaimers do not prevent Internet users being diverted to this website by confusion with the Complainant’s mark and do not justify the use of a website to which Internet users are so diverted to sell goods not supplied by the Complainant. Furthermore, the Policy cannot be interpreted as requiring bad faith use to continue at the date of the Complaint where the Respondent has taken evasive action following a cease and desist letter. Such an interpretation would create a gaping hole in the Policy, as noted in Total S.A. v. Frank Marinaro,WIPO Case No. D2007-1728.

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 1, 2008

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