WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Research in Motion Limited v. J
Case No. D2008-0758
1. The Parties
The Complainant is Research in Motion Limited, of Ontario, Canada, represented by Novak Druce & Quigg LLP, United States of America.
The Respondent is J, of Ohio, United States of America.
2. The Domain name and Registrar
The disputed domain name is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2008. On May 15, 2008, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the domain name at issue. On May 15, 2008, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 May 27, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response was June 16, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2008.
The Center appointed Brigitte Joppich as the sole panelist in this matter on June 25, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
4. Factual Background
The Complainant was founded in 1984 and designs, manufactures and markets wireless communication products, including smartphones. The Complainant has offices in North America, Europe and Asia Pacific and has been listed on the Toronto Stock Exchange since 1997 and the NASDAQ Index since 1999. The Complainant’s BLACKBERRY smartphones are available on over 300 networks in about 130 countries around the world. In the latest fiscal year ending March 4, 2008, the Complainant reported revenue in excess of US$ 6.0 billion.
The Complainant has used the mark BLACKBERRY in commerce since 1999 and owns numerous trademark registrations concerning the designation “blackberry” in various countries; inter alia trademark registrations no. 2672464, no. 2700671, no. 2402763, no. 2678454, no. 2672472, no. 2700678, no. 2844339, no. 2844340, no. 2842571, and no. 3102687 in the United States of America (the “BLACKBERRY Marks”).
The domain name was first registered on March 26, 2008 and has not yet been used in connection with an active website.
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is confusingly similar to the famous and distinctive BLACKBERRY Marks as it incorporates the Complainant’s mark in its entirety while the addition of the descriptive word “coaching” and the inclusion of the TLD “.com” do not dispel the confusing similarity.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as it has registered the disputed domain name without the Complainant’s authorization and because it is neither making a legitimate non-commercial or fair use nor is it commonly known by the disputed domain name.
(3) The Complainant finally contends that the domain name was registered and is being used in bad faith.
With regard to bad faith registration, the Complainant contends that it is inconceivable that the Respondent was unaware of the Complainant and its famous and distinctive BLACKBERRY Marks at the time it registered the domain name.
With regard to bad faith use, the Complainant contends that, although the disputed domain name is not actively used in connection with a website, the Respondent’s use of the domain name was in bad faith as there is no evidence of any legitimate commercial or non-commercial business activity by the Respondent related to the disputed domain name, the Respondent has registered the domain name using a privacy service in order to hide its true identity, and because the BLACKBERRY Marks are famous.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s distinctive BLACKBERRY Marks in which the Complainant has rights.
The mere addition of the generic word “coaching” following the trademark does not eliminate the similarity between the Complainant’s marks and the domain name. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (cf. Dr. Grandel GmbH v. Drg Randel Inc.,WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253).
Furthermore, it is also well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trade mark or service mark at issue.
Even though paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name, it is consensus view among panelists that the Complainant has to make a prima facie case to fulfill the requirements of paragraph 4(c) of the Policy. The burden of proving that the Respondent has rights or legitimate interests in the disputed domain name will then lie with the respondent.
The Complainant has asserted that the Respondent has neither been granted a license nor any other permission to use the BLACKBERRY Marks and has therefore fulfilled its obligations under paragraph 4(c) of the Policy. The Respondent has not denied these assertions and therefore failed to prove rights or legitimate interests under paragraph 4(a)(ii) of the Policy.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith.
The Complainant is one of the world’s leading manufacturers of wireless communication products and is well-known especially for its smartphones used by customers throughout numerous countries worldwide. Although the word “blackberry” also denominates a fruit, the combination with the word “coaching” does not make any sense with regard to this meaning and can therefore only be meant to describe coaching services referring to the Complainant’s products. The Panel is therefore satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant’s well known BLACKBERRY Marks and therefore in bad faith under paragraph 4(a)(iii) of the Policy.
As the domain name is not actively used by the Respondent, the Panel has to decide whether or not the Respondent’s (non-)use of the disputed domain name is to be considered as bad faith use under the Policy. It is consensus view that the lack of an active use of a domain name does not as such prevent a finding of bad faith. Under such circumstances, the panel must examine all the circumstances of a case to determine whether a respondent is acting in bad faith. Examples of facts that can indicate bad faith include a complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name (See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131).
In the present case, the Respondent did not reply to the Complaint and did not present any evidence at all in support of an actual or contemplated good faith use, while the Complainant provided evidence establishing that its trademarks are used internationally and are well-known, inter alia in the United States of America, where the Respondent is domiciled. Furthermore, the domain name fully incorporates the Complainant’s highly distinctive mark and the additional generic term “coaching”, which is merely descriptive.
In the view of the Panel, the facts of this case do not allow for any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not infringe the Complainant’s trademark rights. The Panel is therefore convinced that, even though the domain name has not been actively used yet, the Respondent’s non-use of the domain name equals its use in bad faith.
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy as well.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Brigitte Joppich
Sole Panelist
Dated: July 9, 2008
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