WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Research in Motion Limited v. Louis Espinoza
Case No. D2008-0759
1. The Parties
The Complainant is Research in Motion Limited, Waterloo, Canada, represented by Novak Druce & Quigg LLP, United States of America.
The Respondent is Louis Espinoza, San Antonio, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with GoD, 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 GoD, Inc. a request for registrar verification in connection with the domain name at issue. On May 16, 2008, GoD, Inc., transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 28, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 2, 2008. The Center verified that the Complaint together with the amendment to 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2008.
The Center appointed Adam Samuel as the sole panelist in this matter on July 8, 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 the Rules, paragraph 7.
4. Factual Background
The Complainant owns registered trademarks in the United States of America for the name BLACKBERRY notably 2402763, 2762464, 2672472, 2678454, 2700671, 2700678, 2844339, 2844340, 2842571, 3098588 and 3102687 dating from between 2000 and 2006.
The domain name was first created on October 10, 2007.
5. Parties’ Contentions
A. Complainant
The Complainant owns the BLACKBERRY trademark. The disputed domain name incorporates the Complainant’s famous and distinctive BLACKBERRY mark in its entirety and consequently is confusingly similar to the Complainant’s mark. The addition of the generic or dictionary words “the” or “coach” and the inclusion of the “.com” generic top-level domain do not dispel the confusing similarity of the disputed domain name with the Complainant’s mark. Given that the Complainant offers a full line of products and services under the “blackberry” mark including educational services relating to the use of the “blackberry” products, the likelihood of confusion is compounded.
The Respondent without authorization deliberately appropriated the Complainant’s trademark. There are no indications that the Respondent is using the disputed domain name for any legitimate purpose or that the Respondent has undertaken any demonstrable preparations to make any good faith use of the disputed domain name. The Respondent has engaged in speculative domain name registration with the bad faith intent of exploiting and profiting from the Complainant’s mark. The Complainant is aware of no evidence that the Respondent has been commonly known by the disputed domain name. The Respondent was well aware of the Complainant’s famous mark at the time of the registration of the disputed domain name and the Respondent registered the disputed domain name with the bad faith intent to profit from and exploit the Complainant’s mark. The Respondent has sought to trade on the goodwill and reputation of the Complainant by appropriating the Complainant’s mark as his domain name. Even assuming that the Respondent were to allege that he is using the disputed domain name with some type of educational services relating to the Complainant’s “Blackberry” product, the Complainant has previously registered its BLACKBERRY mark for use with such educational services and no attempt has been made by the Respondent to disclose the Respondent’s relationship to the Complainant or to disclaim any affiliation, sponsorship or endorsement of the website by the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; 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 consists of the Complainant’s trademark in its entirety inserted between the definite article and the generic word “coach”. Normally, the addition of the generic words to a trademark to make up a domain name has no impact on whether the domain name is confusingly similar to the trademark concerned. The problem here is that the Complainant’s mark is a generic word in common use for a fruit. Here the additional words are “the” and “coach”. This is an expression or term commonly used in the world of computers to provide assistance notably in relation to “help” buttons and the Complainant’s mark relates to a form of computer technology. For these reasons, the Panel concludes on balance that the domain name is confusingly similar to mark in which the Complainant has rights.
B. Rights or Legitimate Interests
There is no evidence that the Complainant has authorized the Respondent to use his trademark. The Respondent has not asserted any rights or legitimate interests in that name.
For these reasons, on the basis of the available evidence, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name currently contains no content. Annexed to the Complaint is an image of a website to which it used to resolve. It is not properly formed. It contains references to podcasts and other items that appear to relate to versions of computer software. There is no reference to the alternative meaning of “blackberry” as a fruit.
From this, one can deduce that the Respondent had in mind the information technology aspect of the name “blackberry” when registering and in using the website to which the disputed domain name resolves. This suggests, as the Complaint does, that the Respondent registered the domain name knowing of the Complainant’s rights in connection with its trademark and has continued to hold it as such.
It is impossible to know the motives of the Respondent in all this in view of his lack of response to this Complaint. It would appear that he has registered the domain name for one or more of the following reasons: to disrupt the Complainant’s website, ultimately to earn revenue through the website to which the domain name would be diverting users looking for the Complainant’s website or to persuade the Complainant to buy the domain name for more than his out-of-pocket expenses. For all these reasons, the Panel concludes that the domain name in question was most likely registered and used in bad faith.
There is one further complicating factor to this case. The Respondent indicated to the Center on July 8, 2008, that he no longer held the disputed domain name. The Center and the Panel verified this and found that the Respondent did indeed hold the registration. This supports the conclusion that the Respondent is not acting in good faith.
For all these reasons, the Panel concludes that the disputed domain name was registered and is being used in bad faith.
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.
Adam Samuel
Sole Panelist
Dated: July 23, 2008
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