WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Research in Motion Limited v. Peter Ballantine Case No. D2008-1975 1. The Parties
The Complainant is Research in Motion Limited of Ontario, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is Peter Ballantine of Ontario, Canada. 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 December 23, 2008. On December 24, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On the same date, GoD, 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” or “UDRP”), 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 January 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 28, 2009.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on February 6, 2009. 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
Research in Motion Limited is a well-known, worldwide leader in the field of mobile communications.
Research in Motion Limited owns a number of trademarks comprising the word BLACKBERRY, including:
Canadian trademarks:
BLACKBERY & BBBB (design)
TMA659954
registered March 1, 2006
BLACKBERY CONNECTION
TMA624894
registered November 8, 2004
BLACKBERRY
TMA638068
registered April 21, 2005
BLACKBERY & BBBB (design)
TMA659946
registered March 1, 2006
BLACKBERY
TMA554207
registered November 21, 2001
BLACKBERRY & COLOUR (design)
TMA554206
registered November 21, 2001
BLACKERRY AND DESIGN
TMA555231
registered December 11, 2001
United States of America (“U.S”) Federal trademarks:
BLACKBERRY
2672464
registered January 7, 2003
BLACKBERRY
2700671
registered March 25, 2003
BLACKBERRY (design)
2678454
registered January 21, 2003
BLACKBERRY AND DESIGN
2672472
registered January 7, 2003
BLACKBERRY AND DESIGN
2700678
registered March 25, 2003
BLACKBERRY (design)
2402763
registered November 7, 2000
BLACKBERRY AND DESIGN
2844339
registered May 25, 2004
BLACKBERRY
2844340
registered May 25, 2004
BLACKBERRY ENTERPRISE EDITION
2842571
registered May 18, 2004
BLACKBERRY CONNECTION
3098588
registered May 30, 2006
BLACKBERRY AND DESIGN
3102687
registered June 13, 2006
The Respondent is Peter Ballantine of Ontario, Canada.
The Respondent registered the disputed domain name on October 22, 2008. 5. Parties' Contentions A. Complainant
The Complainant contends that:
- the disputed domain name is confusingly similar with the BLACKBERRY trademarks in which the Complainant has rights, and continues to have rights;
- the Respondent registered the domain name without the permission of the Complainant and does not have a legitimate interest or right in the disputed domain name;
- the disputed domain name was registered to point to a pay-per-click website displaying links to competitors of the Complainant;
- the disputed domain name was registered one day after the Complainant announced that it would be launching an online application storefront;
- the Respondent registered the disputed domain name in an attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant which demonstrates that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name;
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is the holder of a number of trademarks comprising the word “Blackberry”, which is obviously identical with the first and relevant part of the disputed domain name . In comparison with Complainant's trademark, the disputed domain name bears the additional term “applicationstorefront”.
It is a well established principle that the addition of descriptive or non-distinctive terms to a complainant's trademark in a domain name does not dispel confusion.
In Research in Motion Limited v. WG/Shahbaz Khan,WIPO Case No. D2008-0165, the panel, in ordering the domain name transferred to the complainant, held that the addition of “accessories” did nothing to diminish confusion.
Similarly, in Research in Motion Limited v. Nicholas Stewart,WIPO Case No. D2008-0262 and in Research in Motion Limited v. Blackberry World,WIPO Case No. D2006-1099, the Panels held that the domain names and were confusingly similar to the BLACKBERRY trademark.
The term “application” is a reference, inter alia, to computer programs that perform specific tasks, and that could be used in connection with BLACKBERRY devices. Further, the element “storefront” could be seen to denote an online location where applications for the BLACKBERRY device may be purchased.
Therefore, the term “applicationstorefront” further supports the likelihood that potential consumers may be misled or confused into believing that the disputed domain name points to a website operated by, or otherwise connected to, the Complainant.
Accordingly, despite the addition of the term “applicationstorefront” the Panel considers that the disputed domain name is confusingly similar in appearance, sound and in the idea suggested, with the BLACKBERRY trademark in which the Complainant has rights and continues to have rights. B. Rights or Legitimate Interests
It appears to the Panel that the Respondent has no connection or affiliation with the Complainant. The Respondent is not licensed, or otherwise authorized, directly or indirectly, to register or use, the BLACKBERRY trademark as part of a domain name or in any other manner.
The Respondent has offered no evidence that the use of the disputed domain name meets the elements for any of the nonexclusive examples provided in the Policy paragraph 4(c) to demonstrate that the Respondent has rights or a legitimate interest in the disputed domain name.
There is no evidence that the Respondent has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
On the contrary the Panel considers that a bona fide use does not exist when the intended use is a deliberate infringement of another's rights. It has been held that the registration of a domain name shortly following a public announcement by a complainant can undermine a claim of legitimacy and that such registration may be viewed as an opportunistic attempt to capitalize on the potential value of a domain name (SMS Demag AG v. Seung Gon, Kim,WIPO Case No. D2000-1434).
There is also no evidence to suggest that the Respondent has been commonly known by , or that the Respondent is making, or intends to make, a legitimate non-commercial or fair use of the disputed domain name.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the domain name pursuant to paragraph 4(a)(ii) and paragraph 4(c) of the Policy. C. Registered and Used in Bad Faith
The Panel considers that the disputed domain name, which contains the whole of the BLACKBERRY trademark, is likely to confuse potential consumers in believing that the Respondent is somehow affiliated with, or endorsed by, the Complainant.
The Panel has noticed that the disputed domain name points to a pay-per-click website, so that a commercial benefit is derived from this use, and that this website displays sponsored links to businesses that offer goods and services that compete with, or rival, those goods and services offered by the Complainant.
Accordingly, the Panel considers that:
- by registering the disputed domain name, the Respondent has disrupted the business of the Complainant, and;
- by using the disputed domain name, the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of its website.
Therefore, based upon the Complainant having shown the necessary elements of the Policy paragraph 4(b)(iii) and 4(b)(iv), the Panel finds that the domain name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii). 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.
Christiane Féral-Schuhl
Sole Panelist
Dated: February 20, 2009
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