WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Research In Motion Limited v. Alon Banay Case No. D2009-0151 1. The Parties
The Complainant is Research In Motion Limited of Waterloo, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is Alon Banay, of Ashdod, Israel. 2. The Domain Name and Registrar
The disputed domain name is registered with Dotster, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2009. On February 5, 2009, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain name. On February 5, 2009, Dotster, 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 February 10, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2009. The Respondent did not submit a formal Response. Nevertheless, the Respondent sent very brief responses to email correspondence sent by the Center to him in which he confirmed his contact details and denied he had put the disputed domain name for sale at Sedo. He also remarked in one of his emails “This company can take all the domain name [sic.] in the world that have the Blackberry word?”
The Center appointed Francine Tan as the sole panelist in this matter on March 11, 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
The Complainant was founded in 1984 and is a leading designer and manufacturer of innovative wireless solutions for the worldwide mobile communications market. Listed on the Toronto Stock Exchange since 1997 and the NASDAQ Index since 1999, the Complainant is a global company with offices in North America, Europe and in the Asia Pacific region. The Complainant has developed and marketed a highly successful line of products, accessories and services in connection with the BLACKBERRY trade mark, including the famous Blackberry smartphone. The Blackberry smartphone is available on over 300 networks in over 100 countries worldwide.
For the fiscal year ending March 2008, the Complainant generated revenues in excess of US$6 billion with a subscriber account base of over 21 million. In terms of the promotion and advertisement of the BLACKBERRY trade mark, since 2001, the Complainant has incurred hundreds of millions of US dollars in promotional expenses. The Complainant has registered and uses the domain name . This site offers, in part, information and support services for the Blackberry products. The Complainant also operates a website at “www.shop”, where it sells Blackberry products and related accessories.
The Complainant's BLACKBERRY trade mark is one of the Complainant's most valuable assets. The Complainant's Blackberry devices have received significant recognition and numerous awards. The BLACKBERRY has also been ranked as Canada's number 1 brand and the 73rd most valuable brand in the world. The Complainant is the owner of over 1,500 trade mark registrations and applications worldwide containing, or comprising, the element Blackberry.
On November 27, 2008 the Respondent registered the disputed domain name. The domain name was made to resolve to a pay-per-click website displaying links to competitors of the Complainant, including Motorola, Nokia, Apple and LG. The website also provided a means by which end users could search for links to competitor sites of the Complainant.
The Complainant issued a cease and desist letter on January 22, 2009 requiring the transfer of the disputed domain name. In response thereto, the Respondent stated that “this domain is for sale so if you want the price for this domain name is $10,000”. The domain name was also listed for sale at “S” for US$12,990. The Respondent's website also included the headline “if you want this top domain name send your offer to abanay@”. The Respondent is the owner of, or has owned, at least 22 domain names that contain third party trade marks to which he does not appear entitled, including , , , and .
The Complainant furnished evidence showing that the Respondent is the owner of, or has owned, at least 22 domain names that contain trade marks such as BOTOX, ERICSSON, FIFA, IPHONE, NOKIA, EBAY, SONY and MICROSOFT. 5. Parties' Contentions A. Complainant
The Complainant contends that:
1. The disputed domain name is confusingly similar to the BLACKBERRY trade marks in which the Complainant has and continues to have rights. The Complainant argues, citing various earlier panel decisions, that:
(a) A respondent may not avoid confusion by appropriating another's entire mark in a domain name. In the instant case, the disputed domain name incorporates the whole of the Complainant's BLACKBERRY trade mark.
(b) It is a well-established principle that the addition of descriptive or non-distinctive terms to a domain name does not mitigate against a finding of confusion. The fact that the disputed domain name includes the non-distinctive element “store” does nothing to diminish confusion. Despite this addition, the disputed domain name remains very similar to the BLACKBERRY trade mark in appearance, sound and concept.
(c) It is a well-established principle that the addition of a generic top-level domain such as “.com” and the elimination of spaces are without legal significance in determining the issue of similarity.
2. The Respondent does not have a legitimate interest or rights in the disputed domain name.
The Complainant argues that:
(a) It is a well-established principle that an unauthorized party cannot claim a legitimate interest in a domain name that contains, or is comprised of, the complainant's mark, as the activities of such a party cannot be said to constitute a bona fide offering of goods and services.
(b) A bona fide use does not exist when the intended use is a deliberate infringement of another's rights. Use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services, and to conclude otherwise would mean that a respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the Policy.
(c) It is a well-established principle that directing domain names containing third party trade marks to pay-per-click sites does not constitute bona fide use of the domain name by a respondent.
(d) There has never been any relationship between the Complainant and the Respondent. The Respondent has not licensed or otherwise authorized the registration or use of the BLACKBERRY trade marks in any manner or as part of a domain name.
(e) There is no evidence to suggest that the Respondent has ever used, or demonstrated preparations to use the disputed domain name or a name corresponding to the same, in connection with a bona fide offering of goods or services. The disputed domain name instead resolves to a pay-per-click website that displays links to competitors of the Complainant. This does not constitute bona fide use of the disputed domain name.
(f) The disputed domain name incorporates the whole of the BLACKBERRY trade mark, and the domain name on its face suggests that it is associated with a website affiliated with, or otherwise connected to, the Complainant. Such a registration cannot be considered bona fide in nature or otherwise performed in good faith. The Respondent registered the disputed domain name with a view to reaping a significant financial windfall by attempting to sell it.
(g) There is 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 . Under the circumstances, the registration cannot be said to be bona fide.
3. The disputed domain name has been registered and used in bad faith
The Complainant contends as follows:
(a) The disputed domain name was acquired by the Respondent primarily for the purpose of selling it for valuable consideration in excess of his registration fees. This is evidenced by the fact that the Respondent listed the domain name for sale at “S” as well as for auction at “”. Further, the Respondent's website invited offers to purchase the domain name. Finally, when contacted by the Complainant, the Respondent demanded $10,000.
(b) The Respondent has engaged in a pattern of registering domain names that contain trade marks to which he is not entitled, and has prevented the Complainant from registering the disputed domain name.
(c) The Respondent registered the disputed domain name for the purpose of disrupting the Complainant's business. It is a well-established principle that the pointing of a domain name to a pay-per-click website that displays links to websites of businesses that offer goods and services that compete with, or rival, those good and services offered by a complainant constitutes evidence of bad faith as per paragraph 4(b)(iii). A respondent need not be a direct competitor of a complainant; it is sufficient if he provides a means for Internet users to access links to businesses that compete with, or rival, the complainant. Further, the use of the disputed domain name is disruptive to the Complainant as potential consumers are likely to be confused into believing that the Respondent's website is somehow affiliated with, or sponsored by, the Complainant. The misdirection of potential consumers to the Respondent's website constitutes a disruption to the Complainant
and its business. The Respondent's registration of the disputed domain name therefore falls squarely within paragraph 4(b)(iii) of the Policy.
(d) Paragraph 4(b)(iv) of the Policy provides that bad faith registration will be found where a respondent is using a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with a complainant's mark as to source, sponsorship, affiliation, or endorsement. Numerous panels have held that directing a domain name containing a third party trade mark to a pay-per-click website constitutes bad faith.
(e) The surrounding circumstances also further support a finding of bad faith. Given the fame of the BLACKBERRY trade mark, the Respondent's wholesale incorporation of the trade mark in the disputed domain name and his express reference to the Blackberry device in his “” listing, the only plausible conclusion is that the Respondent had actual knowledge of the BLACKBERRY trade marks at the time of registration. At the very least, he had constructive knowledge of the BLACKBERRY trade marks given that they are also registered in Israel where the Respondent is located.
(f) There is also evidence of opportunistic bad faith since the disputed domain name is so obviously connected to the Complainant that its use or registration by anyone other than the Complainant strongly suggests bad faith. B. Respondent
The Respondent did not file a formal Response to the Complaint in accordance with the Policy and Rules. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following:
(1) that the domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(2) that the Respondent has no rights or legitimate interests in the domain name; and
(3) that the domain name has been registered and used in bad faith. A. Identical or Confusingly Similar
There is no doubt in this case that the Complainant has both registered and unregistered rights in the trade mark BLACKBERRY.
The addition of the suffix “store” following the trade mark BLACKBERRY does not at all remove the element of confusing similarity and in fact, the Panel agrees with the Complainant's submission on this point that the addition of the word “store” enhances the confusion as it suggests that the disputed domain name points to a website that is operated, or otherwise authorized, by the Complainant. It is indeed a well-established principle that a domain name that wholly incorporates a trade mark, particularly one that is as famous as the BLACKBERRY mark, would likely be found to be confusingly similar for the purposes of the Policy, notwithstanding the domain name concerned may contain other descriptive or generic words. Equally well established is the fact that the TLD is irrelevant to the consideration of whether there is confusing similarity.
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
Under the Policy, rights to or legitimate interests in a domain name may be demonstrated by the respondent showing that:
(i) before any notice of this dispute, the respondent used, or demonstrably prepared 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 has been commonly known by the domain name, even if the respondent has not acquired any 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 or to misleadingly divert customers or to tarnish the trade mark at issue.
On the undisputed evidence presented by the Complainant, it is clear that none of the above circumstances apply to the Respondent in this case. There is no evidence that the Respondent has been commonly known by the domain name. Further, the evidence does not support a finding that the Respondent has used the disputed domain name in connection with a bona fide offering of goods or services. Generally, the unauthorized use of a third party's trade mark in a domain name cannot be said to constitute a bona fide offering of goods and services. (See Research In Motion Limited v. Blackberry World, WIPO Case No. D2006-1099; Dr. Ing. h.c. F. Porsche AG v. ANC Online Avrasya Bilisim Tekn San ve Dis Tic A S, WIPO Case No. D2006-0912). The Respondent is quite clearly trading on the reputation of the BLACKBERRY mark and this is evidenced by the offering for sale and auction of “this top domain name” on Sedo and “”, respectively. The use of the disputed domain name incorporating the well known BLACKBERRY mark in this case such that Internet users are redirected to a website with sponsored links to the sites of competitors of the Complainant does not at all constitute a legitimate non-commercial or fair use of the domain name, but is in fact clearly done for profit and to misleadingly divert customers.
The Complainant has made out a prima facie case showing that the Respondent has no rights to or legitimate interests in the disputed domain name. The Respondent has not denied the assertions made by the Complainant and failed to prove the contrary to be true.
Consequently, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
It is clear from the facts of this case that the Respondent was well aware of the reputation of the Complainant and of the latter's BLACKBERRY trade mark. The wholesale incorporation of the trade mark in the disputed domain name and use of the same in respect of directing Internet users and potential customers of the Complainant to the Respondent's website with sponsored links to the sites of the Complainant's competitors and other businesses in the same field as that of the Complainant constitute bad faith registration and use. This situation falls squarely within paragraph 4(b)(iv) of the Policy - it is an intentional attempt by the Respondent “to attract, for commercial gain, internet users to [his] 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 [his] website of location”. The offering for sale and auction of the disputed domain name in this case also brings this case within the circumstance set out in paragraph 4(b)(i) of the Policy – the Respondent has clearly registered the domain name “primarily for the purpose of selling… or transferring the domain name registration to the Complainant who is the owner of the trade mark.., for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name”. Another factor which is further proof of the Respondent's bad faith in the use and registration of the disputed domain name is the apparent pattern of behaviour on the Respondent's part in registering domain names which incorporate third party well-known brand names and trade marks.
In the circumstances, the Panel is unable to make a finding other than that the Respondent has registered and used the disputed domain name in bad faith.
The requirement of paragraph 4(a)(iii) of the Policy is therefore satisfied. 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.
Francine Tan
Sole Panelist
Dated: March 20, 2009
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