WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Research In Motion Limited v. Fred Potter / Berrystore / Mill River Labs Case No. D2009-0370 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 Fred Potter / Berrystore / Mill River Labs of California, United States. It will be appropriate to refer to the Respondent in the singular. 2. The Domain Names and Registrars
The disputed domain names , and are registered with GoD, Inc. The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2009. On March 20, 2009, the Center transmitted by email to GoD, Inc. and eNom a request for registrar verification in connection with the disputed domain names. On March 20, GoD, Inc. and eNom transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 26, 2009 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 31, 2009. The Center verified that the Complaint together with the amended 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 April 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2009. The Respondent filed a submission with the Center on April 22, 2009, but the Center was unable to confirm that said submission was intended to comprise the entire Response. Accordingly, on May 6, 2009, the Center sent a communication indicating that the Response period had ended and that the submission of April 22, 2009 would be transmitted to the administrative Panel. No additional communications have been received.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on May 22, 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 facts about the Complainant are generally extracted from the Complaint. Research In Motion Limited (RIM) makes and sells sophisticated wireless mobile communications systems with computer facilities, often called smartphones or personal digital assistants (PDA), notably one known as the BlackBerry. The BlackBerry range of products is well-known internationally and the Complainant owns more than 1500 pending trademark applications and subsisting registrations in over 120 countries. Company revenue in the year ending March 2008 was over USD 6.0 billion.
The Complainant holds trademarks in the relevant classes including the following, with or without device or style:
BLACKBERRY, United States Patent and Trademark Office (“USPTO”), Registration No. 3102687, June 13, 2006
BLACKBERRY, USPTO, Registration No. 2844339, May 25, 2004
BLACKBERRY, USPTO, Registration No. 2844340, May 25, 2004
BLACKBERRY, USPTO, Registration No. 2678454, January 21, 2003
BLACKBERRY, USPTO, Registration No. 2762464, January 7, 2003
BLACKBERRY, USPTO, Registration No. 2672472, January 7, 2003
BLACKBERRY ENTERPRISE EDITION, USPTO, Registration No. 2842571, May 18, 2004
BLACKBERRY CONNCTION, USPTO, Registration No. 3098588, May 30, 2006
BLACKBERRY, USPTO, Registration No. 2700671, March 25, 2003
BLACKBERRY, USPTO, Registration No. 2700678, March 25, 2003
BLACKBERRY, USPTO, Registration No. 2402763, November 7, 2000
BERRY, Trade Marks Registry, Hong Kong Special Administrative Region of China, Registration No. 300808984, February 2, 2007
The Complainant has also provided an untranslated document which refers to BERRY, registered in Taiwan, with Registration No. 01288822.
The facts about the Respondent are extracted from the Response. The Respondent operates an Internet presence that supplies applications for the BlackBerry device. 5. Parties' Contentions A. Complainant
The Complainant's contentions are supported with documentary evidence and include the following:
Evidence of the Complainant's ownership of the trademarks listed in section 4 above is submitted in the form of copies of the registration documents.
The Complainant contends that its trademark is famous internationally. The Complainant was recognized on May 12, 2008 as ranking second in the prestigious Barron's 500, an annual ranking of the 500 largest (by sales) publicly-traded companies in the U.S.A. and Canada. The brand has received high rankings in other reviews.
The Complainant says that it has its own Internet presence, including the websites “”, “”, “”, “”, “black” and “”, for the sale of its own authentic products, and has an authorized distributor network, of which the Respondent is not a member.
The Complainant contends that the disputed domain names are identical or confusingly similar to a trademark or service mark in which it has rights. The disputed domain names all incorporate the BERRY portion of the Complainant's registered trademark BLACKBERRY. The Complainant has trademarks for the word BERRY alone, which is a nickname for its products, and has advertised its products under the name “Berry”. It is submitted that previous UDRP panels have held that an abbreviation of a registered mark incorporated into a domain name may constitute confusing similarity. The Complainant also cites McCarthy on Trademarks and Unfair Competition (4th ed.) at 7.18 as authority for the proposition that a publicly-recognised nickname is entitled to independent legal protection as a mark, giving the examples “COKE for Coca-Cola, BUD for BUDWEISER beer, BEETLE for a style of Volkswagen automobile, HOG for large Harley-Davidson motorcycles, MET for METROPOLITAN OPERA, PAN-AM, for Pan American Airways, and PHILLIES for PHILADELPHIA cigars.”
The Complainant says, with citations submitted as being in support, that given the Respondent's use of the disputed domain name for a website that offers downloads of software applications for the BLACKBERRY in direct competition with the Complainant, the use of generic or descriptive terms, if anything, heightens the confusing similarity.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not using them in connection with a bona fide offering of goods or services. The Respondent is not affiliated with the Complainant, has not made active use of the disputed domain names and , and is using for a website that contains pay-per-click advertising links.
The foregoing is submitted as a prima facie showing under paragraph 4(a)(ii) of the Policy, shifting the burden to the Respondent to demonstrate any claim of rights or legitimate interests in the disputed domain names.
The Complainant submits that the Respondents cannot satisfy this burden. It is undisputed that the Complainant and the Respondents both offer software applications for use in connection with BLACKBERRY smartphones. The disputed domain name resolves to a commercial website offering software applications for the Blackberry device. According to the website, visitors may download software applications for their Blackberry by visiting on their devices. This shows a clear intent to exploit and profit from the Complainant's trademarks and does not constitute a bona fide offering of goods or services in the terms of the Policy.
It is submitted that enquiries have shown the Respondent to be associated with the domain name , which resolves to a website offering monetization services that allow mobile application developers to make money from their products. Developers are invited to contact the Respondent if they wish to sell their applications on the Respondent's website. Thus the Respondent cannot succeed in claiming a bona fide use of the disputed domain names in the terms of paragraph 4(c)(i) of the Policy.
It is contended that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names in the terms of paragraph 4(c)(iii) of the Policy. The attraction of Internet users to the websites is not a fair but an infringing use. The Respondent's website prominently features the “berrystore” banner. It displays a partial image of a BlackBerry smartphone with the well-known BLACKBERRY Design mark.
It is contended that the Respondent has not been commonly known by the disputed domain names in the terms of paragraph 4(c)(ii) of the Policy. The Respondent cannot succeed by becoming well-known through the famous trademark of another, in this case the Complainant.
It is further contended by the Complainant that the disputed domain name was registered and is being used in bad faith. The Complainant submits that the dominant objective of the Policy is to curb abusive registration and use of domain names.
The Respondent must have been aware of the Complainant and its rights in the BLACKBERRY trademark prior to the registration of the disputed domain names. Previous panels have held that the registration and use of a domain name obviously connected with a Complainant and its products by a registrant with no plausible connection to the Complainant is suggestive of opportunistic bad faith.
The Respondent uses the disputed domain name to divert Internet traffic to the Respondent's corresponding website for commercial gain, by relying on confusion with the Complainant's trademark, which is indicative of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The Complainant sent a cease and desist letter to the Respondent, whose reply, inter alia, included an offer to sell the disputed domain name to the Complainant for USD 60,000.00. The Complainant says this is indicative of bad faith, particularly in light of the Respondent's claim to be making a noncommercial use of this disputed domain name. Furthermore, the Respondent is passively holding the disputed domain names and .
Respondent's pattern of conduct is strongly evocative of cyberflight because it changed its contact details in the publicly-available WhoIs records on becoming aware of the dispute with the Complainant.
The Complainant has provided the Panel with numerous citations of previous UDRP decisions that it would like to be considered as precedent.
The Complainant requests the transfer to it of the disputed domain names , , and . B. Respondent
The Respondent denies the Complaint and makes contentions that include the following:
There are many websites with domain names that include “berry” or “black” that are generally understood to be distinct from BLACKBERRY. The Respondent states on the BerryStore website that BerryStore is not affiliated with BlackBerry or RIM.
The Respondent says that BerryStore was a product and brand owned by BerryStore, Inc., Fred Potter being the President and owner. Mill River Labs, Inc. purchased the assets of BerryStore Inc. on March 19, 2009, including the name BerryStore and the disputed domain names.
The Respondent contends that the disputed domain names are not confusingly similar to BLACKBERRY. “Berry” is a generic term. For example, “” directs users to the website of William A. Berry & Son, Inc., and “” directs users to the Shari's Berries website. The word “black” is generic. For example, “” is a general news aggregation site. It is contended that “”, “” and “” are about the BlackBerry but are not associated with the Complainant. The “BerryStore” logo and the “BlackBerry” logo are different.
The Respondent further contends by implication that it does have rights or legitimate interests in the disputed domain names. Prior to the Complaint, BerryStore Inc. had operated the BerryStore service since September 2008. The Respondent as Mill River Labs purchased the disputed domain names on March 19, 2009.
The BerryStore service enables its users to browse, download and review software applications for BlackBerry devices. The BerryStore service only listed free applications and generated no revenue prior to the acquisition by Mill River Labs Inc. The service has been favourably reviewed and is popular. It can now offer applications for sale but Mill River Labs has not generated significant revenues thereby.
The Respondent further contends by implication that the disputed domain names have not been registered or used in bad faith. The Respondent's intention is to integrate its Mogees mobile billing platform (“www.”) with the BerryStore product. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant') asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. A. Identical or Confusingly Similar
The Complainant must prove that is has rights in a trademark, and that the disputed domain names are confusingly similar to that trademark.
Documentary evidence submitted by the Complainant confirms to the satisfaction of the Panel that it has owned and held rights in the trademark BLACKBERRY at the USPTO in the relevant classes since at least as early as 2000. Further evidence shows that the Complainant is the registrant of the Hong Kong SAR trademark BERRY in the relevant classes. The Taiwan registration is not accepted as proven since it is not presented in the language of the registration agreement, in contravention of paragraph 11 of the Rules, and the Panel therefore cannot determine whether the registration is on a supplemental register or is subject to other limitations.
The disputed domain names, , , and have in common the words “berry” and “store”; “app” is a recognised abbreviation for “application”. The question in respect of each disputed domain name is whether it is similar to, and if so, confusingly similar to, the trademark BLACKBERRY.
The trademark BLACKBERRY comprises the common or generic adjective “black” and noun “berry”. Either word is capable of innocent usage in domain names, in which (in the present context) only alphanumeric characters and limited punctuation are used and upper or lower case are of no significance. It is not uncommon for a combination of two generic words to form a highly distinctive and protectable trademark, but the particular combination BLACKBERRY remains a common dictionary word that, out of context, is devoid of distinguishing features. Nevertheless, it is the registered and protectable trademark of the Complainant.
The disputed domain names contain the word “berry” and to that extent are similar to the trademark BLACKBERRY and identical to the trademark BERRY. Whether this similarity amounts to confusing similarity is a matter for analysis on the basis of the evidence, the Parties' submissions, the Policy, the Rules, and practice. The principle widely applied in UDRP disputes is that a finding of confusing similarity or otherwise in the terms of paragraph 4(a)(i) of the Policy is made by addressing the question narrowly. The consensus distilled from a number of decisions has been summarised as follows: “The test for confusing similarity should be a comparison between the trademark and the domain name to determine the likelihood of confusion.” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.2).
The authority cited by the Complainant, McCarthy on Trademarks and Unfair Competition (4th ed.) at 7.18 says that a publicly-recognised or publicly-created nickname or abbreviation is entitled to independent legal protection as a mark. In the examples given in McCarthy, however, there is distinctiveness about either the trademark (e.g., COCA-COLA) or the nickname or abbreviation (e.g., PHILLIES). In the present dispute, neither the term “blackberry” in the original trademark BLACKBERRY nor the nickname or abbreviation “berry” is distinctive out of context.
The Panel notes that McCarthy goes on to say: “However, it must be remembered that only in the most extraordinary situation could public usage ever transform a generic name into a trademark. As the Second Circuit observed: ‘The public has no more right than a manufacturer to withdraw from the language a generic term, already applicable to the relevant category of products, and accord it trademark significance, at least as long as the term retains some generic meaning'.” (Panel's emphasis).
The Panel takes from McCarthy the meaning (among others) that it would be exceedingly difficult to trademark “berry” for berries, but not necessarily so for telephones. The Complainant has in fact trademarked the word BERRY in Hong Kong SAR of China and apparently in Taiwan for the relevant products and services, although it has not gone unnoticed that it has not obtained the equivalent trademark closer to home.
The Complainant also cites from McCarthy the comment, “It is public use that will set the stage for confusion, which is the evil to be remedied in trademark cases”. The Panel is mindful, however, that UDRP disputes are not trademark disputes, which belong in another forum. The Panel is concerned with abusive registration and use within the meaning of the Policy.
Thus the balance is a fine one as to whether there is confusing similarity. On the one hand it might be argued that without knowledge of the content of the corresponding website, the words “berry store” do not evoke thoughts of a smartphone and that the probability of confusion with BLACKBERRY is small. On the other hand, application of the test of comparison between “berry” and BLACKBERRY, and the likelihood or otherwise of confusion, must depend upon the facts, one of which is that the Blackberry device evidently is popularly known as a “Berry”. Moreover, the Panel notes that the Complainant does indeed appear to have a trademark for BERRY in Hong Kong, to which the “berry” portion of the disputed domain name is identical.
In reaching a conclusion the Panel has additionally taken into account the fact that as long ago as 2000-2002 the Complainant ran an advertising campaign for the BlackBerry featuring the abbreviation “Berry”. The Complainant has submitted in evidence a series of eight stylish colour advertisements displaying various models of BlackBerry device alongside copy in which the word “Berry” is featured in the largest typeface. Each advertisement exploits a pun in which “Berry” doubles for “very”, thus: Berry Smart, Berry Different, Berry Popular, Berry Productive, Berry Impressive, Berry Noteworthy, Berry Secure and Berry Alert. The advertisements carry an assortment of endorsements of the BlackBerry from publications such as Forbes, Information Week and PC World, and also display and make clear the trademark status of the BLACKBERRY trademark. A strong association between the trademark BLACKBERRY and the abbreviation “Berry” has thereby been publicised.
The Complainant has also produced documentary evidence from websites offering serious commentary in connection with the BlackBerry, showing their use of the nickname “Berry”. These include “Can the Apple bite the Berry?”, on MondayNote; “Berry, berry good to me: PDA making a cultural impact”, in BusinessWeek, apparently originating from American News, Aberdeen, S.D.; “BlackBerry Bold (9000), the first 3G packin' Berry”, on BlackBerry Sync; “Obama keeps 'Berry for personal use; uses clunky Sectera Edge for official business”, on Gadget Blips; “Palm-style calendar for Berry”, on Brighthand; and an offer for sale on eBay with the word string “Verizon Blackberry 8703e Berry PDA Cell Phone Bluetooth”.
The Panel is satisfied that the BlackBerry has been widely known for some years by the nickname or abbreviation Berry. It is found that the closeness of the disputed domain names, and particularly the element “berry”, to the trademarks BLACKBERRY and especially to the well-known abbreviation “Berry”, cannot be otherwise than confusingly similar. The Panel finds for the Complainant within the terms of paragraph 4(a)(i) of the Policy.
The Complainant has placed less emphasis on its Hong Kong, SAR of China or apparent Taiwan trademark BERRY and so has the Panel, but it is found that the disputed domain names are confusingly similar to that trademark.
The Panel is aware and has said above that the word “berry” is capable of innocent usage on the Internet, and notes the Respondent's citing of, for example, the website “” belonging to William A. Berry & Son, Inc. Where a domain name uses a generic word legitimately, its registrant can rely on paragraphs 4(a)(ii) and (iii) of the Policy as discussed further below. B. Rights or Legitimate Interests
The Complainant must prove that the Respondent does not have rights or legitimate interests in the disputed domain names. Conventionally, the Complainant sets out a prima facie case to this effect that the Respondent may refute in the terms of paragraph 4(c) of the Policy or otherwise.
The Complainant has duly set out a prima facie case by asserting, inter alia, that it has not in any way permitted the Respondent to use its trademark. Furthermore, in anticipation of any Response in the terms of paragraph 4(c) of the Policy, the Complainant asserts on the basis of reasonable enquiry that the disputed domain name resolves to a commercial website offering software applications for the BlackBerry, and that visitors may download software applications for their BlackBerry by visiting on their devices. The Complainant says this shows a clear intent to profit from the Complainant's trademark and does not constitute a bona fide offering of goods or services in the terms of the Policy. Furthermore, there is no evidence that the Respondent has otherwise been commonly known by the disputed domain names. The website of the disputed domain name is commercial and there cannot be any claim to fair or noncommercial use.
The Panel accepts that a prima facie case has been made out to the effect that the Respondent does not have rights or legitimate interests in the disputed domain names.
The Respondent counters that the website to which the disputed domain name resolves is not commercial because the programs offered are free. The Panel does not find this claim to be tenable in the light of a statement on the website “www.”, with which the Respondent claims to be associated and implied an invitation to view. Under the headings “BlackBerry Developers” and “Distribute Your Apps via BerryStore”, a statement reads as follows: “You can distribute your apps via our distribution partner BerryStore [hyperlinked to “www.”]. It's the leading independent BlackBerry on device app store. Sell your apps on BerryStore for a low fee of 20% (including distribution and payment processing) and no price minimums!”. The Panel finds that text to be a clear statement by or on behalf of the Respondent that the BerryStore website offers or intends to offer applications for the BlackBerry for commercial sale. The website is not therefore noncommercial and the Respondent cannot claim so under paragraph 4(c)(iii) of the Policy.
To succeed under paragraph 4(c)(i) of the Policy, the Respondent would need to prove that it is making a bona fide offering of goods or services. In fact the Respondent may be offering goods or services that are in themselves legitimate. The Panel understands that the BlackBerry device is in some respects comparable with a computer in being a platform on to which applications are downloaded and run. The manufacturers of a computer and operating system may contrive to supply their own applications, but the choice lies ultimately with the user. The Panel has not seen anything in the Complaint to indicate that third-party applications cannot legitimately be loaded on to the BlackBerry. On the contrary, the Complainant has itself supplied a screenprint of the website of the Handango Store for BlackBerry, a source of applications.
The Respondent evidently supplies third-party applications, and the business of doing so may in itself be legitimate. Conduct of the business through the disputed domain name is not legitimate, however, since it is confusingly similar to the Complainant's well-known trademark and nickname in the same line of business. The disclaimers displayed on the Respondent's website are what might be expected if its business were to be operated from an innocuous domain name but they do not legitimise operation of the business from a domain name confusingly similar to the Complainant's trademark and nickname. The Respondent's activity is found not to be bona fide within the meaning of paragraph 4(c)(i) of the Policy.
The Respondent is found not to be commonly known by the disputed domain name within the meaning and intent of paragraph 4(c)(ii) of the Policy, or otherwise.
The disputed domain names and resolve to effectively blank pages, and resolves to a parking page with advertising links. No rights or legitimate interests can be found in respect of them. C. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain names were registered and are being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
The Panel notes the evidence that the Respondent offered to sell the disputed domain name to the Complainant for USD 60,000.00 but does not find sufficient evidence that it was the Respondent's primary motivation in registering or acquiring it in the terms of paragraph 4(b)(i) of the Policy. There is no evidence that it may have been the Respondent's primary intention in registering the disputed domain names , and .
The disputed domain name is harnessed to a commercial operation that depends on the attraction of persons interested in the BlackBerry device. As previously found, the disputed domain name is confusingly similar to the Complainant's trademark. The Panel finds it implausible, in all the circumstances, that the Respondent did not know and intend this. Internet users relying on a search engine to find the authentic website of the Complainant or websites endorsed by the Complainant, by submitting the search term “berry” alone or in combination with other words, or by guessing the URL, may be confronted with the disputed domain name . At least some users may reasonably think that is associated with the Complainant. Disclaimers displayed on the Respondent's website are of no consequence because the damage of referring the Complainant's potential clients to the wrong website has already been done. The Respondent is found to have relied upon confusion in the minds of Internet users as to the possible endorsement of the website by the Complainant.
The disputed domain name resolves to a parking page with links that it is reasonable to conclude are click-through links, whereby the Respondent may directly or indirectly receive commission for referrals to other websites. The generation of referral revenue may in principle be legitimate, but in the present instance it relies on the attraction of visitors to the Respondent's website, which in turn is done by exhibiting a word confusingly similar to the Complainant's trademark. The use of the disputed domain name is found to contravene the provisions of paragraph 4(b)(iv) of the Policy and bad faith registration and use are found accordingly.
The disputed domain names and are effectively unused, or passively held. It has long been generally accepted that, subject to appropriate findings under the other provisions of the Policy, a Respondent cannot avoid a finding of bad faith use by registering a well-known trademark as a domain name and then parking it unused (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). 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 names , , and be transferred to the Complainant.
Dr. Clive N.A. Trotman
Sole Panelist
Dated: June 5, 2009
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