WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Research In Motion Limited v. Nigel Hull Case No. D2009-1126 1. The Parties
The Complainant is Research In Motion Limited of Waterloo, Ontario, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is Nigel Hull of Yonkers, New York, United States of America. 2. The Domain Names and Registrar
The disputed domain names , , , , , and are registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2009. On August 24, 2009, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain names. On August 25, 2009, 1&1 Internet AG 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 August 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 17, 2009.
The Center appointed Jonathan Agmon as the sole panelist in this matter on September 24, 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, Research In Motion Limited, is a leading designer and a manufacturer of innovative wireless solutions for the worldwide mobile communication market.
The Complainant has developed and marketed the Blackberry smartphone and products, accessories and services in connection therewith. The Blackberry smartphone is available on over 300 networks in over 100 countries worldwide. By March 2009, the Complainant generated revenues in excess of USD11 billion, with a subscribe account base of over 25 million.
The Complainant expended significant resources in promotion and advertisement worldwide, and has established significant Internet presence over the years. The Complainant's efforts were fertile. For example, in 2009, the BLACKBERRY brand was rated at number 16 out of 100 Global Brands Ranking, by the BrandZ study. Interbrand's Best Global Brands 2008 has ranked the BLACKBERRY as the 73rd most valuable brand in the world.
The Complainant is the owner of multiple trademark registrations for the mark BLACKBERRY around the world. For example: US trademark registration No. 2672464 – BLACKBERRY, with the filing date of December 28, 1998; US trademark registration No. 2700671 – BLACKBERRY, with the filing date of December 28, 1998; US trademark registration No. 2402763 – BLACKBERRY & Design, with the filing date of January 25, 1999; Canadian trademark registration No. TMA554207 – BLACKBERRY, with the filing date of July 19, 1999; Canadian trademark registration No. TMA555231 – BLACKBERRY & Design, with the filing date of July 19, 1999.
In addition, the Complainant owns several registrations for the mark BERRY in different territories. For example: Taiwanese trademark registration no. 300808984 – BERRY, which is protected by trademark rights from February 2, 2007; Chinese trademark registration No. 1288822 – BERRY, which is protected by trademark rights from November 16, 2007.
The BLACKBERRY trademarks are well known and well recognized by the general public, and have generated significant goodwill. As a result of extensive use and publicity, the BLACKBERRY trademarks have become famous.
The Complainant also owns several domain names that are consisting of the mark BLACKBERRY. For example: , , , and others. The Complainant is using these domain names with connection with its activities.
The Respondent registered the disputed domain names on the following dates:
was registered by the Respondent on May 3, 2006;
was registered by the Respondent on December 8, 2004;
was registered by the Respondent on December 8, 2004;
was registered by the Respondent on April 2, 2006;
was registered by the Respondent on April 25, 2007;
was registered by the Respondent on December 4, 2004;
was registered by the Respondent on January 8, 2005.
The disputed domain name used to resolve to a website, which promotes the sale of ringtones for Blackberry devices. The other six disputed domain names resolved to an inactive website, comprising of a single webpage displaying the posting “Error 404 - Not found - The document you requested is not found”.
At the present time, all seven disputed domain names resolve to an inactive website, comprising of a single webpage displaying the posting “Error 404 - Not found - The document you requested is not found”. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain names are identical or confusingly similar to the BLACKBERRY trademark, owned by the Complainant, seeing that they are containing the trademark, or incorporating elements of the trademark.
The Complainant further argues that it has exclusive rights to the BLACKBERRY trademark and that this trademark is widely recognized with the Complainant and the Complainant's operations. Furthermore, the Complainant argues that it has not licensed or permitted the Respondent to use the BLACKBERRY mark.
The Complainant further argues that the Respondent did not provide any evidence demonstrating its use in the BLACKBERRY mark, or a bona fide intent to use it.
The Complainant further argues that the disputed domain names are likely to mislead or confuse the public as to their source or origin, and the public is likely to believe that the Complainant has authorized or endorsed the Respondent.
The Complainant further argues that the Respondent has engaged in a pattern of registering domain names that contain the BLACKBERRY trademark, to which he is not entitled. The Complainant argues this constitutes cybersquatting and therefore indicates on the Respondent's bad faith.
The Complainant further argues that the Responded promoted goods and services under the domain name, which compete with the Complainant's goods and services. The Complainant argues that this behavior is evidence of the Respondent's efforts to disrupt a competitor and constitutes bad faith.
The Complainant further argues that the Respondent was using the disputed domain names to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's mark.
The Complainant further argues that the Respondent was aware of its existence and of its BLACKBERRY mark and product at the time he registered the disputed domain names.
The Complainant further argues that the Respondent has failed to respond to its cease and desist letter. The Complainant argues that this constitutes bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The BLACKBERRY trademark is registered in the name of the Complainant in various jurisdictions around the world. For example, US trademark registration No. 2672464 – BLACKBERRY, with the filing date of December 28, 1998; US trademark registration No. 2700671 – BLACKBERRY, with the filing date of December 28, 1998; US trademark registration No. 2402763 – BLACKBERRY & Design, with the filing date of January 25, 1999; Canadian trademark registration No. TMA554207 – BLACKBERRY, with the filing date of July 19, 1999; Canadian trademark registration No. TMA555231 – BLACKBERRY & Design, with the filing date of July 19, 1999, and many others.
The disputed domain name differs from the registered BLACKBERRY trademark only by the additional number – 8702.
The disputed domain name differs from the registered BLACKBERRY trademark only by the additional word – advice.
The disputed domain name differs from the registered BLACKBERRY trademark only by the additional word – consultant.
The disputed domain name differs from the registered BLACKBERRY trademark only by the additional expression – mp3.
The disputed domain name differs from the registered BLACKBERRY trademark by the additional word – sprint and by the additional number - 8830.
The disputed domain name differs from the registered BLACKBERRY trademark only by the additional words – “the” and “expert”.
The above mentioned domain names integrates the Complainant's trademark BLACKBERRY in its entirety, as a dominant element, with words and/or numbers that do not serve sufficiently to distinguish or differentiate these disputed domain names from the Complainant's BLACKBERRY trademark.
Previous UDRP panels have ruled that the mere addition of a non significant element does not sufficiently differ the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
“The mere addition of a descriptive term to an identical trademark, has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
The addition of a generic top-level domain (gTLD) “.com” to the disputed domain names does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since use of a gTLD is technically required to operate the domain names and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain names.
The result is that the Complainant has shown that the above disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name incorporates the BERRY mark with the word – voda. The term voda is taken from the mark VODAFONE, a well known telecommunications trademark. Thus, the disputed domain name is a combination of the VODA mark and the BERRY mark.
The Complainant's trademark – BERRY is registered in China and Taiwan since 2007. The disputed domain name, however, was registered by the Respondent on January 8, 2005.
The Complainant's mark – BERRY was filed for registration almost two years after the disputed domain name had been registered. i.e., the disputed domain name precedes the filing date of the mark – BERRY. Nevertheless, the absence of a trademark application or registration at the time of the registration of the disputed domain name does not necessarily preclude a finding by the Panel that the Complainant has the requisite rights in that mark for purposes of paragraph 4(a)(i) of the Policy, as has been long noted by prior UDRP panels. It may, however, have effect under the second and third element of the Policy. (See, for example, Great Plains Metromall, LLC v. Gene Creach, NAF Case No. FA97044, DigiPoll Ltd. v. Domain Administrator,WIPO Case No. D2007-0999) and The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050). What is of relevance is that the Complainant has relevant trademark rights at the time of filing the Complaint. Here, the Complainant has demonstrated such rights to the trademark BERRY. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 1.4 and the decisions cited therein.
Considering the effect of the existence of trademark rights at the time of domain name registration under the second and third elements of the Policy, the Panel observes that it has been the decision of previous UDRP panels that in determining if a complainant has defendable rights in an unregistered mark, the panel should analyze whether the complainant has established common law rights in the mark by creating a secondary meaning that is directly associated with the complainant. Factors typically considered influential in such an analysis are longevity of use, amount of sales, nature and extent of advertising, consumer surveys and media recognition (see: WIPO Overview of WIPO Panel Views on Selected UDRP Questions and The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050).
The Complainant contends that the term BERRY is a well known nickname for the Blackberry device. Further, the Complainant asserts that between the years 2000 and 2002 it ran an advertising campaign for the Blackberry device, featuring the abbreviation BERRY. While the Complainant has not furnished the Panel with sales figures or advertising budgets relating to its services under the mark – BERRY, the Complainant contends that its trademark is well known throughout the world, and and is widely recognized as the nickname for the Blackberry device. These contentions and inferences are not contested by the Respondent.
Previous UDRP panels have ruled that in similar situations, all reasonable inferences of fact in the allegations of the Complainant will be deemed true (See, for example, Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Case No. FA95095, Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009 and The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050).
Certainly, five years of use is sufficient time for the Complainant, which is a large global mobile communication company, to have achieved a secondary meaning in its BERRY mark. (See: Kahn Development Company v. RealtyPRO c/o Carl Krause, NAF Case No. FA568350 and CavinKare Private Limited v. LaPorte Holdings, Inc. and Horoshiy, Inc.,WIPO Case No. D2004-1072. Such length of use, persuades the Panel that the Complainant has acquired common law rights in its service mark. (See also Research In Motion Limited v. PrivacyP / berry store, hery santosa,WIPO Case No. D2009-0469.)
Consequently, the Panel finds that the Complainant has shown that the disputed domain names are identical or confusingly similar to the trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lack rights or legitimate interests in the disputed domain names, the burden shifts to the Respondent to show that he has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the domain name and the Respondent had failed to assert any such rights, or legitimate interests.
The Panel finds the Complainant has established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the BLACKBERRY or the BERRY trademarks, or a variation thereof. The Respondent has not submitted a Response and has not provided any evidence to show he has any rights or legitimate interests in the disputed domain name.
Accordingly, and also in view of the Panel's findings below, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
A review of the website operating under the disputed domain names indicates that the disputed domain names lead to a parked webpage and referring to an error page. “The lack of active use of the domain name does not as such prevent a finding of bad faith, and may indeed in certain circumstances support such finding … The Panel must examine all the circumstances of the case to determine whether Respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include Complainant having a well-known trademark, no Response to the Complaint, and the impossibility of conceiving a good faith use of the domain name” Mobimate Ltd. v. “World Mate” and Sachiwo Inagaki,WIPO Case No. D2008-1867.
Based on the evidence presented on the use of the BLACKBERRY and the BERRY trademarks, the famous nature of these marks, the failure of the Respondent to respond to Complainants' cease and desist letter and the Respondent's failure to use the disputed domain names in any meaningful way, the Panel can draw the inference that the Respondent does not have any legitimate interest in the disputed domain names and that the disputed domain names were registered and used in bad faith.
The Panel cites the following similar case with approval:
“After it registered the disputed domain name in bad faith, the Respondent, who does not have any apparent legitimate interest in the disputed domain name, failed to use it [...]. The Panel believes that such a complete inactivity was due to the fact that, sooner or later, the Complainant would be compelled to enquire about the disputed domain name. This is actually what happened at the end of 2002, leading the Complainant to write to the Respondent to inform about its rights in the trademark and to invite the Respondent to explain the reasons for the registration of the disputed domain name. When receiving such notice, good faith requires a response. Instead, the Respondent did nothing. Although it had actual knowledge of the Complainant's rights in the corresponding trademark, it did not reply and did not bother transferring or canceling the disputed domain name. In the Panel's eye, these circumstances are indications of bad faith inactive use. Instead of investing time and money on the disputed domain name, that is “actively using” a domain name which would unmistakably go noticed sooner or later by its legitimate rights holder, the Respondent was satisfied to hold the disputed domain name, thereby preventing the Complainant from legitimately reflecting its trademark and its corresponding commercial activities on the Internet”, Gaggia S.p.A. v. Yokngshen Kliang, Gaggia S.p.A. v. Yokngshen Kliang,WIPO Case No. D2003-0982.
In addition, the disputed domain names are virtually identical and confusingly similar to the Complainant's trademarks. Previous UDRP panels have ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP (see Humana Inc., op. cit. supra; E v. Ult. Search, Inc.,WIPO Case No. D2001-1319).
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain names 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 names , , , , , and be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: October 1, 2009
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