WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Research In Motion Limited v. Jesse Kaye Case No. D2009-1140 1. The Parties
The Complainant is Research In Motion Limited of Waterloo, Ontario, Canada, represented by Gowling Lafleur Henderson LLP.
The Respondent is Jesse Kaye of Bethesda, Maryland, 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 26, 2009. On August 27, 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 28, 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 31, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 20, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 21, 2009.
The Center appointed Jonathan Agmon as the sole panelist in this matter on September 28, 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 USD 11 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. Barron's 500 report of May 2008 ranked the Complainant second out of the 500 largest publicly traded companies in the United States and Canada.
The Complainant is the owner of the Blackberry Storm device, which is a part of the Blackberry 9500 series of phones. The Complainant markets the Blackberry Storm devices, amongst others, under the name “BlackBerry Storm 9530” in numerous countries. As a result, this device enjoys recognition by the public and has generated significant goodwill.
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. TMA554206 – BLACKBERRY & Design, with the filing date of July 19, 1999; and many others.
In addition, the Complainant owns several registrations for the mark BLACKBERRY STORM in different territories. For example: Benelux trademark registration No. 849500 – BLACKBERRY STORM, with the filing date of July 25, 2008; Austrian trademark registration No. 249637 – BLACKBERRY STORM, with the filing date of July 29, 2008; Belize trademark registration No. 557508 – BLACKBERRY STORM, with the filing date of July 29, 2008; and others.
Moreover, the Complainant is the owner of several registrations for the mark STORM in different territories. For example: Monaco trademark registration No. 0826891 – STORM, which is protected by trademark rights from July 28, 2008; Belize trademark registration No. 557708 – STORM, with the filing date of July 29, 2008; Moroccan trademark registration No. 118716 –STORM, which is protected by trademark rights from July 29, 2008; Colombian trademark registration No. 372042 –STORM, which is protected by trademark rights from February 11, 2009; and others.
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 in connection with its activities.
The Respondents registered the disputed domain names on the following dates:
was registered by the Respondent on September 4, 2008;
was registered by the Respondent on August 29, 2008.
The disputed domain names are used to resolve to a Google search page, displaying the posting “Oops! This link appears to be broken”. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain names are identical or confusingly similar to the BLACKBERRY, BLACKBERRY STORM and STORM trademarks, owned by the Complainant, seeing that they are containing the trademarks, or incorporating elements of the trademarks.
The Complainant further argues that it has exclusive rights to the BLACKBERRY, BLACKBERRY STORM and STORM trademarks and that these trademarks are 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 marks.
The Complainant further argues that the Respondent did not provide any evidence demonstrating his use in the BLACKBERRY, BLACKBERRY STORM and STORM marks, 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 trademarks, to which he is not entitled. The Complainant argues this constitutes as cybersquatting and therefore indicates the Respondent's 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 the Complainant's existence and the Complainant's BLACKBERRY marks and products at the time he registered the disputed domain names.
The Complainant further argues that the Respondent has purposed to sell the disputed domain names and requested the Complainant to make him a “reasonable offer”. The Complainant claims that this solicitation of an offer to purchase the disputed domain names constitutes evidence of the Respondent's 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 names are 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. TMA554206 – BLACKBERRY & Design, with the filing date of July 19, 1999; and many others.
In addition, the Complainant owns several registrations for the mark BLACKBERRY STORM in different territories. For example: Benelux trademark registration No. 849500 – BLACKBERRY STORM, with the filing date of July 25, 2008; Austrian trademark registration No. 249637 – BLACKBERRY STORM, with the filing date of July 29, 2008; Belize trademark registration No. 557508 – BLACKBERRY STORM, with the filing date of July 29, 2008; and others.
The disputed domain name incorporates the Complainant's registered trademarks – BLACKBERRY and STORM, or rather contains the Complainant's registered trademark – BLACKBERRY STORM, and differs from the Complainant's marks only by the additional number – 9530.
The disputed domain name incorporates the Complainant's registered trademarks – BLACKBERRY and STORM, or rather contains the Complainant's registered trademark – BLACKBERRY STORM, and differs from the Complainant's marks only by the additional number – 9350.
The disputed domain names integrate the Complainant's trademarks in their entirety, as a dominant element, with an addition of numbers. The addition of the numbers does not serve sufficiently to distinguish or differentiate these disputed domain names from the Complainant's trademarks.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate a domain name from a registered trademark:
“[T]he 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).
Furthermore, the additional numbers in the disputed domain names only strengthen the conception that the disputed domain names are connected with the Complainant due to the fact that the Complainant itself is adding an identical or confusingly similar number to the trademarks upon marketing the Blackberry Storm device, which is known as “BlackBerry Storm 9530”.
It should be noted that 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.
Consequently, the Panel finds that the Complainant had 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 lacks 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 names (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the domain names and the Respondent has 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, the STORM or the BLACKBERRY STORM 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 names.
Accordingly, 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).
The Complainant submitted evidence, which shows that the Respondent has registered the disputed domain names after the Complainant has registered its trademarks. According to the evidence filed by the Complainant, the Complainant has registered its BLACKBERRY trademark in different territories since 2003 and the BLACKBERRY STORM and STORM trademarks since July of 2008. It is suggestive of the Respondent's bad faith that the trademarks, owned by the Complainant, were registered before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
In addition, a review of the website operating under the disputed domain names indicates that the disputed domain names lead to a Google search page, displaying the posting “Oops! This link appears to be broken”.
“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, the STORM and the BLACKBERRY STORM trademarks, the famous nature of these marks and the failure of the Respondent 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 are being used in bad faith.
Previous UDRP panels have asserted that “the concept of a domain name being used in bad faith is not limited to positive action; inaction is within the concepts” (World Wrestling Federation Entertainment Inc (WWFE) .v. M. de Rooij,WIPO Case No. D2000-0290).
And also, “when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith'” (Tata Sons Limited v. TATA Telecom Inc/T, Mr. Singh,WIPO Case No. D2009-0671).
Further, the disputed domain names are virtually identical and confusingly similar to the Complainant's trademarks. Previous UDRP panels 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” (Sanofi-Aventis, supra). 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 E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319).
Furthermore, it is well established that “circumstances indicating that a Respondent has registered a domain name primarily for the purpose of selling or renting it to a Complainant for a monetary consideration in excess of Respondent's out-of-pocket expenses directly related to the domain name shall be evidence of registration and use of a domain name in bad faith” (KOPAŞ Kozmetik Pazarlama Ve Sanayii A.Ş. v. Mete Aydin,WIPO Case No. D2002-0399. Also see adidas-Salomon AG v. Vincent Stipo,WIPO Case No. D2001-0372). The Panel finds that these circumstances are present here. Although the Respondent indicates in the email correspondence between him and the Complainant that he only wishes to receive “payment to cover my expenses for registration”, when the Complainant indicates that the expenses are USD 6 the Respondent replies that going through official channels will cost the Complainant more as “its likely going to skyrocket to 5-15k” and requests the Complainant to “offer me something reasonable”. This behavior clearly indicates that the Respondent was asking for a price that is significantly larger than the Respondent's out-of-pocket registration expenses.
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 12, 2009
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