WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Research In Motion Limited v. You Xia Case No. D2009-1141 1. The Parties
The Complainant is Research In Motion Limited, Ontario, Canada, represented by Novak, Druce & Quigg LLP, United States of America.
The Respondent is You Xia, Beijing, People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd. 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 Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On September 2, 2009, Melbourne IT Ltd 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 September 7, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 29, 2009.
The Center appointed Jonathan Agmon as the sole panelist in this matter on October 5, 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 manufacturer and marketer 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 in over 160 countries from 475 carriers and national distribution partners. In its latest fiscal year, ending February 28, 2009, the Complainant's revenue nearly doubled to over USD 11 billion, as compared to fiscal year 2008. The Complainant has an account base of approximately 25 million subscribers and shipped approximately 26 million smartphones in fiscal year 2009 alone.
The Complainant expended significant resources in promotion and advertisement worldwide, and has established significant Internet presence over the years. The Complainant 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. The BLACKBERRY brand was ranked the 73rd most valuable brand in the world in the 2008 business week/Interbrand annual ranking of the best 100 global brands.
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.
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 name “Blackberry”. For example: , , , and others. The Complainant is using these domain names in connection with its activities.
The Respondent registered the disputed domain name on April 12, 2009.
The disputed domain name resolves to a search page, containing different commercial links, including a search link for “Cell Phones”. This link directs consumers to third party commercial web sites, where the Complainant's BLACKBERRY products and accessories are offered along with the products of the Complainant's direct competitors. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to the BLACKBERRY trademark, owned by the Complainant, seeing that it contains the trademark in its entirety. Further, the Complainant argues that the additional letter “u” does not dispel the confusion of the disputed domain name with the BLACKBERRY mark.
The Complainant 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 license or permitted the Respondent to use the BLACKBERRY marks.
The Complainant further argues that the Respondent is not commonly known by the disputed domain name and did not provide any evidence demonstrating his rights in the BLACKBERRY mark.
The Complainant further argues that the disputed domain name is 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 was using the disputed domain name to attract, for commercial gain, Internet users to his web site 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 products at the time he registered the disputed domain name.
The Complainant further argues that the Respondent did not responde to the cease and desist letter, sent to him by the Complainant. The Complainant argues that this constitutes evidence of the Respondent's bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. 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. TMA554206 – BLACKBERRY & Design, with the filing date of July 19, 1999; and many others.
The disputed domain name incorporates the Complainant's registered trademark BLACKBERRY in its entirety, and differs from the Complainant's marks only by the additional letter “u”.
The disputed domain name integrates the Complainant's trademark in its entirety, as a dominant element, with an addition of one letter. The addition of a letter does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's trademark.
Previous UDRP panels have ruled that the mere addition of a nonsignificant element does not sufficiently differentiate the domain name from the 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).
Further, “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).
It should be noted that the addition of a generic top-level domain (gTLD) “.com” to the disputed domain name 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 as the 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 name is identical or confusingly similar to the trademark 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 name, the burden shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name (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 disputed domain name 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 trademark, 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, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name 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 name after the Complainant has registered its trademarks. According to the evidence filed by the Complainant, the Complainant first registered its BLACKBERRY trademark in 2003. It is suggestive of the Respondent's bad faith that the trademarks, owned by the Complainant, were registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
In addition, paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use if the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location.
Furthermore, a review of the web site operating at the disputed domain name reveals that the disputed domain name resolves to a search page, containing different commercial links, including a search link for “Cell Phones”. This link directs consumers to third party commercial web sites, where the Complainant's Blackberry products and accessories are offered along with the products of the Complainant's direct competitors. The Respondent's use of the mark BLACKBERRY to promote cellular goods clearly evidences that the Respondent registered the disputed domain name with the knowledge of the Complainant and of the use the Complainant is making in the mark BLACKBERRY. The registration of the disputed domain name was clearly done in bad faith. See Herbalife International, Inc v. Surinder S. Farmaha, WIPO Case No. D2005-0765, which asserted that “the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith”.
The disputed domain name is virtually identical and confusingly similar to the Complainant's trademark. 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” (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 E v. Ult. Search, Inc.,WIPO Case No. D2001-1319).
In light of the Complainant's distinctive registered trademark, the Panel finds that the registration of a domain name confusingly similar to the Complainant's mark shows the Respondent's intent to operate a web site offering similar goods and by doing so, creating likelihood that Internet users would be confused and identify the Respondent as either associated or affiliated with the Complainant. The use of the Complainant's distinctive trademark for quasi identical goods constitutes bad faith on behalf of the Respondent (See Schur International A/S v. Jorge Massa, WIPO Case No. D2009-0450).
Also, the lack of reply to the Complainant's cease and desist letter is an additional evidence of the Respondent's bad faith in this case (ALSTOM v. STOCKMARKET DOMAINS,WIPO Case No. D2008-1542).
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 name 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 name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: October 15, 2009
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