The Complainant is Research In Motion Limited, Waterloo, Ontario, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is Domain Administrator, Shanghai, People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC (“Domain Name”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2011. On January 10, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Domain Name. On January 13, 2011, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming it had received a copy of the Complaint, that the Respondent was listed as the registrant, that the Domain Name was registered with it, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the Domain Name, that the Domain Name had been locked, and that the registration agreement was in English.
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 January 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2011.
The Center appointed Olga Zalomiy as the sole panelist in this matter on February 18, 2011. 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
Based on the written evidence submitted by the Complainant, the Panel finds the following to be the facts of this case:
The Complainant is the leading designer and manufacturer of innovative wireless solutions for the worldwide mobile communications market. The Complainant has enjoyed tremendous success. For the fiscal year ending February 27, 2010, the Complainant generated revenues in excess of USD 14 billion. Between 2008 and 2010, the Complainant generated over USD 30 billion in revenue.
The Complainant is the owner of the BLACKBERRY trademark. Among others, the Complainant owns trademark registrations for BLACKBERRY and its variations in the United States of America, Canada, the European Union and People’s Republic of China, including United States of America registrations Nos. 2844340 and 2678454, and Chinese registrations Nos. 6524056 and 6943465. Numerous rankings speak to the fame of the BLACKBERRY trademark. BLACKBERRY is rated No. 14 in the BrandZ’s Top 100 Global Brands ranking, No. 8 among the 500 largest publicly traded companies in the United States of America and Canada in the “Barron’s 500” and the No. 54 most valuable brand in the world according to Inerbrand’s “Best Global Brands 2010” ranking.
The Complainant is also the registered owner of domain names that incorporate its BLACKBERRY mark: and . The domain names direct to the Complainant’s official websites. The websites offer information, education and support services for the BLACKBERRY products, and offer BLACKBERRY products and related accessories for sale.
The Domain Name that was registered on March 14, 2010 consists of: 1) the word “BLACKBERRY”, 2) the generic word “bridge”, and 3) a GLTd suffix “com.” It directs to a pay-per-click (“PPC”) website displaying sponsored links to other mobile phone manufactures, such as Motorola, Nokia, Samsung and LG. The website also provides means by which end users could search for links to Motorola, Nokia, Samsung and LG websites. 5. Parties’ Contentions A. Complainant
The Complainant sites to its BLACKBERRY trademark registrations as evidence of its rights in the trademark. The Complainant alleges that the Domain Name is identical or confusingly similar to its trademark because the Domain Name incorporates the Complainant’s famous BLACKBERRY trademark in its entirety. In Complainant’s view, the confusion is not diminished by the addition of the term “bridge” and a gTLD suffix “com. ” Instead, in its view, the inclusion of the term “bridge” adds to the confusion, because the term can be used in the context of conference telephone calls, one of the functions of its BLACKBERRY smartphones.
The Complainant contends that the Respondent does not have a legitimate interest or rights in the Domain Name. It alleges that there is no evidence that the Respondent has ever used, or demonstrated preparations to use, the Domain Name in connection with a bona fide offering of goods or services. According to the Complainant, there has never been any relationship between the Complainant and the Respondent that would give rise to a license or other authorization to use directly or indirectly the BLACKBERRY trademark. Further, the Complainant alleges that the Domain Name is being used to divert Internet traffic to a PPC website that displays sponsored links to competitors of the Complainant. This use of the Domain Name, in Complainant’s view, allows the Respondent to reap financial benefit.
Finally, the Complainant alleges that the Domain Name was registered and is being used in bad faith. In Complainant’s view, the Respondent registered the Domain Name for the purpose of disrupting business of the Complainant, because the Respondent uses the Domain Name to direct users to a PPC website that displays links to business of the Complainant’s direct competitors. The Complainant argues that by virtue of unauthorized diversion of Internet traffic, the BLACKBERRY mark’s goodwill is harmed. In its view, the purpose for registration of the Domain Name was to exploit for commercial gain, Internet traffic destined for the Complainant. Therefore, the Complainant alleges that the Respondent knew about and intended that the diversion would be disruptive to the Complainant’s business. Complainant further alleges that the Domain Name is being used intentionally in an attempt to attract for commercial gain, Internet users to the Respondent’s website by creating likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement. In the Complainant’s view, the Respondent had actual knowledge of the Complainant’s famous trademarks, because of the nature of the Respondent’s website.
The Complainant requests the Domain Name to be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with the Rules, paragraph 15(a), the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the UDRP, the Rules, and any rules and principles of law that it deems applicable. To ensure fair, effective and predictable operation of the UDRP system, where appropriate, the Panel will make decisions consistent with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview of WIPO Panel Views”)1.
Also, where necessary, the Panel will make appropriate assumptions from the Respondent’s default. The Rules, paragraph 10(b), require that the Panel ensure that “each Party is given a fair opportunity to present its case. ” In this case, the Center gave the Respondent such opportunity. The Respondent, however, chose not to respond to the complaint. In case of default in the absence of exceptional circumstances, the Rules, paragraph 14(b), require the panel to “draw such inferences therefrom as it considers appropriate.”
But “the respondent’s default does not automatically result in a decision in favor of the complainant. ”2 The complainant must establish “each of the three elements required by paragraph 4(a) of the UDRP”. 3 Thus, to succeed on its claim, the Complainant must prove that: 1) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 2) Тhe Respondent has no "rights or legitimate interests in respect of the domain name"; and 3) The domain name "has been registered and is being used in bad faith. " Paragraph 4(a) of the UDRP. A. Identical or Confusingly Similar
The Panel finds that the Complainant proved that it has rights in the BLACKBERRY mark. Under paragraph 1.1. of the WIPO Overview of WIPO Panel Views, if the complainant owns a registered trademark, then it satisfies the threshold requirement of having trademark rights. To prove its rights, the Complainant submitted copies of thirty two trademark registrations in the United States, Canada, the EU and China, e. g. US trademark registration Nos. 2672464, 2700671, 2678454, 2844340, and CTM trademark registration Nos. 3102687,1248335, 3180445. This evidence leaves no doubt in the Panel’s mind that the Complainant has rights in the trademark BLACKBERRY. Hence, the Complainant satisfied the rights in trademark requirement.
To satisfy the first UDRP element, a domain name must be “identical or confusingly similar” to a trademark, in which a complainant has rights. 4 “The test for confusing similarity should be a comparison between the mark and the domain name. ”5 Based on the comparison of trademark BLACKBERRY and the Domain Name, the Panel finds them to be confusingly similar for two reasons. First, the Domain Name incorporates the Complainant’s trademark in its entirety. Second, neither the addition of the generic word “bridge” nor the inclusion of the generic domain suffix “com” dissipates the confusion.
As a rule,6 when a domain name wholly incorporates a complainant’s mark and adds a generic word, that is sufficient to establish confusing similarity for purposes of the UDRP. 7 In line with this principle, previous panels found that the incorporation of the BLACKBERRY mark into domain name was sufficient to find confusion, and the addition of the generic term “store” did not dispel the confusing similarity.8 Similarly, the addition of the generic term “accessories” to the Complainant’s BLACKBERRY mark did nothing to diminish confusing similarity with the domain name . 9 In line with the prior UDRP decisions, the Panel finds that is confusingly similar to the BLACKBERRY mark.
Moreover, the Panel accepts the Complainant’s claim that the addition of the term “bridge” to the BLACKBERRY mark even adds to the likelihood of confusion. The Complainant alleges that in its “field of telecommunications, the term “bridge” can be used in the context of conference calls, whereby the bridge can be used to connect people over a phone line or broadband Internet connections.” And, the Complainant’s devices are used for conference calls. In support of this proposition, the Complainant submitted printouts of online definitions of the term “bridge” and references to the term “bridge” in the context of conference calls from the Complainant’s websites. The Panel finds these sufficient to agree with the Complainant. It is likely that consumers familiar with the BLACKBERRY brand and the way the term “bridge” is used in telecommunications may believe that the Domain Name is connected with the Complainant.
Moreover, it is well-established that the addition of the gTLD suffix “. com” or equivalent, being an inevitable part of the domain name, has no bearing on the question of confusing similarity. 10
Therefore, the Domain Name is confusingly similar to the Complainant’s trademark, and the first element of paragraph 4(a) of the UDRP has been satisfied. B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the UDRP, a complainant must prove that respondent has no rights or legitimate interest in the domain name. Тo satisfy this requirement, the complainant must make out a prima facie case, i. e. legally sufficient presentation, that the respondent lacks rights or legitimate interest in the domain name. 11 If the complaint shows sufficient evidence to prove that the respondent lacks rights or legitimate interests in the domain name and the Respondent fails to show otherwise, then the complainant has satisfied paragraph 4(a)(ii) of the UDRP. See Paragraph 2. 2. of the WIPO Overview of WIPO Panel Views.
Paragraph 4(c) of the UDRP provides an open list of circumstances that demonstrate rights or legitimate interests of a respondent in the domain name. The Complainant alleges that none of such circumstances is found here. The Panel finds that the Complainant presented sufficient evidence to show that the Respondent lacks rights or legitimate interest in the Domain Name for three reasons. First, the Respondent did not use the Domain Name in connection with bona fide offering of goods. Second, the Respondent uses the Domain Name for commercial gain and to misleadingly divert consumers to its website. Third, the Respondent has not been commonly known by the domain name.
The Complainant alleges that the Respondent did not use the Domain Name in connection with bona fide offering of goods. In support of this proposition, the Complainant alleges that it has not licensed or otherwise authorized the Respondent to register or use the BLACKBERRY marks in any manner. In previous UDRP cases, it has been held that, an unauthorized party cannot claim a legitimate interest in a domain name that intentionally contains, or is confusing with, a complainant’s mark, as the activities of such party cannot be said to constitute a good faith offering of goods or services. 12 Since it is undisputed that the Domain Name is confusingly similar to the Complainant’s mark, the Respondent’s use of the Domain Name without Complainant’s authorization cannot constitute bona fide offering of goods or services.
According to the Complainant, the Respondent reaps a financial benefit by using the Domain Name to divert traffic to a PPC website that displays sponsored links to competitors of the Complainant. The Complainant presented evidence in the form of printouts from the Respondent’s “www. ” website showing that the website is used as PPC landing page that displays sponsored links to third party mobile phone manufacturers, such as Motorola, Nokia, Samsung and LG. The Complainant alleges that as Motorola, Nokia, Samsung and LG are its competitors. The website also provides means by which end users could search for links to websites of the competitors.
Using a domain name that is confusing with a third party trademark to mislead users by diverting them to a pay-per-view click website does not constitute bona fide use of the domain name by a respondent. 13 It is likely that consumers with visit the Respondent’s website in the belief that the website is an official website of the Complainant. Therefore, it is likely that the Respondent diverts traffic intended for the Complainant.
Moreover, use of PPC websites has been found to be a “popular scheme for cybersquatters to earn money from their activities. ”14 Thus, it is likely that the Respondent receives financial benefit by displaying third-party advertising, and therefore, that the Respondent uses the Domain Name for commercial gain and to misleadingly divert Complainant’s consumers.
Finally, the Complainant claims there is no evidence to suggest that the Respondent has been commonly known by the Domain Name, or that the Respondent is making, or intends to make, a legitimate non-commercial or fair use of the Domain Name.
The Panel finds that the Complainant made a strong prima facie case. Without contrary evidence from the Respondent, this is sufficient to satisfy the “rights or legitimate interest” element. C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the UDRP requires “a positive finding that both the registration and use were in bad faith. ”15 Paragraph 4(b) of the UDRP provides an open list of the circumstances that “shall be evidence of the registration and use of a domain name in bad faith. ” The Panel finds that circumstances are present in this case “that [a respondent] registered the domain name primarily for the purpose of disrupting the business of a competitor;” or (iv) “by using the domain name, [a respondent] intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location. ” Paragraph 4(b)(iii) and (v) of the UDRP. (i) Registration in Bad Faith
In the Complainant’s view, the Respondent had actual or constructive knowledge of the BLACKBERRY trademarks at the time of the Domain Name registration given the fame of the BLACKBERRY marks and the nature of the Respondent’s website. And therefore, the Respondent registered the Domain Name in bad faith. To support its position, the Complainant relies on the holding in Document Technologies v. International Electronic Communications, Inc. ,WIPO Case No. D2000-0270.
The Panel finds that this reliance is misplaced. According to paragraph 3. 4. of the WIPO Overview of WIPO Panel Views, the concept of constructive notice is declined by the majority of the panelists. This concept, however, has been used in situations where both parties are located in the United States and a complainant has a US registered trademark. Both of the parties in Document Technologies16 were located in the United States. Since the Complainant is located in Canada and the Respondent is located in China, the Panel finds the concept of constructive knowledge does not apply.
Nonetheless, the Panel finds it probable that the Respondent knew about the Complainant’s well-known BLACKBERRY mark and therefore, registered the Domain Name in bad faith.
Specifically, the Panel finds that the Complainant presented sufficient evidence that the BLACKBERRY mark is well-known. To show the popularity and worldwide recognition of its mark, Complainant submitted printouts from various websites showing that the BLACKBERRY brand is rated No. 14 in the BrandZ’s Top 100 Global Brands ranking, No. 8 among the 500 largest publicly traded companies in the U. S. and Canada in the “Barron’s 500”, and the No. 54 most valuable brand in the world in Inerbrand’s “Best Global Brands 2010” ranking. To show the value of the mark, the Complainant submitted a copy of its 2010 Annual report showing that it generated revenues in excess of USD 14 billion in 2010 and over USD 30 billion in revenues between 2008 and 2010. Finally, the Complainant offered thirty two copies of its mark registrations in different continents going back to 1999. Based on the world-wide recognition of the BLACKBERRY brand, the value associated with the mark, and the long-term history of the mark and its world-wide recognition, the Panel finds the BLACKBERRY mark to be a well-known mark.17 Thus, it is probable that the Respondent knew about existence of the Complainant’s mark prior to the registration of the Domain Name.
The Panel shares the view that “opportunistic bad faith” is shown when a domain name incorporating a well-known mark is registered ”by someone with no connection with the product. 18 Since, the Respondent registered the Domain Name which incorporated the Complainant’s famous mark in this particular Domain Name, and taking into account lack of connection between the Respondent and any BLACKBERRY product, opportunistic bad faith can be presumed.
Further, the Complainant alleges that the Respondent registered the Domain Name for the purpose of disrupting the Complainant’s business. The Complainant cites to the PepsiCo case19 for the proposition that the pointing of a domain name to a PPC website that displays links to websites of businesses which offer goods and services that complete with, or rival, those goods and services offered by a complainant constitutes bad faith under paragraph 4(b) of the UDRP. Here, it is established that the Domain Name directs to a PPC website displaying links to third-party websites that offer products competing with the Complainants’ products. The Complainant claims that the use of the Domain Name is disruptive to it because misdirection of its potential consumers to the Respondent’s website, and to websites of the Complainant’s competitors, results in loss of the BLACKBERRY trademark goodwill. In Complainant’s view, the purpose behind the registration of the Domain Name was to exploit, for commercial gain, Internet traffic destined for the Complainant. Based on the evidence presented, and in the absence of evidence to the contrary, the Panel finds these claims to be plausible.
Therefore, the Panel finds that the Respondent registered the Domain Name for the purpose of disrupting the business of the Complainant. (ii) Use in Bad Faith
The Complainant claims that the Domain Name is likely to confuse potential consumers into believing that the Respondent is affiliated with, or endorsed by, the Complainant, because the Domain Name incorporates the Complainant’s famous mark in its entirety. The Panel agrees that the Complainant’s famous mark is incorporated in the Domain Name, and thus, such confusion is likely.
The Complainant states that the Respondent is using the Domain Name for commercial benefit because the Domain Name resolves to a PPC website displaying links to websites of the Complainant’s competitors. The Panel agrees. Numerous Panels have held that directing a domain name that is confusing with a third party trademark to a PPC website constitutes bad faith as per paragraph 4(b)(iv). 20 It is uncontested that the Domain Name is confusingly similar to the Complainant’s mark. It is also uncontested that the Domain Name directs to the PPC website with links to advertising materials of the Complainant’s competitors. And it is probable that the Respondent derives financial benefit from the advertising. Therefore, the Panel finds evidence of bad faith use.
Therefore, the third element of paragraph 4(a) of the UDRP has been established. 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.
Olga Zalomiy
Sole Panelist
Dated: March 2, 2011
1 See paragraph 4. 1. of the WIPO Overview of WIPO Panel Views.
2 See paragraph 4. 6. of the WIPO Overview of WIPO Panel Views.
3 Id.
4 See paragraph 4(a) of the UDRP.
5 Paragraph 1. 2. of the WIPO Overview of WIPO Panel Views.
6 See Industrial Farmaceutica Cantabria, S. A. v. Mr. Gideon Kimbell,WIPO Case No. D2010-0733, finding that the addition of the descriptor “make up” to the Complainant’s mark HELIOCARE did not dispel confusing similarity.
7 See, e. g. Research In Motion Limited v. One Star Global LLC,WIPO Case No. D2008-1752.
8 Id.
9 See Research In Motion Limited v. WG/Shanbaz Khan, WIPO Case No. D2008-0165.
10 See Research In Motion Limited v. International Domain Names Inc,/Moniker Privacy Services,WIPO Case No. D2008-0780; RX America, LLC v. Matthew Smith,WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies,WIPO Case No. D2006-0582.
11 See paragraph 2. 1. of the WIPO Overview of WIPO Panel Views.
12 Research In Motion Limited v. BLACKBERRY World, WIPO Case No. D2006-1099.
13 See Research in Motion v. International Domain Names Inc,/Moniker Privacy Services,WIPO Case No. D2008-0780.
14 PepsiCo, Inc. v. LaPorte Holdings, Inc. and Pepsiemployment. com a/k/a Henry Chan,WIPO Case No. D2005-0087.
15 Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
16 Document Technologies v. International Electronic Communications, Inc. ,WIPO Case No. D2000-0270.
17 Although it is not necessary in a UDRP case, the Panel notes that the Complainant’s trademark may be found well-known under factors outlined in the World Intellectual Property Organization’s (WIPO’s) report entitled “Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks” (hereafter “WIPO Report”). At least five factors out of six factors specified in Art. 2 of the WIPO Report speak to the BLACKBERRY mark popularity: 1) the degree of knowledge or recognition of the mark in the relevant sector of the public; 2) the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies; 3) the duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent that they reflect use or recognition of the mark; 4) the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well known by competent authorities; 5) the value associated with the mark.
18 Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. See also, General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation,WIPO Case No. D2000-1568.
19 PepsiCo, Inc. v. LaPorte Holdings, Inc. and Pepsiemployment. com a/k/a Hnery Chan,WIPO Case No. D2005-0087.
20 See, e. g. Research in Motion v. International Domain Names Inc,/Moniker Privacy Services, WIPO Case No. D2008-0780; Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430; Deloitte Touche Tohmastu v. Henry Chan,WIPO Case No. D2003-0584.
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