The Complainant is Research In Motion Limited, Ontario, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is Input Inc, Domain Manager, Mumbai, India. 2. The Domain name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2011. On December 14, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On December 14, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (PrivacyP) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 5, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 9, 2012, additionally naming Input Inc, Domain Manager of Mumbai, India as Respondent.
The Center verified that 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 January 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2012.
The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on February 29, 2012. 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.
The Panel notes that use of privacy services to mask the identity of domain name registrants is becoming common in the recent past and in such cases it is usual for the Center to confirm who the underlying registrant is with the Registrar of the disputed domain name (See Xtraplus Corporation v. Flawless Computers,WIPO Case No. D2007-0070; Mrs. Eva Padberg v. Eurobox Ltd.,WIPO Case No. D2007-1886). The Panel further notes that the Registrar has identified “Input Inc, Domain Manager” as the registrant of the disputed domain name and that “PrivacyP” is simply a privacy name registration service. Accordingly, and considering the amendment filed by the Complainant, the Panel will treat Registrant “Input Inc, Domain Manager” as the correct Respondent, in line with earlier panel decisions such as Xtraplus Corporation v. Flawless Computers,WIPO Case No. D2007-0070; Ecoyoga Ltd v. , Siteleader Hosting, WIPO Case No. D2009-1327; Viacom International Inc. v. Pablo, Palermao / Moniker Privacy Services,WIPO Case No. D2008-1179 and Media West-GMP, Inc. and Gannett Satellite Information Network, Inc. v. Registrant [624819] Services LLC,WIPO Case No. D2007-0169. 4. Factual Background
The Complainant is a leading designer and manufacturer of wireless communication products, including smartphones, accessories and services supplied under the mark BLACKBERRY since 1999. In the last fiscal year which ended on February 26, 2011, the Complainant reported revenues in excess of USD 19 billion. Between 2009 and 2011, the Complainant generated over USD 45 billion in revenues.
The Complainant owns more than 4,000 trademark registrations worldwide containing the element “BLACKBERRY”, among them
- European Community trademarks no. 003180445 BLACKBERRY (word) filed on May 23, 2003, registered on November 9, 2004 and no. 003196763 BLACKBERRY (device) filed on May 23, 2003, registered on October 19, 2004 for goods and services in Classes 9, 38 and 41.
- United States trademark no. 2402763 BLACKBERRY (device) filed on January 25, 1999 and registered on November 7, 2000.
- Canadian trademarks no. TMA554206 BLACKBERRY (device) and TMA554207 (word), both filed on July 19, 1999 and registered on November 21, 2001 and no. TMA555231 (device) filed on July 19, 1999 and registered on December 11, 2001.
The Complainant has spent hundreds of millions of US dollars in promoting the BLACKBERRY mark since 2001. As a result, according to brand evaluations supplied by the Complainant, the BLACKBERRY trademark counted among the most valuable brands in the world.
Further to its selling of the well-known “Blackberry” mobile device, the Complainant also provides information and support services for its “Blackberry”-products at “” and sells the respective products and related accessories through a website at “”.
The disputed domain name was registered on December 5, 2003. The domain name is active and resolves in to a pay-per-click Internet website displaying a list of sponsored Internet links to competitors of the Complainant, among them Motorola, Nokia, LG and Samsung.
The Complainant sent the Respondent a cease and desist letter via email to the address “[…]@privacyp”. The Respondent did not reply. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The Complainant is of the opinion that the disputed domain name is confusingly similar to the BLACKBERRY trademarks in which it enjoys rights.
In this respect, the addition of the generic word “help” and the inclusion of the “.com” generic top-level domain suffix do not dispel the confusion. The disputed domain name evokes the impression that the website is operated or otherwise authorized by the Complainant in offering assistance with “Blackberry” devices.
In similar circumstances, panels have consistently recognized that the addition of a non-distinctive element is not able to diminish the confusion (see Research Motion Limited v. WG/Shabhaz Khan,WIPO Case No. D2008-0165; Research Motion Limited v. Nicholas Stewart, WIPO Case No. D2008-0262; Research Motion Limited v. Blackberry World, WIPO Case No. D2006-1099 and Research Motion Limited v. Domains by Proxy, Inc. and Kafiint, WIPO Case No. D2008-0164.
(2) Further, the Complainant is of the opinion that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
As regards this second element, the Complainant contends that the Respondent is not commonly known under the term “blackberryhelp” and is not licensed or otherwise authorized to register or use the Complainant’s BLACKBERRY mark.
(3) The Complainant finally contends that the disputed domain name was registered and is being used in bad faith.
The Complainant is of the opinion, that the Respondent has registered the disputed domain name solely for commercial gain, in an attempt to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to endorsement or affiliation. The purpose behind the registration of the disputed domain name was to exploit Internet traffic destined to the Complainant by diverting potential customers to a ”pay-per-click” website that displays sponsored links to competitors of the Complainant from which it derives a financial benefit. This use of the domain name enables the Respondent to reap financial benefit and disturb the business of the Complainant. The Respondent need not be a direct competitor of a Complainant, it is sufficient that the use of the disputed domain name provides means for Internet users to access links to businesses that rival the Complainant.
When considering the fame of the BLACKBERRY trademarks throughout the world and the nature of the Respondent’s website, the only reason why the Respondent could have wanted to register and use the disputed domain name was that it had actual knowledge of this mark at the time of registration and wanted to use it to profit from the Complainant’s mark in the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the complainant’s trademark; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In the following, the Panel will discuss in consecutive order whether each of these requirements are met here. A. Identical or Confusingly Similar
The test for identical or confusing similarity under the Policy, paragraph 4(a)(i) is limited in scope to a direct comparison between the Complainant’s mark and the textual string which comprises the disputed domain name. In this case, the Complainant has demonstrated registered trademark rights in the mark BLACKBERRY which predate the registration of the disputed domain name. The disputed domain name consists of the term “blackberryhelp”.
The disputed domain name contains the Complainant’s trademark in its entirety and differs from the trademarks by the addition of the word “help” and the generic top level domain “.com”.
The addition of the top level domain suffix does not dispel confusion. The top level domain of the disputed domain name is to be ignored for the purposes of assessing similarity as it is a functional requirement of the domain name system, which is the common view of panelists and held in earlier cases such as DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694; Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet, Inc.,WIPO Case No. D2001-0252; Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493.
The additional word “help” is an expression commonly used in the world to provide assistance. For this reasons, the Panel concludes that the word “help” is solely descriptive. The use of the added descriptive word does not change the overall impression of the domain name as being dominated by the term “BLACKBERRY” and does not serve to distinguish the disputed domain name from Complainant’s mark (see Microsoft Corporation v. Hassan Pennock, WIPO Case No. D2005-1020; Dell Inc. v. DI_4747995, WIPO Case No. D2007-0803; The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113).
Hence, the disputed domain name is confusingly similarity to the Complainant’s trademark BLACKBERRY. Moreover, the domain name suggests that it resolves to a website operated or otherwise authorized by the Complainant that offers assistance with “Blackberry” devices. Therefore many Internet users would suppose that the domain name refers to a website of or authorized by the Complainant.
In view of the above, the Panel finds that neither the added generic top level domain “.com” nor the added descriptive element “help” are apt to avoid confusion with the Complainant’s trademarks. Therefore, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
It is established case law that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interest in the disputed domain name in order to place the burden of production on the Respondent (see Credit Agricole S.A. v. Dick Weisz,WIPO Case No. D2010-1683; Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that the Respondent has not been commonly known by the disputed domain name and that, according to the Complainant, the Respondent has not acquired trademark or service mark rights. Respondent’s use and registration of the disputed domain name was not authorized by the Complainant.
Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Considering the above, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks any rights and/or legitimate interests in the disputed domain name.
Hence, the burden of production is on the Respondent. In such case, the Respondent must by substantial evidence demonstrate its rights or legitimate interests in the disputed domain name in order to refute the prima facie case. The Respondent has made no such showing.
Hence, the Panel finds that the Respondent’s default in refuting the prima facie case made by the Complainant is sufficient to establish a lack of rights or legitimate interests of the Respondent in the disputed domain. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, a complainant has to establish that a respondent registered and used the disputed domain name in bad faith.
Whether a domain name is used in bad faith for purposes of the Policy may be determined by evaluating five factors set forth in the Policy:
(i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name;
(ii) the registrant has 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 the registrant has engaged in a pattern of such conduct;
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website 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 registrant’s website or location or of a product or service on the registrant’s website or location.
The Complainant has brought considerable evidence that its trademarks are known to a substantial part of consumers due to worldwide and intense use, which has not been contested by the Respondent and is credible due in particular with regard to the international trademark ranking submitted. Thus, the Panel accepts the Complainant's contention that the trademark BLACKBERRY can be considered well known for the purposes of this proceeding and has been before the registration of the disputed domain name so that it is inconceivable that the Respondent did not know of the Complainant’s trademark upon registration of the domain name.
Further, the Complainant has brought forward considerable evidence that the Respondent is using the disputed domain name in order to attract Internet users looking for the Complainant’s website to its own website by creating a likelihood of confusion with the Complainant’s BLACKBERRY mark as to the source, sponsorship, affiliation or endorsement of its website for the purposes of monetary gain. The Respondent’s website is a typical parking website, providing links to the websites of the Complainant’s competitors and generating revenues by means of a “pay-per-view” mechanism. The Panel concludes that the Respondent deliberately registered the disputed domain name with the Complainant’s mark in mind, seeking to derive “pay-per-click” revenue from Internet users looking for the Complainant’s website.
In similar circumstances, panels have consistently recognized that the registration of domain names which are confusingly similar to a complainant’s trademarks, and which are then used to operate “pay-per-click” sites, will be considered to be evidence of bad faith (see Credit Industriel et Commercial S.A. v. Richar J.,WIPO Case No. D2005-0569, Société Air France v. Bing G Glu,WIPO Case No. D2006-0834 and, Société Air France v. WWW Enterprise Inc. (173206),WIPO Case No. D2005-1160).
For all of the above the Panel finds that the disputed domain has been registered and is being used in bad faith in the sense of paragraph 4(b)(iv) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name, be transferred to the Complainant.
Dr. Andrea Jaeger-Lenz
Sole Panelist
Dated: March 13, 2012
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