The Complainant is Research In Motion Limited of Waterloo, Ontario, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is Russel Donato of Makati, Philippines. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2012. On April 10, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2012, the Registrar 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 April 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2012.
The Center appointed George R. F. Souter as the sole panelist in this matter on May 8, 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. 4. Factual Background
The Complainant was founded in 1984 and designs, manufactures and markets wireless communication products, including smartphones. The Complainant has offices in North America, Europe and Asia Pacific and has been listed on the Toronto Stock Exchange since 1997 and the NASDAQ Index since 1999. The Complainant’s Blackberry smartphones are available on over 300 networks in about 130 countries around the world. In the latest fiscal year ending February 26, 2011, the Complainant reported revenue in excess of USD 19 billion. The Complainant has expended hundreds of millions of USD in promotional expenses.
The Complainant has used the mark BLACKBERRY in commerce since 1999 and has provided proof of ownership of numerous trademark registrations concerning the designation BLACKBERRY in many countries, including four trademark registrations in the Philippines.
The Complainant has also provided proof of the worldwide renown of its BLACKBERRY trademark.
The disputed domain name was registered on March 15, 2010. 5. Parties’ Contentions A. Complainant
The Complainant alleges that its BLACKBERRY trademark is famous, and also alleges that the disputed domain name, which incorporates the whole of the Complainant’s BLACKBERRY trademark with the addition of the non-distinctive element “Philippines”, is confusingly similar to its BLACKBERRY trademark. The Complainant has drawn the attention of the Panel to a number of prior UDRP decisions to the effect that the mere addition of a non-distinctive element to a trademark is insufficient to avoid a finding of confusing similarity.
The Complainant submits that the Respondent does not have rights or a legitimate interest in the disputed domain name; in particular, there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name, or that the Respondent is making, or intends to make, a legitimate noncommercial or fair use of the disputed domain name. The Complainant further states that there has never been any relationship between the Complainant and the Respondent, and that the Respondent is not licensed nor is it otherwise authorized, be it directly or indirectly, to register or use the BLACKBERRY trademarks in any manner whatsoever, including in, or as part of, a domain name.
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith, and has drawn the Panel’s attention to the Respondent’s use of the disputed domain name in connection with products sold by the Complainant under its BLACKBERRY trademark, to the Complainant’s detriment. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name of the Respondent be transferred to the Complainant or be cancelled:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark (“mark”) in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel has no hesitation in finding that the Complainant’s BLACKBERRY trademark is well known.
It is well-established in decisions under the UDRP that gTLD indicators (“.com”, “.info”, “.net”, “.org”) are legally irrelevant to the consideration of confusing similarity between a trademark and a domain name. It is also well-established in previous decisions under the UDRP that the mere addition of descriptive elements to a well-known or distinctive mark is not sufficient to avoid a finding of confusing similarity. The Panel agrees with prior panels as referred to above, both in connection with gTLD indicators and in connection with added descriptive elements. In the facts of the present case, the Panel finds that “Philippines” is a non-distinctive element, and would lead to the reasonable supposition by a prospective customer that the disputed domain name represented for example an authorized dealership of the Complainant in that country. Accordingly, the Panel finds that the Complainant has satisfied the test of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Where the respondent has failed to demonstrate rights or legitimate interests in the disputed domain name, it is the predominant view of panels in previous UDRP decisions, with which the present Panel agrees, that a prima facie case advanced by the complainant will be sufficient for a complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy.
In this case, the Respondent did not take advantage of the opportunity presented in these proceedings to advance any justification of a claim to rights or legitimate interests in the disputed domain name, and the Panel can draw the appropriate conclusion under the Policy. The Panel accepts the Complainant’s contentions, namely that the Respondent is deceiving Internet users into believing that it is the authorized dealer of the Complainant for the Phillipines. Accordingly, the Complainant has established a prima facie case under paragraph 4(a)(ii), and the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel is of the view that, in the case of a well-known or distinctive mark, the finding that the Respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that the disputed domain name was registered in bad faith. The disputed domain name falsely suggests that it resolves to a website operated by the Complainant, and there is no disclaimer explicitly stating that the website it not sponsored, affiliated or endorsed by the Complainant. The Panel finds such circumstances in the present case, and, accordingly, finds that the disputed domain name was registered in bad faith.
The proof submitted to the Panel by the Complainant firmly establishes, in the Panel’s view, bad faith use of the disputed domain name in connection with products sold by the Complainant under its well-known BLACKBERRY trademark.
Accordingly, the Panel finds that the Complainant has satisfied the dual test of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
George R. F. Souter
Sole Panelist
Date: May 22, 2012
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