The Complainant is Research In Motion Limited of Waterloo, Ontario, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is Thamer Ahmed Alfarshooti of Makkah, Saudi Arabia. 2. The Domain Names and Registrar
The disputed domain names and are 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 June 4, 2012. On June 5, 2012, 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 names. On June 8, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 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 June 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2012.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on July 5, 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 facts relevant to the findings and decision in this case are that:
1. the Complainant provides wireless solutions aimed at the mobile telecommunications market by reference to the registered trade mark, BLACKBERRY, and its unregistered trade mark, BLACKBERRY 10;
2. the BLACKBERRY trademark is, inter alia, the subject of United States of America Federal Trade Mark Registration No. 2,844,340;
3. the disputed domain names were both registered on March 31, 2010;
4. at the time the Complaint was filed, the disputed domain names were inactive;
5. there has been no commercial or other relationship between the parties and the Complainant has not authorized the Respondent to use the trade marks BLACKBERRY or BLACKBERRY 10 or to register any domain name incorporating those trade marks. 5. Parties’ Contentions A. Complainant
The Complainant asserts trade mark rights in BLACKBERRY and BLACKBERRY 10 and alleges that the disputed domain names are confusingly similar to the trade marks.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant alleges that the Respondent registered and is using the disputed domain names in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact Respondent failed to submit a reply. According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
Having considered the Complaint and the available evidence, the Panel finds the following: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy1. The Panel finds that the Complainant has trade mark rights in BLACKBERRY acquired through registration. The Complainant makes an unsupported claim to common law rights in BLACKBERRY 10 but, for reasons which follow, the Panel in this decision need not make any final determination of that claim and will hereafter limit its use of the word trade mark to the BLACKBERRY mark.
The remaining question is whether the disputed domain names and are confusingly similar to the Complainant’s trade mark. For the purposes of testing confusing similarity, the generic top-level domains “.com” and”.net” can be ignored.2 Subtraction of the integer “10” in the disputed domain names leaves only the Complainant’s trade mark which has been entirely assumed. That addition does nothing in the opinion of the Panel in terms of the overall comparison of the terms to avoid confusion.
The Panel finds the disputed domain names to be confusingly similar to the Complainant’s trade mark.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy with respect to both disputed domain names. B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests3.
Notwithstanding the lack of a Response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The publicly available WhoIs database identifies the registrant as Thamer Ahmed Alfarshooti and so does not support any conclusion that Thamer Ahmed Alfarshooti, the Respondent, might be commonly known by the disputed domain names. There is no evidence that the Respondent has trademark rights in the disputed domain names, registered or not.
There is no use at all of the disputed domain names and accordingly, no indication of their use in connection with a bona fide offering of goods or services.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and that the Respondent in failing to reply has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and so the Complainant has satisfied the second element of the Policy with respect to both disputed domain names. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“i. circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
ii. you have 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 you have engaged in a pattern of such conduct; or
iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the domain name, you have 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.”
The Complainant submits that the Respondent’s actions fall under each of paragraphs 4(b)(ii), (iii) and (iv) above. The submissions premised on paragraphs 4(b)(ii) and (iii) are unmeritorious simply because there is no meaningful evidence of a relevant pattern of abusive conduct, nor of the Respondent being a competitor of the Complainant.
It is nonetheless plain to the Panel that the Respondent’s conduct falls squarely under paragraph 4(b)(iv) of the Policy. The Panel has already found the disputed domain names to be confusingly similar to the Complainant’s trade mark. The Panel finds that the likelihood of confusion as to source is therefore highly likely. Paragraph 4(b)(iv) also requires an intention for commercial gain on the part of the Respondent. That intention can be implied from all the circumstances and in this case Panel finds it more likely than not that the Respondent intended to somehow benefit commercially from its actions. Moreover, although neither disputed domain name is being used, the consensus opinion of UDRP panellists applying this part of the Policy has followed the reasoning in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, which held, broadly, that bad faith registration and use is able to be found, even in the absence of actual use when it is clear that any use of the domain name would inevitably result in confusion.
The Panel finds that the Respondent registered and used the disputed domain names in bad faith and, accordingly, the Complainant has satisfied the third and final limb of the Policy in respect of both disputed domain names. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that both the disputed domain names and be transferred to the Complainant.
Debrett G. Lyons
Sole Panelist
Dated: July 8, 2012
1 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. 705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. 174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
2 See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. 153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
3 See, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828; AOL LLC v. Jordan Gerberg, NAF Claim No. 780200.
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