The Complainant is QNX Software Systems Limited of Kanata, Ontario, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is Jing Rung of Lona Solomon Islands. 2. The Domain Name and Registrar
The disputed domain name (the “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 August 8, 2012. On August 9, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 13, 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 August 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2012.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on October 2, 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 is a worldwide leading vendor of operating systems middleware, development tools, and professional services for the embedded systems market founded in 1980. Its products are distributed in over 100 countries worldwide. The Complainant’s award-winning software technology is used across a variety of industries and applications including in the field of telecommunications. In 2010, the Complainant was acquired by Research In Motion Limited (RIM), a leader in the field of mobile communications and developer of the BLACKBERRY Smartphones and tablets. The Complainant continues to operate as a subsidiary of RIM and designs software for certain RIM devices.
The Complainant has registered a number of QNX marks worldwide, including in Canada, the E.U., the United States of America (the U.S.A) and China and so on, inter alia, Canadian Trademark Registration No. TMA666116 registered on June 14, 2006, and E.U. Trademark Registration No. 217307 registered as early as on November 2, 1999. The registration of the trademarks predates that of the Domain Name.
The Domain Name was registered on August 18, 2011. The Respondent was using the Domain Name to host a website (the “Website”) that appears to be structured as a blog and features the banner “QNX PHONE”. The Website features various entries related to the field of telecommunications, including stories of the Complainant and its direct competitors. The Website also actively solicits advertisers. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar with the QNX trademarks in which the Complainant has rights and continues to have such rights. The Respondent cannot avoid confusion as it has misappropriated the entirety of the well-known QNX trademark. Confusion is further enhanced by the addition of the term “phone” as the Domain Name suggests that it resolves to a website operated by, or otherwise affiliated with the Complainant.
The Complainant further contends that the Respondent has no rights or legitimate interest in the Domain Name. There is no evidence to suggest 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. The Respondent is not licensed or authorized directly or indirectly to register or use the QNX trademark in any manner. The Respondent attempts to reap a commercial benefit by piggybacking on the very valuable goodwill associated with the QNX trademarks, which undermines a claim of legitimate interest.
The Complainant finally contends that the Domain Name was registered and is being used in bad faith. The Respondent registered the Domain Name for the purpose of disrupting the business of the Complainant and intentionally attempting to attract, for commercial gain, Internet users to the Website by creating a likelihood of confusion with the QNX trademarks as to source, sponsorship, affiliation or endorsement. The Respondent had actual knowledge of the QNX trademarks at the time of registration of the Domain Name, which supports a finding of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed in a complaint, a complainant must, in accordance with paragraph 4(a) of the Policy, satisfy the UDRP panel of the following three elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; 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.
Based on the evidences presented by the Complainant and the relevant provisions of the Policy, the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainant has introduced evidence demonstrating its established rights in the word mark QNX. The Complainant’s mark QNX is protected as a trademark and the Complainant holds registrations for the QNX mark worldwide, including in Canada, the E.U., the U.S.A., China and so on. Although some of the Complainant’s trademark registrations are of the letters QNX in stylized form, others are of the letters alone as a word mark, inter alia, Canadian Trademark Registration No. TMA666116 registered on June 14, 2006, and E.U. Trademark Registration No. 217307 registered as early as on November 2, 1999. The registration of the QNX trademarks predates that of the Domain Name. Previous UDRP decisions have also established the Complainant’s rights in the QNX mark. See QNX Software Systems Ltd. v. Future Media Architects, Inc. and Thunayan K AL-Ghanim,WIPO Case No. D2003-0921.
The Domain Name consists of two terms, “qnx”, identical to the Complainant’s QNX word mark, and a generic word “phone”, these two terms are connected by a hyphen. The Panel views the word “qnx” as the most prominent part of the Domain Name. The fact that the Domain Name incorporates entirety of the Complainant’s trademark QNX, according to previous UDRP decisions, is sufficient to establish confusing similarity for the purposes of the Policy. See Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin,WIPO Case No. D2003-0888. The addition of the generic term “phone” does not dispel confusion but strengthens it to the contrary as it exactly suggests the product manufactured by RIM, parent company of the Complainant. Besides, the hyphen used to connect two terms “qnx” and “phone” also fails prevent confusing similarity between the Domain Name and the Complainant’s QNX mark.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy and the Domain Name is confusingly similar to the Complainant’s QNX trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services;
(ii) the fact that the respondent has been commonly known by the domain name; or
(iii) 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 Panel notes that there is no indication whatsoever that the Respondent is commonly known by the Domain Name and/or is using the Domain Name in connection with a bona fide offering of goods or services. The Complainant has shown that the Domain Name is used by the Respondent to direct Internet users to a website structured as a blog which falsely suggests that the Respondent is somehow affiliated or otherwise connected to the Complainant; however, as contended by the Complainant, the Respondent is not affiliated or related to the Complainant, nor is the Respondent licensed or authorized to use the QNX mark in any manner. The Panel therefore concludes that the Respondent’s act precludes it from a bona fide offering of goods or services.
The Complainant has also produced evidence showing that the Respondent is inviting the Website users to place advertisement on it. On the evidence before the Panel, the Respondent does not appear to make any legitimate noncommercial or fair use of the Domain Name. The Panel is satisfied that the Complainant has made a prima facie showing of the Respondent's lack of rights or legitimate interests in the Domain Name. The burden of production therefore shifts to the Respondent to demonstrate its rights or legitimate interests. See among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683.
The Respondent was entitled to justify its choice of the word “qnx” in the Domain Name; however, he defaulted and has not provided any evidence in his own favor.
For all of the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the following circumstances which, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent's website or location or of a product or service on its website or location.
The Panel holds that the circumstances referred to in paragraph 4(b)(iv) of the Policy is applicable to the present case and upon the evidence presented to the Panel, it is adequate to conclude that the Respondent has registered and used the Domain Name in bad faith. The Panel finds that the Respondent is disrupting the business of the Complainant.
Given the worldwide registration of the QNX trademark, it’s inconceivable that the Respondent had no actual notice of the QNX mark while registering the Domain Name noting that the Website features stories regarding the Complainant and its parent company. Consequently, it is pertinent for the Respondent to provide an explanation of its choice of domain name, failing which the Panel draws the conclusion that the Domain Name was registered in bad faith with intent to create an impression of an association with the Complainant and its QNX trademark.
The Panel notes that the Website with a remarkable banner of “QNX PHONE” is structured as a blog and provides information services in the field of telecommunications, where stories of the Complainant’s competitors as well as those of the Complainant and its parent company are displayed. Furthermore, the Respondent also solicits users to place advertisements on the Website. By doing so, potential consumers of the Complainant are possibly diverted to the Website, confused into believing that the Website is somehow affiliated with or sponsored by the Complainant, which is not the case, and business of the Complainant is consequently disrupted while the Respondent attempts to make commercial gain out of use of the Domain Name.
In the absence of evidence to the contrary and rebuttal from the Respondent, the Panel believes that the Complainant has produced evidence of bad faith registration and use of the Domain Name by the Respondent.
Furthermore, incorporation of entirety of the QNX mark in the Domain Name without any reasonable justification is further evidence of bad faith by the Respondent. See LEGO Juris A/S v. Reiner Stotte,WIPO Case No. D2010-0494; and Caixa D’Estalvis i Pensions de Barcelona (“La Caixa”) v. Eric Adam,WIPO Case No. D2006-0464.
In light of the above facts and reasons, the Panel therefore determines that the Domain Name was registered and is being used in bad faith pursuant to paragragh 4(a)(iii) 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 Domain Name be transferred to the Complainant.
Jacob (Changjie) Chen
Sole Panelist
Dated: October 23, 2012
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