The Complainant is BlackBerry Limited of Waterloo, Canada, represented by Davis Wright Tremaine LLP, United States of America (“United States”).
The Respondent is Carolina Rodrigues of Santiago, Chile.1 2. The Domain Name and Registrar
The disputed domain name is registered with Internet Domain Service BS Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2016. On April 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 14, 2016, the Registrar 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on April 20, 2016, 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 April 28, 2016.
The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2016.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on May 26, 2016. 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 in this proceeding is BlackBerry Limited, a Canadian corporation, hereinafter referred to as “BlackBerry Limited” or “the Complainant”.
The Complainant has proven to be the owner of the renowned BLACKBERRY mark which enjoys thorough protection through many registrations worldwide.
The Complainant is inter alia the owner of:
Canadian registration no. TMA554207 for the mark BLACKBERRY registered on November 21, 2001;
U.S. registration No. 2,672,464 for the mark BLACKBERRY, registered on January 7, 2003 and claiming first use in commerce on January 19, 1999.
The disputed domain name was registered on March 15, 2005.
The Complainant’s trademark registrations predate the registration of the disputed domain name.
According to the DomainTools domain report provided by the Complainant, the Respondent is publicly offering the disputed domain name for sale for USD 12,500.00.
The disputed domain name sometimes automatically redirects to a website titled variously “SYSTEM ERROR WARNING” or “Attention Required!”, a phishing website apparently used to scare and deceive Internet users into calling a toll-free number (in order to get assistance from an allegedly Microsoft-certified technician), where they are then charged money for purported but unnecessary technical support. 5. Parties’ Contentions A. Complainant
The Complainant claims that the disputed domain name is confusingly similar to the Complainant’s BLACKBERRY registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:
(i) The disputed 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 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 Complainant has established rights in the BLACKBERRY trademark.
The disputed domain name consists of the mark BLACKBERRY, with the letter “Y” omitted and with the addition of the generic Top Level Domain “.com”.
The omission in the disputed domain name of the letter “Y” is not enough to avoid the confusing similarity with the renowned BLACKBERRY trademark.
This Panel agrees with the Complainant’s assertion that this is indeed a classic case of “typosquatting”.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the trademark BLACKBERRY in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
This Panel finds that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services for the reasons described in section 6.C below. In addition, the Respondent does not appear to be commonly known by the name “Black Berr” or by a similar name. Moreover, the Respondent has not replied to the Complainant’s contentions, alleging any rights or legitimate interests in the disputed domain name.
Finally, this Panel agrees with the previous panel’s finding in Calvin Klein Trademark Trust and Calvin Klein Inc. v. Wang Yanchao,WIPO Case No. D2014-1413, that “the Complainant and its CALVIN KLEIN marks enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in connection with men’s and women’s apparel, fragrances, accessories, and footwear products and is a registered trademark in many countries all over the world. Consequently, in the absence of contrary evidence from the Respondent, the CALVIN KLEIN marks [are] not one[s] that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant”.
The same concept applies to the present case: the BLACKBERRY mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that:
Registration of a domain name incorporating another’s famous mark does not in most cases confer any rights or legitimate interests in the domain name, but rather constitutes bad faith under paragraph 4(b) of the Policy;
The Respondent’s typosquatting constitutes both use and registration of a domain name in bad faith;
The Respondent’s public offer of the disputed domain name for sale for USD 12,500.00 further establishes that the disputed domain name was registered and used in bad faith;
The Respondent’s use of the disputed domain name in connection with a phishing website is evidence of registration and use in bad faith of the disputed domain name; and
The Respondent, Carolina Rodrigues, whose email address identifies her with FCS Holdings Corp., has been found to have registered domain names in bad faith in several previous proceedings under the Policy, and this pattern of conduct is further evidence of registration and use in bad faith of the disputed domain name.
Accordingly, the Panel finds on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.
Therefore, the Complainant has satisfied 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.
Fabrizio Bedarida
Sole Panelist
Date: June 9, 2016
1 The Panel has chosen not to name the privacy service employed by the Respondent as a party to this proceeding.
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