The Complainant is BlackBerry Limited, Canada, represented by Davis Wright Tremaine LLP, United States of America (“United States”).
The Respondent is Contact GoD, LLC Customer 2272690062, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 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, 2019. On April 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 5, 2019, 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 8, 2019 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 14, 2019. In response to a request for clarification made by the Center, the Complainant filed a second amended Complaint on April 22, 2019. In response to a request for clarification made by the Center, the Complainant filed a third amended Complaint on April 30, 2019.
The Center verified that the Complaint together with the amended Complaints 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 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2019.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on May 29, 2019. 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 BlackBerry Limited is a designer, manufacturer and marketer of innovative computer software solutions and telecommunications-related products and services. The Complainant is the owner of an instant messenger and videotelephony application, distributed and sold under the trademark BBM, formerly known as BlackBerry Messenger. The Complainant has used the BBM trademark since 2013.
Moreover, the Complainant owns numerous trademark registrations for the term “bbm”. Among others, the Complainant is the owner of the following trademarks registrations.
- United States Trademark BBM, Registration No. 4459339, registered on December 31, 2013;
- United States Trademark BBM, Registration No. 4468494, registered on January 21, 2014; and
- Canada Trademark BBM, Registration No. TMA887586, registered on October 7, 2014.
The Disputed Domain Name was registered on June 7, 2018.
The Disputed Domain Name is currently inactive. However, the Complainant filed evidence that the Disputed Domain Name resolved to parking pages which contains a number of sponsored links and advertisements, including links to competitor products. 5. Parties’ Contentions A. Complainant
- Identical or confusingly similar
The Complainant states that the Disputed Domain Name is confusingly similar to the Complainant’s BBM trademark. The Disputed Domain Name expressly incorporates the BBM trademark and combines it with the generic term “messaging”, which clearly suggests a connection with the Complainant’s BBM messenger application. Moreover, such addition does not diminish the confusing similarity between the Disputed Domain Name and the Complainant’s trademark.
- Rights or legitimate interests
The Complainant states that the Respondent cannot demonstrate any legitimate interest in the Disputed Domain Name.
In addition, the Complainant argues that the Respondent had knowledge of the Complainant’s trademark when it registered the Disputed Domain Name.
Finally, the Complainant submits that there is no relationship between the Complainant and the Respondent that would give rise to any license, permission, or authorization by which the Respondent could own or use the Disputed Domain Name. Furthermore, the Respondent is not commonly known by the Disputed Domain Name and is not making a legitimate noncommercial or fair use of the Complainant’s trademark.
Moreover, the Respondent is not known by the Disputed Domain Name.
- Registration and use in bad faith
The Complainant contends that the Respondent registered and is using the Disputed Domain Name in bad faith.
The Complainant further states that the Respondent registration of the Disputed Domain Name constitutes cybersquatting.
In addition, the Respondent is using the Disputed Domain Name to intentionally attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s BBM trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name in this case:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 demonstrated that it has trademarks rights over the term BBM.
Based on the evidence submitted, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s BBM trademark. The Complainant’s trademark is clearly recognizable within the Disputed Domain Name.
Furthermore, the Disputed Domain Name contains the Complainant’s BBM trademark in its entirety. The addition of the term “messaging” does not alter the finding of confusing similarity. Moreover, the addition of the generic Top-Level Domain (“gTLD”) “.com” does not change this finding, since the TLD is generally disregarded in such an assessment of confusing similarity.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
“(i) before any notice to you of the dispute, your use of, 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 at issue.”
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademarks. The Complainant has prior rights in the trademarks which precede the Respondent’s registration of the Disputed Domain Name.
The Respondent has failed to show that it has acquired any trademark rights with respect of the Disputed Domain Name or that the Disputed Domain Name is being used in connection with a bona fide offering of goods and services.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Disputed Domain Name was registered on June 7, 2018, while the Complainant’s BBM Trademark Registration No. 4459339 was granted on December 31, 2013.
In light of this, the Respondent had evidently knowledge of the Complainant’s trademarks when she registered the Disputed Domain Name. The addition to the Disputed Domain Name of the term “messaging” to the trademark BBM is further evidence of bad faith since the term is related to the Complainant’s business.
The Panel is of the view that the Respondent has created a website to attract Internet users, most likely for commercial gain, by creating a likelihood of confusion with the BBM trademark, since users navigating to the Disputed Domain Name were redirected to random third party and competing websites. Thereby, the Disputed Domain Name was being used to direct web traffic with the intention to generate profit for the Respondent by the use of advertising links, disrupting the Complainant’s business. As such, the Disputed Domain Name is being used in bad faith.
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and used the Disputed Domain Name in bad faith. 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.
Pablo A. Palazzi
Sole Panelist
Date: June 11, 2019
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