The Complainant is BlackBerry Limited, Canada, represented by Davis Wright Tremaine LLP, United States of America (“United States”).
The Respondent is Trong Thuc Phung Tran, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2020. On April 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 17, 2020, 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 23, 2020 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, 2020. 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 May 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 15, 2020. The Center appointed Marilena Comanescu as the sole panelist in this matter on June 22, 2020. 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 Canadian company operating worldwide in the field of designing, manufacturing and providing IT products and services. The Complainant owns trademark registrations for or including the word BLACKBERRY, such as the United States trademark registration No. 2,672,464 filed on December 28, 1998 and registered on January 7, 2003 for goods in International Class 9. The Complainant’s main website is available at “www.blackberry.com”. The disputed domain name The Complainant contends that the disputed domain name is confusingly similar to its famous BLACKBERRY trademark together with the acronym “RIM” deriving from its original company name, “Research in Motion”, and the generic word “vintage”, the Respondent has no rights or legitimate interests in the disputed domain name, and 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 view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and The Panel will further analyze the potential concurrence of the above circumstances. A. Identical or Confusingly Similar The Complainant holds rights in the BLACKBERRY trademark. Numerous UDRP panels have considered that the addition of other terms (whether geographical, descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name does not avoid a finding of confusing similarity. See section 1.8 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., ”.net”, “.info”, “.com”, “.org”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. Given the above, the Panel finds that the disputed domain name Previous UDRP panels have found that the Complainant’s BLACKBERRY trademark is distinctive and well known worldwide in its industry. See for example BlackBerry Limited v. Domain Administrator, Fundacion, Privacy Services LTD,WIPO Case No. D2019-3152; Research In Motion Limited v. Georges Elias,WIPO Case No. D2009-0218 and cases cited therein. The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization whatsoever to use their mark BLACKBERRY, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services. Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0. The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case. There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name or that the Respondent made a bona fide offering of goods or services or a legitimate noncommercial use under the disputed domain name. In fact, the Respondent registered the disputed domain name incorporating a a third party’s worldwide famous trademark, without any authorization and uses it in connection to malware. Furthermore, the composition of the disputed domain name carries a risk of implied affiliation with the Complainant’s trademark. See section 2.5.1 of the WIPO Overview 3.0. Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Complainant holds trademark rights since at least 1998 and its mark is well known worldwide. The disputed domain name was created in 2019 and incorporates the Complainant’s mark with an additional dictionary term and an acronym that may derive from Complainant’s initial company name, as provided in the Complaint. For the above, the Panel finds that the disputed domain name was registered in bad faith, knowing and targeting the Complainant and its BLACKBERRY trademark. According to the evidence provided in the Complaint, at the time of filing the Complaint, the disputed domain name Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other online 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 [the respondent’s] website or location” is evidence of registration and use in bad faith. The Respondent was using without permission the Complainant’s well-known trademark in order to get traffic on its web portal and to potentially obtain commercial gain from the false impression created for the Internet users with regard to a potential affiliation or connection with the Complainant. Except for maliciously diverting Internet users searching for the Complainant to other websites or malware websites, such action also tarnishes the Complainant’s trademark. Using a domain name similar to a third party trademark for malware distribution is definitely an evidence of bad faith. Section 3.4 of the WIPO Overview 3.0. The Respondent refused to participate in the present proceeding in order to provide arguments in its favor. Having in view the other circumstances of this case, such facts constitute further evidence of bad faith behavior. For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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 Marilena Comanescu
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The disputed domain name
Sole Panelist
Date: July 6, 2020
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