The Complainant is Research in Motion Limited of Ontario, Canada, represented by Corrs Chambers Westgarth, Australia.
The Respondent is TechWorks Pty Ltd. of Queensland, Australia, represented internally. 2. The Domain Name and Registrar
The disputed domain name is registered with Ziphosting Pty Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2013. On May 30, 2013, the Center transmitted by email to Ziphosting Pty Ltd. a request for registrar verification in connection with the disputed domain name. On June 5, 2013, Ziphosting Pty Ltd. 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 .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2013. The Response was filed with the Center on June 26, 2013.
The Center appointed Michael J. Spence as the sole panelist in this matter on July 10, 2013. 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 operates in the worldwide mobile communications market under the trade mark BLACKBERRY. It has over 400 registered trademarks containing or comprising the word BLACKBERRY and has an annual turnover of over USD 19 billion. The BLACKBERRY trade mark is amongst the most recognised trade marks in the world. The Respondent operates a software development business. It operates a secure site under the disputed domain name which is only available to users providing a user name and password. The disputed domain name was originally intended to be used for the development of a web site that would not have operated in competition with the Complainant’s business. However, the Respondent decided not to proceed with the planned web site, and the disputed domain name currently directs Internet users to a security window that requests a login username and password. The Respondent claims that it operates a development server behind the web site. 5. Parties’ Contentions A. Complainant
The Complainant contends: that the disputed domain name is identical or confusingly similar to its trade mark; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name has been registered or is being used in bad faith. B. Respondent
The Respondent contends: that “blackberry” is a generic word in which the Complainant has no exclusive rights; that it is making bona fide use of the disputed domain name for its development server; and that it has never had any intention of disrupting the Complainant's business and is therefore not using the disputed domain name in bad faith. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name contains the Complainant’s trade mark in its entirety. Given the extremely strong reputation of the Complainant's trade mark, confusion is likely notwithstanding the fact that “blackberry” is a generic word, and that other marks have been registered which contain the word “blackberry”.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name. B. Rights or Legitimate Interests
It is for the Complainant to establish, at least prima facie that the Respondent has no rights or legitimate interests in the disputed domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd. WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Complainant contends that the Respondent is neither using, nor preparing to use, the disputed domain name and that the Respondent has a history of the passive holding of domain names which would again suggest a lack of rights or legitimate interests. The Respondent contends that its use of the disputed domain name for its development server constitutes active use and that, while it legitimately holds some domain names passively, it is not holding the disputed domain name in this way. However, the Respondent has provided no evidence of active use of the disputed domain name beyond the security window to which it first resolves and has no trade mark or other registrations associated with the disputed domain name. The Complainant has been unable to identify any such connection despite extensive searches.
The Panel therefore finds, on balance, that the Complainant has established the second element of paragraph 4(a) of the Policy in relation to the disputed domain name. C. Registered or Subsequently Used in Bad Faith
Given the enormous strength of the Complainant’s reputation in its trade mark, and given that it had been operating in the Australian market for some three years before the first registration of the disputed domain name, it is inconceivable that the Respondent could not have known of the likelihood of confusion in the use of the disputed domain name. In the circumstances, given that the Respondent has provided no evidence of the use of the disputed domain name beyond the security window, the Panel finds it probable that the registration and holding of the name has been passive and for the purpose of transfer for value to the Complainant. Such a purpose is a classic case of bad faith.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy in relation to the disputed domain name. 7. Decision
For all 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.
Michael J. Spence
Sole Panelist
Date: July 24, 2013
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