The Complainant is BlackBerry Limited of Waterloo, Canada, represented by Davis Wright Tremaine LLP, United States of America.
The Respondent is Computer Ezy Pty Ltd. of Chermside, Australia, internally represented. 2. The Domain Name and Registrar
The disputed domain name ("the Domain Name") is registered with Enetica. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 6, 2015. On August 6, 2015, the Center transmitted by email to Enetica a request for registrar verification in connection with the Domain Name. On August 11, 2015, Enetica 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 proceeding commenced on August 17, 2015. On August 25 and 28, 2015, the Respondent sent emails to the Center requesting an extension of the Response due date. In light of the Respondent's request, the Complainant was requested to comment. The Complainant did not submit its comments and the Center extended the Response due date to September 16, 2015. The Response was filed with the Center on September 15, 2015.
The Center appointed Nicholas Smith as the sole panelist in this matter on September 30, 2015. 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.
On October 2, 2015, the Panel issued the following Panel Order:
"Under the Rules for .au Domain Name Dispute Resolution Policy (the 'Rules'), the Panel may, at its sole discretion request, in addition to the complaint and the response, further statements or documents from either of the Parties.
The Panel notes that:
1) The Response as filed in this matter makes the following statements:
"The domain name in question has been used with the complainants' authority. We were advised of exactly how and where to put information that was in accordance with the Trademarks and company policy. We also spent a large amount of money meeting their requirements and have adhered to them ever since. We have used this domain name for eight years with the consent and knowledge of the complainant. The complainant's legal team advised us of all conditions that we had to make. We met all conditions..."
However the Response does not provide any documents that support the statements including correspondence with the Complainant (other than recent correspondence with Travis Bell) that would show that the Complainant was aware of the disputed domain name and/or specifically advised the Respondent that it was allowed to register and use the disputed domain name under certain conditions.
2) The Response as filed in this matter also contains the following statements:
'C. Consent to remedy (optional)
[7]. The Respondent consents to the remedy requested by the Complainant and agrees to the disputed domain name(s).'
It is unclear to the Panel whether the Respondent is consenting to the transfer of the disputed domain name to the Complainant. Given the content of the rest of the Response, this appears not to be the case however there is confusion.
Therefore the Panel makes the following orders:
The Respondent has until October 8, 2015 to file any additional evidence that it sees fit to support the statement made at 1) above including copies of any communication it has had with the Complainant in respect of the domain name the subject of the proceeding. The additional evidence should be served on the Complainant using the email addresses […].
The Respondent has until October 8, 2015 to confirm with the Center that it does not consent to the transfer of the disputed domain name to the Complainant.
The Complainant shall have an opportunity to provide any submission or any evidence in reply they may choose to make regarding the Respondent's additional evidence in response to this Panel Order, by October 14, 2015.
Any submissions or amended documents should be submitted to the WIPO Arbitration and Mediation Center by email to […] for forwarding to the Panel.
The Panel will deliver its decision on or before October 20, 2015."
The Respondent did not provide the Center with any additional submission. On October 8, 2015, the Complainant provided a further supplemental filing to the Center.
On October 15, 2015, it came to the Panel's attention that, due to an administrative oversight, the first Panel Order was not copied to the Respondent's email address. On October 16, 2015, the Panel issued a second Panel Order:
"Under the Rules for .au Domain Name Dispute Resolution Policy (the 'Rules'), the Panel may, at its sole discretion request, in addition to the complaint and the response, further statements or documents from either of the Parties.
On October 2, 2015 the Panel issued the Administrative Panel Order No. 1. However, the Panel notes that due to an administrative oversight, it appears that the email notification of such Panel Order was not copied to the Respondent's email address '[…]'. The Complainant filed a further supplemental submission ('Complainant's Supplemental Submission') on October 8, 2015.
In light of the above, and to err on the side of caution, the Center is directed to notify the Parties of the present Panel Procedural Order.
The Panel notes that:
1) The Response as filed in this matter makes the following statements:
'The domain name in question has been used with the complainant's authority. We were advised of exactly how and where to put information that was in accordance with the Trademarks and company policy. We also spent a large amount of money meeting their requirements and have adhered to them ever since. We have used this domain name for eight years with the consent and knowledge of the complainant. The complainant's legal team advised us of all conditions that we had to make. We met all conditions...'
However the Response does not provide any documents that support the statements including correspondence with the Complainant (other than recent correspondence with Travis Bell) that would show that the Complainant was aware of the disputed domain name and/or specifically advised the Respondent that it was allowed to register and use the disputed domain name under certain conditions.
2) The Response as filed in this matter also contains the following statements:
'C. Consent to remedy (optional)
[7]. The Respondent consents to the remedy requested by the Complainant and agrees to the disputed domain name(s).'
It is unclear to the Panel whether the Respondent is consenting to the transfer of the disputed domain name to the Complainant. Given the content of the rest of the Response, this appears not to be the case however there is confusion.
Therefore the Panel makes the following orders:
The Respondent has until October 22, 2015 to file any additional evidence that it sees fit to support the statement made at 1) above including copies of any communication it has had with the Complainant in respect of the domain name the subject of the proceeding and to file any further evidence or submissions in response to the Complainant's Supplemental Submission. The additional evidence should be served on the Complainant using the email address […].
The Respondent has until October 22, 2015 to confirm with the Center that it does not consent to the transfer of the disputed domain name to the Complainant.
The Complainant shall have an opportunity to provide any submission or any evidence in reply they may choose to make regarding the Respondent's additional evidence or submissions in response to this Panel Order, by October 28, 2015.
Any submissions or amended documents should be submitted to the WIPO Arbitration and Mediation Center by email to […] for forwarding to the Panel.
The Panel will deliver its decision on or before November 3, 2015."
On October 16, 2016, following the receipt of the Procedural Order, the Respondent emailed the Center, stating:
"Thank you for the information.
I am waiting to hear back to see if we can also add supplemental information."
The Center replied the same day confirming that October 22, 2015 was the deadline to file any further evidence or submissions in response to the Complainant's Supplemental Submission.
The Respondent did not provide the Center with any additional submission. On October 27, 2015, the Respondent emailed the Center and stated that "Our server went down and we lost our data that we intended to send". This email did not provide any proof of server issues nor did it request any further accomodation. As such the Panel will decide the case on the record before it, being the Complaint, the Response and the Complainant's Supplemental Submission. 4. Factual Background
The Complainant is a designer, manufacturer and marketer of mobile communications devices, best known for its wireless BlackBerry handheld device line.
The Complainant holds numerous Australian trade mark registrations for the word mark BLACKBERRY (the "BLACKBERRY Mark") the earliest mark being trade mark 801194 which has been registered from July 22, 1999 for use with telecommunications apparatus, equipment and software; electronic handheld units for the wireless reception and/or transmission of data that enable the user to keep track of or manage personal information; software for the redirection of messages, global computer network email, and/or other data to one or more electronic handheld units from a data store on or associated with a personal computer or a server; and software for the synchronization of data between a remote station or unit and a fixed or remote station or unit and (in class 38) with email service; wireless data messaging services, particularly services that enable a user to send and/or receive messages through a wireless data network; one-way and two-way paging services. The Complainant also operates a website at "".
The Domain Name was created on April 5, 2007. At the time of the Complaint the Domain Name redirected to a website operated by the Respondent, with the title "BlackBerrys | BlackBerry Phone Accessories and Cases Australia" and prominently bearing the name "blackberrystore" (the "Respondent's Website"). The Respondent's Website sells the Complainant's BlackBerry products and accessories for the Complainant's Blackberry products. The Respondent's Website includes in small gray print at the very bottom of the site the notice: "BlackBerry, SureType and related trademarks are owned by Research In Motion Limited and are registered in the United States and may be pending or registered in other countries. Neither Smartphone Protection Pty Ltd nor its repair, training or other services are endorsed, sponsored, affiliated with or otherwise authorized by Research In Motion Limited." 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant's BLACKBERRY Mark;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the BLACKBERRY Mark having trade mark registrations for BLACKBERRY in Australia and around the world.
The Domain Name is confusingly similar to the BLACKBERRY Mark since it contains that mark in its entirety and adds the generic, descriptive word "store" and the country code Top-Level Domain suffix ".". The addition of the generic, descriptive word "store" does not diminish and in fact only strengthens the confusing similarity between the Domain Name and the BLACKBERRY Mark. See L'Oreal / L'Oreal Australia Pty v. Namewise Pty Ltd. / Nicholas Bolton,WIPO Case No. DAU2013-0009.
The Respondent has no rights or legitimate interests in the Domain Name. There exists 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 Domain Name that incorporates the Complainant's BLACKBERRY Mark. The Respondent is not commonly known by the Domain Name and is not making a legitimate noncommercial or fair use of the Complainant's BLACKBERRY Mark. Where, as here, the Complainant's Blackberry Mark and name are so well-known and so widely recognized, there can be no legitimate use by the Respondent. See e.g., PRL USA Holdings, Inc. v. Philip Chang,WIPO Case No. D2006-0093. Finally, the BlackBerry Master Alliance Agreement, signed by the representative of the Respondent, specifically prohibits the use of the BLACKBERRY Mark for domain names without the written authority of the Complainant. No such authority was ever provided.
The Respondent had knowledge of the Complainant's BLACKBERRY Mark when it registered the Domain Name, and the Respondent's choice in registering the name "cannot be explained but as a misappropriation of the Complainant's trademarks". PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189. As established above, the Respondent sells the Complainant's products and related accessories and has misappropriated the Complainant's BLACKBERRY Mark into the Domain Name to promote its e-commerce services.
The Respondent's attempt at a disclaimer is not effective at "negating or diminishing the misleading effect" of the Respondent's use of the BLACKBERRY Mark because it "is printed in faint grey type and is at the bottom of the home page and appears to the viewer only after the links on the site have been presented". Sensis Pty Ltd., Research Resources Pty Ltd. v. Kevin Goodall,WIPO Case No. D2006-0793.
The Domain Name was registered and is being used in bad faith. The Respondent registered the Domain Name with the awareness of the Complainant and with the intention of provoking confusion with the Complainant's BLACKBERRY Mark in order to attract, for commercial gain, Internet users to its website. B. Respondent
The Respondent claims that it has always used the Domain Name with the Complainant's permission or authority and in line with the Complainant's company policy. The Respondent has used the Domain Name for eight years to sell the Complainant's BlackBerry products and accessories and has never sold anything other than genuine products. The Respondent has gone to extensive lengths to develop the Respondent's website and it is only a recent change in policy that has led to the present action from the Complainant.
The Respondent has not registered or used the Domain Name in bad faith. The Complainant and the Respondent are not competitors and the Domain Name was not registered to disrupt the Complainant's business, indeed the Respondent has spent extensive time and money promoting the Complainant's business. 6. Discussion and Findings A. Consent to Transfer
The Response, while asserting the Respondent has a right to retain ownership of the Domain Name also includes the following statement:
"C. Consent to remedy (optional)
[7]. The Respondent consents to the remedy requested by the Complainant and agrees to the disputed domain name(s)."
It is unclear to the Panel however, given the content of the rest of the Response, whether the Respondent is in fact consenting to the transfer of the Domain Name to the Complainant or whether it somehow "agreed" with its own intent in the Domain Name. The Panel, through the two Panel Orders issued, sought confirmation from the Respondent that it did not consent to the transfer of the Domain Name to the Complainant. No confirmation was received, although, by email on October 27, 2015, the Respondent indicated that it had intended to send further information in a reply.
The auDA Overview of Panel Views on Selected auDRP Questions First Edition ("auDRP Overview 1.0") paragraph 4.13, in response to the question "Can a panel decide a case under the auDRP based on a respondent's consent to transfer" states:
"The general position is the same as that under the UDRP.
Where a respondent has stated, either in its response or some other communication to the panel, that it consents to a transfer of a domain name, auDRP panels have given effect to this by ordering transfer without consideration of whether the paragraph 4(a) requirements of the Policy are satisfied. For this to occur, the respondent's consent to transfer must be genuine, unconditional and unilateral. Where the consent to transfer is conditional – e.g., in return for payment of a fee – panels generally proceed to consider the merits of the complaint."
In the present case, while the Respondent has failed to provide confirmation that it does not wish the Domain Name be transferred, it has also failed to provide, in the Panel's view "genuine, unconditional and unilateral" consent to transfer. As such there is no basis to order the transfer of the Domain Name based on the consent of the Respondent. B. Supplemental Filing
Following the filing of the Response, the Complainant sent an additional communication to the Center. While such a communication was anticipated by the Panel Orders, the Panel Orders were limited to "any submission or any evidence in reply they may choose to make regarding the Respondent's additional evidence in response to this Panel Order". As the Respondent chose not to respond to the Panel Orders, the Panel Orders provided no basis for the Complainant to make a supplemental filing.
Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings. Paragraph 10(d) states: "The Panel shall determine the admissibility, relevance, materiality and weight of the evidence". Paragraph 12 states: "In addition to the complaint and the response, the Panel may request or permit, in its sole discretion, further statements or documents from either of the Parties."
The principles which the Panel should apply in deciding whether or not to admit supplemental filings have been considered in many cases under both the Policy and the Uniform Domain Name Dispute Policy ("UDRP"). See, e.g., The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447. The principles include: that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known of the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
The Panel has decided to allow the Complainant's supplemental filing as it relates to matters both contemplated in the Panel Orders and raised in the original Response that the Complainant could not reasonably have known of the existence when it made its primary submission, namely the Respondent's claim to being authorized to register the Domain Name. C. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the owner of the BLACKBERRY Mark, having registrations for the BLACKBERRY Mark as a trade mark in Australia.
UDRP panels, which operate on a similar test to the Policy have repeatedly held that the addition of a generic word to a recognized mark creates a confusing similarity between the domain name and the mark of the complainant. See Bank of Nova Scotia v. Whois Protection,WIPO Case No. D2007-0884; Valero Energy Corporation, Valero Marketing and Supply Company v. Domain Name Proxy, LLC, Navigation Catalyst Systems, Inc.,WIPO Case No. D2011-1227.
The Domain Name consists of the BLACKBERRY Mark and the generic word "store". Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. D. Rights or Legitimate Interests
To succeed on this element, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, is to be taken to demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) you (as an individual, business, or other organisation) 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 non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue."
The Respondent claims rights or legitimate interests on two grounds, the first being that it has been authorized by the Complainant to register or use the Domain Name and hence has rights or legitimate interests in the Domain Name. Alternatively the Respondent has used the Domain Name for 7 years for a bona fide fair use being the retail of authentic BlackBerry products.
With respect to the first ground, the Respondent, despite a request by the Panel for further evidence, has been unable to produce any documentation that explicitly establishes that it had been authorized by the Complainant to register the Domain Name.
With respect to the second ground a relevant factor is that the Respondent has since 2008 been party to an agreement with the Complainant that specifically prohibits the unauthorized use of the Complainant's Marks in domain names. Any use that even a reseller may inevitably make of a trade mark does not necessarily extend to the right to incorporate that trademark into a domain name without authorization (Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy,WIPO Case No. D2003-0793: "[...] a reseller does not have the right to incorporate the trade mark of the resold goods into the domain name of the reseller". AVENTIS Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA,WIPO Case No. D2002-0290: "While the selling of goods which originate from the Complainant might entitle the Respondent to use a mark associated with the goods in connection with their sale, this does not [necessarily] give it the right to register and use the mark as a domain name without the consent of the holders of the trademarks").
The Panel notes the goods sold (or resold) on the Respondent's Website appear to be the Complainant's genuine branded goods (in the sense that they do not appear to be counterfeits). This potentially indicates that the Respondent may have rights or legitimate interests in the Domain Name, provided that the Respondent is able to prove that he is a reseller or distributer of the Complainant's trademarked products only, and that he meets certain other requirements such as adequately disclosing his relationship with the trademark owner (See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; see also auDRP Overview 1.0 paragraph 2.3, in which the Oki Data case is cited as representative of the majority view of auDRP panelists).
In the present case there is no evidence of the Complainant having given its permission for the (rather prominent) use of its trademark on the Respondent's Website. Even if there were, the Respondent's Website does not appear to describe the relationship (or lack thereof) with the Complainant in any prominent way. The Panel notes the cases referred to by the Complainant being Sensis Pty Ltd. v. Goodall, supra and Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Telephone Island,WIPO Case No. D2004-0711, which suggest that a disclaimer in faint grey type at the bottom of the page is not effective because it is below the place where a customer would click to order the Respondent's products and is not perceptible immediately by the public. Of particular additional relevant evidence, the Respondent's Website also contains a link at the bottom of the page to a website that provides non-Blackberry products, being a link stating "iPhone and iPad Accessories, Samsung Accessories".
The effect of the factors set out above, along with the fact that the Complainant has indicated that it is not connected to the Respondent, has convinced the Panel that the Respondent has obtained no permission to use the BLACKBERRY Mark in the Domain Name, and that even if it had it would still fail to meet all of the requisite criteria set out in the Oki Data case, and therefore has no rights or legitimate interests in the Domain Name. E. Registered or Subsequently Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 web site or location or of a product or service on Respondent's web site or location.
The Panel notes that the Policy only requires that a complainant show that a respondent registered or subsequently used the domain name at issue in bad faith.
The Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the BLACKBERRY Mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent's Website consists of a website purporting to offer the Complainant's products using the Complainant's trade marks in breach of its agreement with the Complainant that specifically prohibits the unauthorized use of the Complainant's Marks in domain names. Consumers interested in purchasing the Complainant's BlackBerry Products may visit the Respondent's site and be confused into thinking that the Respondent's is somehow connected to the Complainant; or purchase the Respondent's products on the belief that they are purchasing the products on a site that has been authorised by the Complainant.
It is therefore highly likely that the Respondent receives revenue from Internet users who happen to come across the Respondent's Website by means of confusion with the BLACKBERRY Mark. The Panel finds that the Respondent's use amounts to use in bad faith under paragraph 4(a)(iii) of the Policy. F. Complainant's Eligibility
The Complainant has requested transfer of the Domain Name. Given that the Complainant owns an Australian registered trademark that appears to be closely and substantially connected to the Domain Name, in that the Domain Name reproduces the BLACKBERRY Mark in its entirety, the Complainant appears to satisfy the eligibility requirements for registration of the 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 domain name be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: November 11, 2015
Full & Egal Universal Law Academy