The Complainant is Research In Motion Limited of Waterloo, Ontario, Canada, represented by Gowling Lafleur Henderson LLP, Canada.
The Respondent is Protected Domain Services, Customer ID: NCR-2554813 of Denver, Colorado, United States of America (U.S.A.) / Aldhwaihi, Saleh Abdulaziz S, Saleh Al Dhwaihi of Al Khobar, Eastern, Saudi Arabia. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2012. On June 4, 2012, the Center transmitted by email to N LLC a request for registrar verification in connection with the disputed domain name. On June 4, 2012 N LLC 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 June 12, 2012 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 June 15, 2012.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2012.
On June 20, 2012, N LLC transmitted to the Center an Informative Filing.
The Center appointed James Bridgeman as the sole panelist in this matter on July 12, 2012. 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
Facts
The Complainant is the owner of the BLACKBERRY trademark and has become a worldwide leader in the field of mobile communications. The Complainant is the owner of a substantial portfolio of trademark registrations and applications worldwide for the BLACKBERRY trademark or incorporating the BLACKBERRY trademark and has furnished details of the following registrations in an annex to the Complaint:
Trademark Reg. No. Country/Territory
BLACKBERRY
2844340
U.S.A.
BLACKBERRY
2672464
U.S.A.
BLACKBERRY
2700671
U.S.A.
BLACKBERRY
3715716
U.S.A.
BLACKBERRY & Design
3715717
U.S.A.
BLACKBERRY & Design
3836417
U.S.A.
BLACKBERRY & Design
3102687
U.S.A.
BLACKBERRY & BBBB Design
TMA659954
Canada
BLACKBERRY CONNECTION
TMA624894
Canada
BLACKBERRY
TMA638068
Canada
BLACKBERRY & BBBB Design
TMA659946
Canada
BLACKBERRY
TMA554207
Canada
BLACKBERRY & COLOUR Design
TMA554206
Canada
BLACKBERRY & Design
TMA555231
Canada
BLACKBERRY & Design
1248251
CTM
BLACKBERRY & Design
1248293
CTM
BLACKBERRY
1248335
CTM
BLACKBERRY
3180445
CTM
BLACKBERRY & Design
3196763
CTM
BLACKBERRY CONNECTION
3397163
CTM
BLACKBERRY & Design
3937281
CTM
BLACKBERRY & Design
3937307
CTM
BLACKBERRY CONNECTION
4002416
CTM
The disputed domain name was created on June 3, 2010.
In the absence of a Response there is no information available about the Respondent except for the details on the registrar’s WhoIs, the information furnished by the Complainant in the Complaint and the information in a document referred to as an “Informative Filing” sent by Protected Domain Services to the Center on June 20, 2012, denying that it is the registrant and stating that it provides registration services to the registrant who is the Respondent in this proceeding. 5. Parties’ Contentions A. Complainant
In accordance with paragraph 4(i) of the Policy, the Complainant requests that the Panel appointed in this administrative proceeding issue a decision that the disputed domain name be transferred to the Complainant.
The Complainant submits that it has rights in the BLACKBERRY trademark and relies on the above-listed trademark registrations and its rights at common law. The Complainant submits that it was founded in 1984 and has since become a leading designer and manufacturer of innovative wireless solutions for the worldwide mobile communications market having developed and marketed a highly successful line of products, accessories and services in connection with the BLACKBERRY trademark, including the famous BLACKBERRY smartphone.
The Complainant submits that it is a global company with offices in North America, Europe, Asia Pacific and Latin America. For the fiscal year ending February 26, 2011, the Complainant generated revenues in excess of USD 19 billion. Between 2009 and 2011, the Complainant generated over 45 billion dollars in revenue. The Complainant has annexed to the Complaint printouts from the Complainant’s Annual Report for 2011 reporting these figures. The Complainant submits that consequently it has acquired a substantial worldwide reputation in the use of the BLACKBERRY trademark through its sales and the significant resources it has invested in the promotion and advertisement of the BLACKBERRY trademark. Since 2001, the Complainant has incurred hundreds of millions of U.S.A. dollars in promotional expenses.
The Complainant submits that it has established a significant Internet presence. It has registered, and uses, the domain name as the address of its global website. The Complainant’s website offers, in part, information, education and support services for its BLACKBERRY products. The Complainant also operates a website at , where it sells BLACKBERRY products and related accessories. The Complainant has annexed to the Complaint sample printouts from these websites.
The Complainant submits that the BLACKBERRY trademark enjoys widespread recognition and has generated significant goodwill. As a result of extensive use and publicity, the BLACKBERRY trademark has become famous and is one of its most valuable assets. The Complainant submits that it has been listed on the Toronto Stock Exchange since 1997 and on the NASDAQ Index since 1999. The 2010 BrandZ study rated the BLACKBERRY brand at number 14 in its Top 100 Global Brands ranking; Interbrand’s Best Global Brands 2010, ranked the BLACKBERRY brand as the 54th most valuable brand in the world; Landor’s 2010 report Breakaway Brands valuation study ranked the BLACKBERRY brand as third on its list of Top Ten Breakaway Brands for 2010. The Complainant is ranked 8th in the Barron’s 500 report, which ranks the 500 largest publicly traded companies in the U.S.A. and Canada.
The Complainant submits that the disputed domain name is identical or confusingly similar to the Complainant’s BLACKBERRY trademark.
The Complainant submits that a respondent may not avoid confusion by appropriating another’s entire mark in a domain name (Research In Motion Limited v. One Star Global LLC,WIPO Case No. D2008-1752).
The Complainant submits that it is a well-established principle that the addition of a generic Top Level Domain (“gTLD”), such as “.com” or, as in the present case, the country code Top Level Domain (“ccTLD”) “.bz”, and the elimination of spaces, are without legal significance in determining the issue of confusing similarity under the Policy (Research In Motion Limited v. International Domain Names Inc. / Moniker Privacy Services,WIPO Case No. D2008-0780).
The Complainant submits that in Research In Motion Limited v. Alon Banay,WIPO Case No. D2009-0151, which involved the registration of the domain name, the panel held that the BLACKBERRY trademark was famous, and that this fame further supported a finding of confusing similarity. Furthermore, in Research in Motion Limited v. Input Inc, Domain Manager,WIPO Case No. D2011-2197, the panel held that it was “inconceivable” that the respondent could not be familiar with the BLACKBERRY trademark. The panel stated: “The Complainant has brought considerable evidence that its trademarks are known to a substantial part of consumers due to worldwide and intense use, which has not been contested by the Respondent and is credible due in particular with regard to the international trademark ranking submitted. Thus, the Panel accepts the Complainant’s contention that the trademark BLACKBERRY can be considered well known for the purposes of this proceeding and has been before the registration of the disputed domain name so that it is inconceivable that the Respondent did not know of the Complainant’s trademark upon registration of the domain name.”
The Complainant argues that in the present case the disputed domain name is identical to the Complainant’s famous BLACKBERRY trademark and under the circumstances; the Respondent cannot avoid confusion, as it has misappropriated the entirety of the Complainant’s famous BLACKBERRY trademark.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant complains that, without the permission of the Complainant, the Respondent registered the disputed domain name on June 3, 2010.
The Complainant submits that it is a well-established principle that an unauthorized party cannot claim a legitimate interest in a domain name that contains, or is confusingly similar to, a complainant’s mark, as the activities of such a party cannot be said to constitute a bona fide offering of goods or services (Research In Motion Limited v. BLACKBERRY World,WIPO Case No. D2006-1099; Dr. Ing. h.c. F. Porsche AG v. ANC Online Avrasya Bilisim Tekn San ve Dis Tic A S,WIPO Case No. D2006-0912).
The Complainant further submits that use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services, and to conclude otherwise would mean that a respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the Policy (Pfizer Inc. v. E,WIPO Case No. D2001-0791). It is also a well-established principle that directing a domain name that is confusingly similar to a third party trademark to a pay-per-click site does not constitute bona fide use of the domain name by a respondent (Research In Motion Limited v. International Domain Names Inc. / Moniker Privacy Services, supra; B and J García, S.L., Arnedo, Spain v. Gorila,WIPO Case No. D2004-1071; Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan,WIPO Case No. D2004-0430).
In the present case, there is no evidence to suggest that the Respondent has ever used, or demonstrated preparations to use, the disputed domain name, or a name corresponding to same, in connection with a bona fide offering of goods or services.
There has never been any relationship between the Complainant and the Respondent. The Respondent is not licensed, or otherwise authorized, be it directly or indirectly, to register or use, the BLACKBERRY trademark in any manner whatsoever, including in, or as part of, a domain name.
The disputed domain name is comprised exclusively of the famous BLACKBERRY trademark.
The disputed domain name is being used to divert Internet traffic to a pay-per-click website that displays sponsored links to competitors of the Complainant. The Complainant argues that such use of the disputed domain name puts the Respondent in a position to reap a financial benefit. This constitutes prima facie evidence that the Complainant has no rights or legitimate interests in the disputed domain name.
Furthermore, the Complainant argues that there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name, or that the Respondent is making, or intends to make, a legitimate noncommercial or fair use of the disputed domain name.
In light of the foregoing, the Complainant submits that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant states that it became extremely concerned about the registration and use of the disputed domain name and issued a cease and desist letter to which a response was not received. The Complainant then issued a second letter, to which the Respondent replied with “How do I make sure that you represent a Blackberry company?”. Thereafter, the Complainant issued correspondence dated October 20, 2011 reiterating its request that the disputed domain name be transferred. No further response was received from the Respondent. The Complainant has submitted copies of this correspondence in an annex to the Complaint.
The Complainant alleges that the Respondent registered the disputed domain name on June 3, 2010 without the permission of the Complainant. The disputed domain name was made to resolve to a pay-per-click website displaying sponsored links to competitors of the Complainant, such as Motorola, Nokia, LG and Samsung. The website also provided a means by which end users could search for links to competitors of the Complainant. This Complainant alleges that the Respondent’s use of the disputed domain name has put the Respondent in a position to reap a financial benefit.
The Complainant alleges that the Respondent registered the disputed domain name for the purpose of disrupting the business of the Complainant who is a competitor of the Respondent. The Complainant further alleges that the Respondent registered the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant as to source or sponsorship. Accordingly it follows that the registration and use of the disputed domain name falls squarely within the scope of the Policy, and under the circumstances the transfer of the disputed domain name to the Complainant is warranted.
The Complainant submits that it is a well-established principle that the pointing of a domain name to a pay-per-click website that displays links to websites of businesses that offer goods and services that compete with, or rival, those goods and services offered by a complainant constitutes evidence of bad faith as per paragraph 4(b)(iii) of the Policy. The Complainant argues that a respondent need not be a direct competitor of a complainant; it is sufficient if it provides a means for Internet users to access links to businesses that compete with, or rival, the complainant (PepsiCo, Inc. v. LaPorte Holdings, Inc. and P a/k/a Henry Chan,WIPO Case No. D2005-0087).
The Complainant argues that the Respondent’s use of the disputed domain name in connection with the pay-per-click website qualifies the Respondent as a competitor of the Complainant, because the Respondent’s website provides links to direct competitors of the Complainant. Further, the use of the disputed domain name is disruptive to the Complainant, because potential consumers are likely to be confused into believing that the Respondent’s website is somehow affiliated with, or sponsored by, the Complainant. As well, the misdirection of potential consumers to the Respondent’s website, and to websites operated by competitors of the Complainant, constitutes a disruption to the Complainant and its business.
The Complainant further argues that by virtue of the unauthorized diversion of Internet traffic, the valuable goodwill subsisting in the famous BLACKBERRY trademark is harmed, thereby constituting a disruption to the Complainant. The purpose behind the registration of the disputed domain name was to exploit, for commercial gain, Internet traffic destined for the Complainant. Under the circumstances, it is reasonable to infer that the Respondent not only knew this diversion would be disruptive, but also intended it to be so.
Accordingly, the Complainant submits that the Respondent deliberately set out to disrupt the Complainant and its business. By actively undertaking the diversion of Internet traffic to its site, the Respondent’s activities constitute prima facie evidence of bad faith falling squarely within paragraph 4(b)(iii).
The Complainant submits that as per paragraph 4(b)(iv) of the Policy, bad faith registration will be found where a respondent is using a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with a complainant’s mark as to source, sponsorship, affiliation, or endorsement. Numerous Panels have held that directing a domain name that is confusingly similar to a third party trademark to a pay-per-click website constitutes bad faith as per paragraph 4(b)(iv) of the Policy (Research In Motion Limited v. International Domain Names Inc./Moniker Privacy Services, supra; Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, supra; Deloitte Touche Tohmatsu v. Henry Chan, supra).
The Complainant argues that the disputed domain name contains the whole of the Complainant’s famous BLACKBERRY trademark. Further, the disputed domain name suggests a connection to the Complainant given that it is identical to the famous BLACKBERRY trademark. The Complainant submits that under the circumstances, the disputed domain name is likely to confuse potential consumers into believing that the Respondent is somehow affiliated with, or endorsed by, the Complainant.
The disputed domain name was made to resolve to a pay-per-click website displaying links to competitors of the Complainant, such as Motorola, Nokia, LG and Samsung, as well as links to sites selling the goods of these same competitors. The website also provided a means by which end users could search for links to competitor sites of the Complainant. This use of the disputed domain name put the Respondent in a position to reap a financial benefit.
Accordingly, the disputed domain name is being used in an attempt to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement.
Under the circumstances, the Complainant respectfully submits that the Respondent’s registration supports a finding under paragraph 4(b)(iv).
In conclusion, the Complainant submits that while the foregoing constitutes ample evidence of bad faith, the Complainant wishes to direct the Panel’s attention to the surrounding circumstances, which further support a finding of bad faith (Telstra Corporation Limited. v. Nuclear Marshmallows,WIPO Case No. D2000-0003), arguing that a respondent’s actual or constructive knowledge of a complainant’s rights in a domain name at the time of registration has been found to reinforce a finding of bad faith (Document Technologies v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270).
The Complainant submits that a trademark registration provides constructive knowledge to third parties of a complainant’s rights (The Sportsman’s Guide, Inc. v. Modern Limited, Cayman Islands,WIPO Case No. D2003-0305).
Furthermore, given the fame of the BLACKBERRY trademark and the nature of the Respondent’s website, the only plausible conclusion is that the Respondent had actual knowledge of the BLACKBERRY trademark at the time of registration, thereby supporting a finding of bad faith. At the very least, the Respondent had constructive knowledge of the BLACKBERRY trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed in its application paragraph 4(a) of the Policy places on the Complainant the onus of proving 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
This Panel is satisfied from the evidence adduced that the Complainant is the owner of, and has rights in the BLACKBERRY trademark established through its above-listed trademark registrations and extensive use of the mark in trade throughout the world.
The disputed domain name is identical to the Complainant’s BLACKBERRY trademark. It is well established that in making the comparison between the disputed domain name and the Complainant’s trademark this Panel may ignore the “.bz” ccTLD extension.
This Panel finds therefore that the Complainant has established the disputed domain name is identical to the BLACKBERRY trademark in which the Complainant has rights and has therefore established the first element of the test in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a domain name the onus of production shifts to the respondent to prove the second element of the test in paragraph 4(a) of the Policy.
The Complainant is the owner of a large portfolio of registrations for the BLACKBERRY trademark and has developed a global reputation and goodwill in the use of the BLACKBERRY trademark in the field of mobile communications. On the other hand, as the Complainant has submitted, there is no evidence to suggest that the Respondent has ever used, or demonstrated preparations to use, the disputed domain name, or a name corresponding to same, in connection with a bona fide offering of goods or services. Neither is there any indication that the Respondent has ever been known by the name “B” or any similar name.
On the evidence before this Panel, there has never been any relationship between the Complainant and the Respondent; the Respondent is not licensed, or otherwise authorized, be it directly or indirectly, to register or use, the BLACKBERRY trademark in any manner whatsoever, including in, or as part of, a domain name.
While the Respondent has not filed a formal Response, it has acknowledged in email communications to the Complainant that it is aware of the BLACKBERRY trademark. Furthermore there appears to be a number of pay-per-click links to the Complainant’s website on the website to which the disputed domain name resolves. This is evidence of actual knowledge of the Complainant and its goodwill and reputation. The Respondent has used the disputed domain name as the address of a website that provides information about certain competitors of the Complainant. Such use in the circumstances cannot be bona fide. The Respondent cannot acquire legitimate interest in the use of the disputed domain name that is identical to the Complainant’s trademark for the purposes of providing Internet users with information about competitors of the Complainant.
This Panel therefore finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In such circumstances the burden of production has shifted to the Respondent to establish such rights or interest and the Respondent has failed to discharge the burden.
This Panel finds therefore that the Respondent has no rights or legitimate interests in the disputed domain name and the Complainant has therefore succeeded in the second element of the test in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
It is most improbable that the registrant of the disputed domain name was not aware of the Complainant’s global reputation and goodwill when the disputed domain name was registered on June 3, 2010. While there may be reasons why someone might choose and register the word “blackberry” as an Internet domain name, the circumstances of this case and in particular the use to which the disputed domain name has been put, i.e. to divert Internet traffic to a pay-per-click website that display sponsored links to competitors of the Complainant, indicates that it is most probable that the disputed domain name was chosen and registered in bad faith to take predatory advantage of the Complainant’s goodwill and reputation.
The use of the disputed domain name by the Respondent is clearly intended to attract and misdirect Internet traffic intended for the Complainant, away from the Complainant’s websites to pay-per-click locations on the Internet. The Respondent has either intentionally or negligently allowed the disputed domain name to be used as an address of a website that provides links to information about direct competitors of the Complainant. It is most improbable that the Respondent was not aware of the Complainant’s reputation and goodwill. The email response to the Complainant’s cease and desist letter asking: with “How do I make sure that you represent a Blackberry company?” supports the finding that the Respondent was aware of the Complainant and the association between the Complainant’s BLACKBERRY trademark, its reputation and goodwill on the one hand and the disputed domain name and the website to which it resolves on the other hand.
This Panel is satisfied that on the balance of probabilities, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to online locations that promote products that compete with the Complainant’s products, by creating a likelihood of confusion with and taking predatory, bad faith advantage of the Complainant’s mark and goodwill. This Panel finds therefore that the disputed domain name has been registered and used in bad faith.
The Complainant has therefore succeeded in the third and final element of the test in paragraph 4(a) of the Policy and is entitled to succeed in its application. 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.
James Bridgeman
Sole Panelist
Date: July 26, 2012
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