WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Research in Motion Limited v. Pacific Rim System

Case No. D2001-0408

 

1. The Parties

The Complainant is Research in Motion Limited, a company organized under the laws of the province of Ontario, Canada, having a principal place of business at 295 Philip Street, Waterloo, Ontario N2L 3W8, Canada.

The Respondent is Pacific Rim Systems of 1 Bienvenido, Aliso Viejo, California 92656, USA.

 

2. The Domain Name and Registrar

The domain name on which the Complaint is based is <rim.com>.

The registrar with which the domain name is registered is Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, VA 20170, USA.

 

3. Procedural History

3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("the Policy") in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") on March 22, 2001 (e-mail) and March 26, 2001 (hard copy).

3.3 The Center acknowledged receipt of the Complaint on March 27, 2001 and on March 28, 2001, requested verification of the registration details of the domain name from the Registrar. These details were verified by e-mail from the Registrar on April 3, 2001.

3.4 The Center completed its "Formal Requirements Compliance Checklist" on April 3, 2001, finding that:

- The Complaint was filed in accordance with the requirement of the Rules and the Supplemental Rules.

- Payment for filing was properly made.

- The Complainant had complied with all other formal requirements.

3.5 The Panel accepts these findings and it finds further that:

- The dispute is properly within the scope of the Policy, which is incorporated within the registration agreement with the Respondent pursuant to which the domain name is registered, and that the Panel has jurisdiction to determine the dispute.

- The Respondent was properly notified of the Complaint in accordance with the Rules, paragraph 2(a). It was sent to the Respondent, care of Murray Williams, Pacific Rim Systems, 1 Bienvenido, Aliso Viejo, California 92656, USA, who is listed as the Administrative Contact, Technical Contact and Billing Contact in the WHOIS database of Network Solutions, Inc. and who was also listed as such in the Registrarís verification received by the Center on April 3, 2001. These communications to Murray Williams were made by e-mail, facsimile and post courier. According to an e-mail received by the Center from the System Administrator at <postmaster@thinktank.com>, the e-mail message sent to Murray Williams was undeliverable.

- Having received no response from the Respondent within the specified time in the Notification of Complaint, the Center issued a Notification of Respondent Default on May 1, 2001, by e-mail, facsimile and post courier. Once again, there was a response from the System Administrator at <postmaster@thinktank.com> to the effect that the e-mail message was undeliverable.

- On May 21, 2001, the Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. The notification informed the parties that the Administrative Panel would be composed of a single member and that, in the absence of exceptional circumstances, the decision of the Panel was to be forwarded to the Center by June 4, 2001.

- The Administrative Panel was properly constituted.

 

4. Factual Background

4.1 According to the Complaint (pages 4-5), the Complainant is a leading designer, manufacturer and marketer of "innovative wireless solutions for the mobile communications market". It products include the RIM Wireless Handheld product line, the BlackBerry email wireless solution, wireless personal computer card adapters, embedded radio modems and software development tools. The Complainant was founded in 1984 and is listed on the Toronto Stock Exchange under the RIM symbol and on the Nasdaq Stock Market under RIMM. In the fiscal year 2000 (March 1, 1999 to February 29, 2000), RIM had gross revenues of $US85 million, and in its last reported quarter alone (ending November 30, 2000) had spent $US16.9 million (almost 30% of revenue) on selling, marketing and advertising. A key component of the Complainantís marketing is the inclusion of the RIM trademark on all of its products. Annex C of the Complaint includes a sample of an advertising brochure for the RIM Wireless Handheld models which contain photographs of the models on the top of which the RIM mark appears.

4.2 It appears further that the Complainant first adapted and began using the RIM trade mark in 1991 and now owns a number of trade mark registrations comprising the mark RIM in both the USA and Canada. A copy of the registration certificate for the US mark (Reg No 1,982,049 in respect of computer software and hardware and radio based devices and parts therefore) appears in Annex D of the Complaint, along with information about the Canadian registration. The US mark bears a registration date of June 25, 1996 and the Canadian has a registration date of March 25, 1999.

4.3 In addition to the above registrations, the Complainant uses the word "RIM" combined with other words in other trade marks, such as "RIMGATE". The only information attached to the Complaint concerning such marks relates to the US registration for "RIMGATE" (Reg No 1,982,033) which has a registration date of June 25, 1996 (Annex E, Complaint). The Complaint states further (page 6) that the Complainant uses these marks on all its products and in numerous publications.

4.4 The Complainant also conducts substantial business on the Internet through its website at <rim.net> (Complaint, page 6, para. F). No information is provided as to when this website was established or the date of registration of the domain name <rim.net>.

4.5 According to the Complainant (page 6, paras. G and following), the Complainant "recently" learned that the Respondent had placed the domain name <rim.com> for sale on the website <greatdomains.com> (Complaint, Annex F).

4.6 Following this discovery, the Complainant conducted various searches over the Internet and ascertained that the registrant of <rim.com> was "Pacific Rim Systems." According to the WHOIS database of Network Solutions (Complaint, Annex A), the Administrative Contact, Technical Contact and Billing Contact for the domain was registered as Murray Williams with the same listed mailing address (1 Bienvenido, Aliso Viejo, California 92656, USA) as for Pacific Rim Systems.

4.7 While finding several entities incorporating the words "Pacific Rim Systems" had been registered under Californian law and had been either subsequently suspended or dissolved, the Complainant failed to locate a Pacific Rim Systems at the address given in the WHOIS record for <rim.com>. Further investigations conducted by the Complainant through the WHOIS database of Network Solutions indicated that, as March 1, 2001, a number of domain names incorporating the words "Pacific Rim" remained available for registration, for example, <pacificrimsystems.com> and <pacificrimsystems.net> (Complaint, Annex H). The relevance of this information for the Complainant is discussed below.

4.8 Noting that the listed Administrative Contact for <rim.com> had an e-mail address on the <valuecapital.com> domain, the Complainant conducted a further online search to ascertain whether Value Capital had registered any domain names and found that there were several registrations belonging to "Value Capital LP". These had the same listed address as for Pacific Rim Systems on the <rim.com> WHOIS report and also gave Murray Williams, the Administrative Contact for <rim.com>, as their Administrative Contact (Complaint, pages 7- 8, paras. K-L). Among these domain names are <freehandspring.com> and <freepalm7.com> (WHOIS printouts for these appear at Complaint, Annex I). The Complaint goes on to note (at page 8, paras. M and N) that "handspring" and "palm" are the trade marks used by several other leading manufacturers of hand-held wireless computing and telecommunications products and annexes information from the US Patent and Trade Marks Office as to various applications that are pending for registration of marks comprising these words that are being made by Handspring Inc. and Palm Inc., respectively, (Annexes J and K). The relevance of these domain name registrations by the same administrative contact as for Pacific Rim Systems is discussed below.

4.9 Following the above investigations, the Complainant initiated the Complaint that is the subject of the present administrative proceeding.

 

5. Partiesí Contentions

A. Complainant

The Complainant seeks the transfer to it of the domain name <rim.com> and, in support of this contention, addresses each of the elements described in paragraph 4(a) of the Policy as follows:

- With respect to the element described in paragraph 4(a)(i), the Complainant submits that the disputed domain name is likely to be confused with its RIM trade marks, and notes that the domain name is identical to the Complainantís mark. Referring to US authority, it submits further that a likelihood of confusion is to be inferred from the other registrations belonging to registrants at 1 Bienvenido, Aliso Viejo, California 92656, USA, such as <freepalm7.com> and <freehandspring.com>, on the basis that these registrations indicate that the Respondent has intentionally chosen to register domain names incorporating the marks of well-known wireless computing/communication device providers: see further Sun-Food Prods, Inc. v. Suntan Research & Development, Inc., 656 F 2d 186 (5th Cir 1981) and Perfect Fit Indus, Inc. v. Acme Quilting Co., 618 F 2d 950 (2d Cir 1980).

- With respect to the element described in paragraph 4(a)(ii), the Complainant submits that there is no evidence of any right or legitimate interest by the Respondent in the domain name. In particular, it submits that there is no evidence of the Respondentís use of, or 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. It submits further that the Respondent has not been commonly known by the domain name and there is no evidence of any legitimate non-commercial or fair use of the domain name taking place. In this regard, it points to the evidence of bad faith registration and use of the domain name by the Respondent which is also relevant to the third requirement of paragraph 4(a) and which is considered next.

- With respect to the element described in paragraph 4(a)(iii) of the Policy, the Complainant submits that the Respondent has registered the domain name in order to sell it for valuable consideration in excess of the out-of-pocket costs directly related to the domain name registration, referring here to the invitation to submit an offer that appears on <greatdomains.com>. It refers also to the pattern of such conduct that may be inferred from the registration of the other domain names where the address for the registration is the same as for <rim.com>. The Complainant submits that these matters go to establish the Respondentís bad faith in registering and using the disputed domain name.

B. Respondent

As noted above, the Respondent has not filed a Response to the Complaint. Under paragraph 5(e) of the Rules, it is provided that if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint. As no exceptional circumstances have been brought to the Panelís attention, it proceeds to make the findings below on the basis of the material contained in the Complaint.

 

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant has the burden of demonstrating three elements:

6.1 That the complainant has rights in a trade or service mark with which the respondentís domain name is identical or confusingly similar

As noted in paragraph 4.2 and 4.3 above, the Complainant has provided evidence of registration of its trade mark registrations within the USA and Canada (Complaint, Annexure E) and states that it has registrations or applications filed in another 29 countries. In addition, it has registered the domain name <rim.net> and has spent significant sums of money in marketing its products under the trade mark "RIM". Accordingly, the Complainant has satisfied the first part of paragraph 4(a)(i) of the Policy, namely that it has rights in a trade or service mark.

The next question is whether the disputed domain name is identical or confusingly similar to the Complainantís mark. In this regard, the word "RIM" is used in both the domain name and the trade mark, and the only difference is the addition of the suffix ".com" in the domain name. In determining whether a domain name is identical or confusingly similar to a mark in which the Complainant has rights, it is a matter of comparing one with the other; evidence of actual confusion or evidence of the use of the mark or its fame is irrelevant to this comparison. (See further the prior decisions of WIPO panels in Gateway Inc. v. Pixelera.com, Inc. WIPO Case No. D2000-0109 (April 6, 2000) and Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016, (March 24, 2000).)

 

In the present case, leaving aside the suffix ".com", there is a clear identity between the domain name and trade mark, so this aspect of paragraph 4(a)(i) is satisfied. In addition, even if the addition of the suffix ".com" is considered, there is still a confusing similarity between the domain name and trade mark, and previous Administrative Panels have found that the addition of the suffix ".com" makes no difference to the creation of such confusing similarity: World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D99-0001 (January 14, 2000) (<worldwrestlingfederation.com> and WORLD WRESTLING FEDERATION) and InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069 (April 3, 2000) (<infospaces.com> and INFOSPACE). See also Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330 (June 7, 2000) (concerning <encyclopediabrittanica.com>, <brtanica.com>, <bitannica.com>, and <britannca.com>), Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 (January 23, 2001) (concerning <nicholekidman.com> and <nicolekidmannude.com>), Hewlett-Packard Co. v. Cupcake City, File No FA000200093562 (concerning <hewlittpackard.com>). Likewise, in the present proceeding, the Panel has no difficulty in concluding that the disputed domain name <rim.com> is confusingly similar to the "RIM" trade mark, and that the second requirement of paragraph 4(a)(i) has been satisfied.

In view of the above, it is unnecessary for the Panel to consider whether an inference of confusing similarity is to be drawn, in line with US case law, from the allegedly intentional registration by the Respondent of other domain names that comprise the marks of well known manufacturers and distributors of wireless computing/communication devices.

6.2 That the Respondents must be shown to have no rights or legitimate interests in the Domain Name

Paragraph 4(c) of the Policy sets out certain matters to which a Respondent can point as demonstrating rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii). These include:

"(i) before any notice to you [the Respondent] of the dispute, your use of, or 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 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 noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

In the present proceeding, there is no evidence that the Respondent has used the domain name <rim.com> in connection with any bona fide offering of goods and services (subpara (i)). Nor is there any evidence of "demonstrable preparations" to use the domain name in that way (subpara (i)), and it seems clear that there has been no licence or authorization given by the Complainant to the Respondent to use the name or mark "RIM".

Likewise, there is no evidence before the Panel that indicates that the Respondent has ever carried on a business under the name "RIM" or any variant of this expression, or that it has been commonly known by that name (subparagraph (ii)).

Finally, there is no evidence before the Panel that indicates whether any of the factors referred to in subparagraph (iii) are applicable. In this regard, the Panel takes account of the material placed before it by the Complainant that relate directly to the issue of bad faith registration and use, and notes that this tends to refute any likelihood that the domain name has been registered or used for any legitimate noncommercial or fair use purpose.

The matters referred to in paragraph 4(c) are not an exhaustive statement of what may constitute rights or legitimate interests in a domain name, and it is therefore open to a Respondent to point to other evidence that may show this. In the present proceeding, there has been no Response or evidence presented by the Respondent, and the Panel, under Paragraph 14(b) of the Rules, is entitled to draw from such default such inferences as it considers appropriate. The Panel therefore concludes that the Complainant has established this element of Paragraph 4(a) of the Policy, namely that the Respondent has no rights or legitimate interests in the disputed domain name.

6.3 That the Respondent registered and is using the Domain Name in bad faith

Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This is not an exclusive list, and includes:

"(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration (and acquisition) of the name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of an Administrative Panel to the effect that registration in bad faith followed by a passive holding of a domain name when there is no way in which it could be used legitimately can amount to use in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000). In addition, it would be both mistaken and artificial to confine paragraphs (i)-(iii) solely to the time of registration: presumably, it would also be a use of a disputed domain name in bad faith to do so, after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several Panel decisions: see, for example, Estée Lauder Inc. v. <estelauder.com>, <estelauder.net> and Jeff Hanna, WIPO Case No. D2000-0869 (September 25, 2000) and E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615 (August 3, 2000).

In the light of the above, the Complainant contends that registration and use in bad faith of the domain name is to be inferred from the following circumstances: the offer to sell the domain name on <greatdomains.com> and the strong possibility that the Respondent has engaged in a pattern of such behaviour in relation to other domain names that have the same postal address as the Respondent. These matters are relevant to the kind of bad faith exemplified in subparagraph 4(b)(i) set out above.

While there does not seem to have been a direct approach or offer made specifically to the Complainant to sell the domain name <rim.com>, the notice on <greatdomains.com> (Annex F, Complaint) clearly advertises that the name is for sale and contains the statement: "Asking Price: Make Offer." While no price is suggested for this, it cannot be supposed that the offer is to sell only at the cost of registration and transfer. In Dollar Financial Group, Inc. v. RXW Management, FA 95108 (Nat Arb Forum, Aug 4, 2000), the Panel held that offering a domain name for sale at a domain name auction website is evidence of registration and use in bad faith. On the facts as presented in the instant case, the same conclusion readily follows.

While the Panel would be prepared to base its decision on the issue of bad faith on the <greatdomains.com> notice alone, its conclusion here is strengthened by the other registrations that exist for <freehandspring.com> and <freepalm7.com> (Annex I, Complaint). As noted above, these list the same person (Murray Williams) as the Administrative Contact, Technical Contact and Billing Contact as for <rim.com>. The evidence presented by the Complainant that there is no corresponding Californian entity registration for Pacific Rim Systems at the given postal address is also telling. On the evidence before the Panel, the conclusion is that Pacific Rim Systems is a purely fictitious entity, and is being used to disguise the fact that the same person is behind the registration of all three domain names. In this regard, the evidence of the Complainant that there are various combinations containing the words "Pacific Rim" that are available for domain name registrations is also instructive. Thus, if Pacific Rim Systems was a legitimate business entity, it would be surprising that it had not already registered one or more of these domain names. Furthermore, although no evidence has been presented to the Panel to show that either <freehandspring.com> and <freepalm7.com> has been listed for sale on <greatdomains.com>, the fact that (a) such registrations have been effected at the behest of the same person, (b) are registered at the same mailing address, and (c) each relates to well known marks in the relevant industry, is highly significant. It provides the basis for the following inference to be drawn, namely that there is a pattern of registering domain names for no other apparent reason than that of selling them for profit. In similar circumstances, a WIPO Panel has held that such a pattern of conduct can constitute evidence of registration and use in bad faith: Bell-Phillip Television Productions v. Make A. Aford (Tim Wenk), WIPO Case No. D2000-0180 (May 2, 2000). On the facts before the Panel in the present proceeding, these facts lend weight to the conclusion of the Panel that the registration and use of the domain <rim.com> has been made in bad faith for the purposes of paragraph 4(a)(iii) of the Policy.

6.4 Conclusions

The Panel finds that the Complainant has established its case with respect to each of the requirements stated in paragraph 4(a) of the Policy.

 

7. Decision

The Administrative Panel accordingly directs that the registration of the domain name <rim.com> should be transferred to the Complainant.

 


 

Staniforth Ricketson
Sole Panelist

Dated: June 3, 2001