WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Research In Motion Limited v. Dustin Picov
Case No. D2001-0492
1. The Parties
The Complainant is Research In Motion Limited, a corporation organised under the laws of the Province of Ontario, Canada, having a principal place of business at 295 Phillip Street, Waterloo, Ontario N2L 3W8, Canada.
The Respondent is Dustin Picov, an individual with a listed mailing address of 164 Huntington Pk Dr, Thornhill, Ontario L3T 7J9, Canada.
2. The Domain Name and Registrar
The Domain Name at issue (hereinafter the Domain Name) is <researchinmotion.com>. The Registrar of the Domain Name is Register.com, Inc., with its address at 575 Eighth Avenue, 11th Floor, New York, NY 10019, USA.
3. Procedural History
On April 3, 2001, the Complainant submitted, via e-mail, a Complaint (hereinafter the Complaint) with the WIPO Arbitration and Mediation Center (hereinafter the Center). The Center received the hardcopy of the Complaint on April 5, 2001. On April 9, 2001, the Center confirmed receipt of the Complaint to the Complainant, via e-mail. On April 9, 2001, the Center informed the Registrar, Register.com Inc., that the Complaint had been submitted to the Center regarding the Domain Name, and asked for a verification of the registrant information. The said verification results from the Registrar were received on April 10, 2001.
The Center then proceeded to verify that the Complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the ICANN Rules) and the World Intellectual Property Organisation Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the WIPO Rules), including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on April 10, 2001.
In a letter dated April 11, 2001, the Center informed the Respondent of the commencement of the proceeding as of April 11, 2001 and of the necessity of responding to the Complaint within 20 days. Evidence provided by the Center supports the finding that the Center acted diligently in its attempts to inform the Respondent of the proceeding.
On April 27, 2001, the Center received an e-mail from the Respondent requesting an extension of one week to file his response (hereinafter the Response). On April 30, 2001 the Center, via e-mail to the Respondent, granted the request.
On May 3, 2001, the Center acknowledged the receipt of the Response in its hard copy format and requested the Response in electronic form. On May 6, 2001, the Center received the Response in electronic form and, on May 7, 2001, the Center received additional response material (fax) and communication records, from the Respondent.
On May 14, 2001, the Center proceeded to transmit the Response via e-mail to the Complainant as well as faxing the Response annexes and further Response material to the Complainant.
The Panel has reviewed the documentary evidence provided by the parties and the Panel and agrees with the Centerís assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.
The Panel believes it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
On May15, 2001 the Center informed both parties, by e-mail, that an administrative panel had been appointed.
The Panel has received no further submissions from either party since its formation.
The Panel is obliged to issue a decision on or prior to May 31, 2001, in the English language and is unaware of any other proceedings, which may have been undertaken by the parties or others in the present matter.
4. Factual Background
The Complainant in this administrative proceeding, Research in Motion Limited, is an industry-leading designer, manufacturer and marketer of innovative wireless solutions for the mobile communications market. Research In Motion Limited's portfolio of award-winning products includes the Research In Motion Wireless Handheld product line, the famous BlackBerry wireless email solution, wireless personal computer card adapters, embedded radio modems and software development tools.
Founded in 1984, Research In Motion Limited is listed on the Toronto Stock Exchange under the RIM symbol, and on the Nasdaq Stock Market under RIMM. Research In Motion Limited has used the trade name "Research In Motion" since its inception.
In its 2000 fiscal year (March 1, 1999 through February 29, 2000) Research In Motion Limited had gross revenues of US $85 million. In its last reported quarter alone (the three months ending on November 30, 2000) Research In Motion Limited spent US $16.9 million (almost 30% of revenue) on selling, marketing and advertising.
The evidence shows that the Complainant or its predecessors have registered and/or utilised trade names and trademarks consisting of the terms RESEARCH IN MOTION or RIM in various forms and combinations throughout Canada and in the United States.
No information has been supplied regarding the attributes and businesses of the Respondent although it appears that the Respondent is a student who used fake identities and addresses to register the Domain Name and who lives in Ontario, Canada.
As shown by the evidence, the Respondent registered the Domain Name, which consisted of <researchinmotion.com> in December 1999. The evidence reveals that at one point in time, internet users entering the Domain Name, were directed to a web site containing a mention of the Complainantís mark, notably the following statement, "future web site for rim.net". Furthermore, this site provided links to the Complainantís web site www.rim.net. The evidence also reveals that after registering the Domain Name, Respondent placed it up for sale on greatDomains.com with an asking price of $1,500,000.
There is no relationship between the Respondent and the Complainant. The Respondent is not a Licensee of the Complainant nor has he otherwise obtained any authorisation to use the Complainantís marks or apply for any Domain Names incorporating any of these marks.
5. Partiesí Contentions
At paragraph I to the Complaint, the Complainant maintains that the Respondent registered the Domain Name under a fictitious name to evade service of process and to conceal the Respondentís true identity. David Shaw is an alias designed to conceal the registrantís true identity.
At paragraphs J and K to the Complaint, the Complainant alleges that after registering the Domain Name, Respondent placed it up for sale on greatDomains.com, the asking price: $1,500,000. Complainant further alleges that there can be no argument that $1,500,000 far exceeds the costs of registering a Domain Name and that Respondent intended to profit through his actions of bad faith. The greatDomains.com information notes that "this web site is for sale for 1.5 million, although Iím not really interested in selling it, just want to see what its worth."
At paragraph M to the Complaint, the Complainant alleges that it owns various trademarks such as:
Mark: RESEARCH IN MOTION
Canadian Registration No.: TMA 528,261
Registration Date: May 24, 2000
Mark: RESEARCH IN MOTION
U.S. Registration No.: 2,036,380
Registration Date: February 11, 1997
Canadian Registration No.: TMA 509986
Registration Date: March 25, 1999
U.S. Registration No .: 1,982,049
Registration Date : June 25,1996
At paragraphs A, B and C to the Complaint, the Complainant alleges its legitimate use of the Domain Name, as well as the goodwill and reputation attached thereto. The Complainant maintains that, in effect, for the past 17 years, the Research In Motion name and mark has been continuously used to identify an industry-leading designer, manufacturer and marketer of innovative wireless solutions for the mobile communications market. Research In Motion Limited's portfolio of award-winning products includes the Research In Motion Wireless Handheld product line. Furthermore, Research In Motion Limited had gross revenues of US $85 million. In its last reported quarter alone (the three months ending on November 30, 2000) Research In Motion Limited spent US $16.9 million (almost 30% of revenue) on selling, marketing and advertising.
At paragraph NN on the Complaint, the Complainant advances that the Domain Name is likely to be confused with Research In Motion Limited's marks. The Domain Name consists entirely of "ReasearchInMotion." Research In Motion Limitedís trade name and trademark are identical to the disputed Domain Name. Realising that consumers encountering the Domain Name will be confused into believing that the Domain Name is associated with Research In Motion Limited, Respondent even provided a link to <rim.net> and touted the Domain Name as the future home of <rim.net>.
At paragraph PP of the Amendment to the Complaint, The Complainant asserts that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent is not commonly known by "research in motion." Respondent is not making a legitimate commercial, noncommercial or fair use of the Domain Name. Respondent undertook to register the Domain Name with full and complete knowledge of Research In Motion Limitedís superior and prior rights. Moreover, Respondent's documented offers to sell the Domain Name both on the Internet and directly to Research In Motion Limited evidence his bad faith registration and use.
Further on in paragraph RR of the amendment to the Complaint, the Complainant maintains that Respondent registered the Domain Name at issue in this Complaint in order to prevent Research In Motion Limited from registering its marks in the corresponding Domain Name, or to simply sell it.
The Respondent, in the various paragraphs of the Response, attempts to justify his registering of the Domain Name, as well as his actions and intent towards the Complainant. The following statements summarize the essential elements of the Response:
In paragraph 2 of the Response, the Respondent alleges that "RIM had no legitimate interest in the Domain Name until after Respondent had purchased it. It was not a trademark until May 24, 2000. The Domain was purchased by myself in Dec 1999. A trademark search done by myself at the time, showed no infringement."
In paragraph 3 of the Response, the Respondent maintains that "The Domain Name has not ever been used at all."
In paragraph B of the Response, the Respondent alleges that "RIM claims here that they were founded in 1984 and have used that trade name ever since inception. However in Canada it was only approved in May 2000 and in the U.S. in Feb. 1997."
In paragraph C of the Response, the Respondent alleges that Research in Motion Limitedís web site "says RIM not research in motion on their web site. So they do not even go by Research in Motion. I have also looked at their products and they say RIM not research in motion. The following comes from their web site where they use RIM all the time: i.e. [Ö] You acknowledge that this site may contain information, communications, software, photos, text, video, graphics, music, sounds, images and other material and services (collectively "Content"), which is generally provided by Research In Motion Limited or its subsidiaries (collectively "RIM") or by licensors of RIM [Ö]."
In paragraph G of the Response, the Respondent alleges that "After getting the postings removed I decided to change all my information to false information, as I was afraid for my safety. As you are aware they are a lot of crazy people out there and it is not safe to give out your information to strangers."
In paragraph J of the Response, the Respondent alleges that "I was informed by others, that if I did this I could see how much value this Domain Name had which could help if I ever wanted to get financing for my site. It also never hurts to know the value of something you own."
In paragraph Z of the Response, the Respondent alleges that "RIM then decided to take away the promotional items because they had no intentions of sending them in the first place. This is when I no longer wanted to transfer the Domain to them."
In paragraph AA of the Response, the Respondent alleges that "Now RIM decides to give me a deadline and still does not offer me the promotional items like first promised. The deadline now meant nothing to me. We tried to ask for the promotional items but they made excuses, stating that it took too long. They never wanted to give me a thing and their legal counsel tried to scare me again by demanding a deadline."
In paragraph MM of the Response, the Respondent alleges that "The trademark only comes into play after my Domain Name was purchased."
In paragraph 2 of the Response, the Respondent alleges that "I booked this Domain with intentions of using it for a research site. That is 100% legitimate, at the time there was not even a trademark established with this Name. Their trademark is for Research in Motion anyways. My Domain is reseachinmotion.com."
In paragraph RR of the Response, the Respondent alleges that "I never prevented RIM from registering their mark because there was no mark when I booked it. I only prevented them from booking it after they had a mark for it but I booked it months before it was a mark."
6. Discussion and Findings
Pursuant to the Uniform Domain Name Dispute Resolution Policy (hereinafter the ICANN Policy) the Complainant must convince the Panel of three elements. In order to have the Domain Name transferred to this end, it is incumbent upon the Complainant to cumulatively show:
i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which it holds rights; and
ii) that the Respondent has no rights or legitimate interests in the Domain Name; and
iii) that the Domain Name was registered and used in bad faith.
These three elements are considered below.
Identical or Confusingly Similar to Trademark
The Panel has reviewed the documentary evidence provided by the Complainant regarding its rights in the trademark RESEARCH IN MOTION and finds that the Complainant has satisfactorily shown that it owns such rights.
With respect to the confusing similarity between Complainant's trademark and Respondent's Domain Name; in the decision, The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571, the panel held: "In determining whether a Domain Name is confusingly similar to a trademark, the intention of the Domain Name registrant is irrelevant. It is the objective likelihood of confusion that must be assessed."
In this case, the second-level part of the Domain Name, "researchinmotion", is phonetically and visually identical to the Complainant's trademark RESEARCH IN MOTION. Thus an average Internet user who has knowledge or recollection of the Name, RESEARCH IN MOTION, might easily mistake the Respondentís web site, associated with the Domain Name, as being somehow affiliated to or owned by the Complainant. The Panel is of the opinion that this fact alone is sufficient to conclude that the Domain Name is confusingly similar to Complainant's RESEARCH IN MOTION trademark.
The Panel would like to take the opportunity to address a recurring argument which is present in the Respondentís Response, which is to the effect that: "RIM had no legitimate interest in the Domain Name until after Respondent had purchased it. It was not a trademark until May 24, 2000." On that point, the Complainant does not need to prove rights in a registered trademark, as the Policy does not require that the Complainant must have rights to a "registered" trademark. However, in the absence of a registration, the Complainant has to be able to satisfy the Panel that it has sufficient rights which would give rise to an action for passing off. See Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235. In the matter, presently before the Panel, the Complainant did provide evidence of use of the mark RESEARCH IN MOTION, as well as showing substantial goodwill, reputation and secondary association of the trademarks with the Complainant.
The Panel is therefore of the opinion that the Complainant has met the burden of proof as established by paragraph 4(a)(i) of the ICANN Policy.
No Rights or Legitimate Interests
Paragraph 4(a)(ii) of the ICANN Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the Domain Name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the Domain Name; and (iii) legitimate non-commercial or fair use of the Domain Name.
The Panel is of the opinion that there is no evidence to support any finding of a right or legitimate interest in the Domain Name on behalf of the Respondent. The Respondent has not shown use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services, nor has he attempted to show that he has commonly been known by the Domain Name nor has he attempted to show a legitimate non-commercial or fair use of the Domain Name.
Furthermore, the Panel is also of the opinion that the Respondent, in all intents and purposes, admitted to not using the Domain Name in a legitimate manner when he stated in paragraph 3 of the Response that "The Domain Name has not ever been used at all."
Pursuant to paragraph 4(a)(iii) of the ICANN Policy it is incumbent upon the Complainant to prove, on the balance of probabilities, that the Respondent has registered and is using the Domain Name in bad faith. Paragraph 4(b) of the ICANN Policy provides a number of non-exhaustive circumstances which, if found to be present, are evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(iv) of the ICANN Policy holds that, if the circumstances tend to indicate that by using the domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís web site, then this might be evidence of bad faith registration and use on behalf of the Respondent.
The Panel has duly noted that the evidence shows that the Respondent provided a link to <rim.net> and falsely indicated on the web site that it was the future home page of the Complainant. The Panel finds that Respondent has used the Domain Name in bad faith pursuant to Paragraph 4(b)(iv) of the UDRP, in that Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 his web site or location or of a product or service on his web site or location.
Furthermore, the Panel has taken note of uncontested evidence, which indicates that after registering the Domain Name, the Respondent placed it up for sale on greatDomains.com, the asking price: $1,500,000. Furthermore, the Respondent, who stated that he had no real intention of ever selling the Domain Name, but wanted to see what it was worth, admitted to this act. In addition, the Respondent also stated that "RIM then decided to take away the promotional items because they had no intention of sending them in the first place. This is when I no longer wanted to transfer the Domain Name to them." The Panel is of the opinion that the Complainant has satisfied its burden to establish, on these grounds alone, that the Respondent was intending to demand more than his out-of-pocket costs directly related to the registration of the Domain Name, a necessary component of a finding of bad faith when offering a Domain Name for sale pursuant to paragraph 4(b)(i) of the ICANN Policy.
The Panel is also of the opinion that the Domain Name is so obviously connected with the Complainant and its services that its very use by someone with no connection to the Complainant suggests "opportunistic bad faith" (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 and Veuve Cliquot Ponsardin, Maison Fondťe en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163), followed by this Panel in SSL International vs. Mark Freeman, WIPO Case No. D2000-1080, and Altavista Company v. Grandtotal Finances Ltd., WIPO Case No. D2000-0848.
For the foregoing reasons, which are not exhaustive of all the acts of bad faith committed by the Respondent, the Panel concludes that the Complainant has met its burden of proof and has proven that the Respondentís actions have been in bad faith pursuant to paragraphs 4(b)(i) and 4(b)(iv) of the ICANN policy.
For the foregoing reasons, the Panel decides:
- that the Domain Name registered by the Respondent is confusingly similar to the trademarks in which the Complainant has rights;
- that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
- that the Domain Name has been registered and is being used by the Respondent in bad faith.
Accordingly, pursuant to paragraph 4(i) of the ICANN Policy, the Panel orders that the registration of the Domain Name <researchinmotion.com> be transferred to the Complainant by the Registrar, Register.com, Inc.
Jacques A. Lťger, Q.C.
Dated: May 31, 2001