WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Research in Motion Limited v. International Domain Names Inc. /
Moniker Privacy Services
Case No. D2008-0780
1. The Parties
The Complainant is Research in Motion Limited, Waterloo, Ontario, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is International Domain Names Inc. / Moniker Privacy Services, Warrens, St. Michael, Barbados.
2. The Domain Name and Registrar
The disputed domain name <allblackberryaccessories.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2008. On May 19, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On May 27, 2008, Moniker Online Services, 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 May 28, 2008 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 amendment to the Complaint on June 2, 2008. The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2008.
The Center appointed Adam Samuel as the sole panelist in this matter on July 3, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant owns registered trademarks in the United States of America for the name, BLACKBERRY, notably 2402763, 2672464, 2672472, 2678454, 2700671, 2700678, 2844339, 2844340, 2852571, 3098588 and 3102687 dating from between 2000 and 2006. The Respondent registered the disputed domain name on January 2, 2006 after nine of the Complainant’s trademark registrations indicated above.
5. Parties’ Contentions
What follows are the Complainant’s contentions. The Panel does not necessarily accept each of them. However, to avoid repetition, the Complainant’s arguments will not be prefaced by remarks such as “the Complainant contends”.
The Complainant is the registered owner of the BLACKBERRY trademarks. A respondent may not avoid confusion by appropriating another’s entire mark in a domain name. The addition of descriptive or non-distinctive terms to a domain name does not militate against a finding of confusion. The addition of a generic top level domain, such as “.com”, and the elimination of spaces, is without legal significance in determining the issue of similarity. The disputed domain name incorporates the whole of the Complainant’s trademark. The fact that the disputed domain name includes the words, “all” and “accessories”, does nothing to diminish the confusion. Despite these additions, the disputed domain name remains very similar to the trademark BLACKBERRY in appearance, sound and in the ideas suggested. Confusion is enhanced by the addition of the non-distinctive terms “all” and “accessories”. The addition of these terms suggest that the disputed domain name resolves to a website operated, or otherwise authorized, by the Complainant to sell accessories for the “Blackberry” devices. The likelihood of confusion is enhanced by the fact that the Complainant sells accessories for the “Blackberry” devices through its website located at “www.blackberry.com”, as well as through a network of authorized dealers.
An unauthorized party cannot claim a legitimate interest in a domain name that contains, or is comprised of, the complainant’s mark, as the activities of such a party cannot be said to constitute a bona fide offering of goods and services. A bona fide use does not exist when the intended use is a deliberate infringement of another’s rights. Use which intentionally trades on the fame of another cannot constitute 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. Directing domain names containing third party trademarks to pay-per-click sites, such as those hosted by Orion, “DomainSponsor.com” and “Hitfarm.com”, does not constitute bona fide use of the domain name by the respondent. 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 trademarks in any manner whatsoever, including in, or as part of, a domain name. There is no evidence to suggest the Respondent has ever used, or demonstrated preparations to use, the disputed domain name or a name corresponding to it, in connection with a bona fide offering of goods or services. The disputed domain name resolves to a pay-per-click website that displays links to competitors of the Complainant, which most certainly does not constitute a bona fide use of the domain name. The disputed domain name and the Respondent’s business name incorporates the whole of the BLACKBERRY trademark. These factors also falsely suggest that the Respondent is somehow affiliated with, or sponsored by, the Complainant.
The domain name incorporates the whole of the Complainant’s trademark. The website to which the domain resolves contains links that use the same mark. Accordingly, the use of the domain name is likely to confuse potential consumers into believing that the Respondent is somehow affiliated with, or endorsed by, the Complainant. The pointing of the disputed domain name to a pay-per-click website comprised of sponsored links renders the Respondent eligible for a referral fee. As such, the use of the disputed domain name puts the Respondent in a position to reap a commercial benefit. This all constitutes prima facie evidence that the disputed domain name has been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the BLACKBERRY trademarks as to source or sponsorship. The purpose behind the registration and use of the disputed domain name was to piggyback on the tremendous goodwill associated with the BLACKBERRY trademarks in an attempt to exploit, for commercial gain, Internet traffic properly destined for the Complainant. The Respondent registered the disputed domain name for the purpose of disrupting the business of the Complainant, a competitor of the Respondent.
The pointing of domain names to customized Internet portals displaying sponsored links to competitors of a complainant constitutes evidence of bad faith. The Respondent’s website provides links to competitors of the Complainant, including Motorola, Palm, Nokia and Samsung, while also competing for potential Internet traffic generally. The use of the disputed domain name is disruptive to the Complainant, as potential consumers are likely to be confused into believing that the Respondent’s website is somehow affiliated with, or sponsored by, the Complainant. By virtue of the unauthorized diversion of Internet traffic, the valuable goodwill subsisting in the Complainant’s Trademarks is harmed, thereby constituting a further disruption to 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. 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.
A respondent’s actual or constructive knowledge of a complainant’s rights in a domain name at the time of registration reinforces a finding of bad faith. A trademark registration provides constructive knowledge to third parties of a complainant’s rights Given the Respondent’s wholesale incorporation of the famous BLACKBERRY trademark in the disputed domain name and the pointing of the domain name to a website with numerous references to the BLACKBERRY trademark, the only plausible conclusion is that the Respondent had actual knowledge of the Complainant’s marks at the time of registration, thereby supporting a finding of bad faith. At the very least, the Respondent had constructive knowledge of them given that they are the subject of trademark registrations in the United States of America, which is where the Respondent is located. A respondent’s failure to respond to a complainant’s transfer request can reinforce a finding of bad faith registration. A reasonable party confronted with the implication that it is using a registered domain name within the context of a “cease and desist” letter would be moved to respond with a correction or denial if such implication were untrue. The Respondent did not respond to the Complainant’s cease and desist letter.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant’s trademark surrounded by the words “all” and “accessories”. The standard suffix “.com” is added to this made up word.
Normally, the addition of generic words to a trademark do not prevent the resulting domain name from being confusingly similar to the trademark. Here, things could be different because the service mark consists of a common word, normally a fruit. If the surrounding words related to fruit or the way in which it was picked, there might be a case for saying that the resulting name was not confusingly similar to the trademark. However, here, the additional words are the fairly meaningless “all” and “accessories”. One does not associate “accessories” with the generic meaning of the Complainant’s trademark as a fruit. Instead “accessories” connotes a degree of urban sophistication, consistent with the type of mobile telephone/computer type technology associated with the Complainant’s trademark. Consequently, the effect of the word “accessories” is to make it clear that the intended association is with the Complainant’s mark or products since it is highly unlikely to relate to the other ordinary meaning of “blackberry”. The addition of the suffix, in this case “.com”, is necessary for the construction of an effective domain name and is thus irrelevant for this purpose.
For these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent is apparently not called “Blackberry” or anything similar and does not appear to trade under that or any related name. There is no evidence that the Complainant has authorized the Respondent to use its trademark. The Respondent has not asserted any rights or legitimate interests in that name.
For these reasons, on the basis of the available evidence, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The use of someone else’s well-known trademark with a term such as “accessories” which seems to relate to that mark rather than the ordinary meaning of the word incorporated in the mark, suggests that the Respondent knew that it was infringing the Complainant’s trademark when it registered the domain name. That was put to the Respondent and it did not respond. For these reasons, the Panel concludes that the domain name was registered in bad faith.
It is noticeable that since the complaint was filed, the website to which the domain name resolves no longer contains references to the Complainant’s trademark except in the domain name itself. One can infer from this that the Respondent is actively involved in the content of the website rather than just leaving it unused. In the latter case, the Registrar may put up a page with links from which the registrant may not benefit and over which the registrant may have little or no control. Here, though, that does not appear to be the case. Again, it was put to the Respondent that it was pointing the website towards a pay-per-click site from which it was hoping to benefit and the Respondent declined to respond.
Currently, the website is being used to market by pay-per-clicks the products of the Complainant’s competitors. The Respondent appears to be using the domain name in issue and its similarity to the Complainant’s trademarks to divert customers to competitors of the Complainant in order to make money. This is all evidence of bad faith.
The Panel in Banca di Roma S.p.A. v. Unasi Inc. a/k/a Domaincar, WIPO Case No. D2006-0068, agreed that this type of behaviour constituted bad faith. It said:
“The Respondent is linking the disputed domain name to a portal site offering sponsored links. There, Internet users have access to a variety of goods and services, among them websites of the Complainant’s competitors. As described by the panelist in Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584, such websites offer a revenue program which pays domain name owners (in the particular case) “50% of all revenues generated from searches, popunders, popups, and exit popups” in respect of users directed to its website through the participants domain name.”
“This leads the Panel to the conclusion that the Respondent registered the domain name at issue to divert Internet users seeking information about the Complainant’s products to a portal site offering sponsored links and to share in revenues obtained from the diverted traffic. Even if internet users would realize that the Respondent’s website is not connected with the trademark owner, the Respondent is liable to profit from their initial confusion, since they may still be tempted to click on sponsored links. In many previous UDRP decisions, in some of them the Respondent was involved as a respondent party as well, such exploitation of trademarks to obtain click-through commissions from the diversion of internet users was held of use in bad faith … In the absence of any reply of the Respondent, the Panel can make a reasonable inference that the Respondent’s website generates revenue for the Respondent in that manner.”
For all these reasons, the Panel concludes that the Respondent has both registered and used the domain name in issue in bad faith.
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 <allblackberryaccessories.com> be transferred to the Complainant.
Dated: July 10, 2008