The Complainant is Research In Motion Limited, Waterloo, Ontario, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is Mark Norris, Solutrix LLC, Norfolk, Virginia, United States of America.
The Disputed Domain Names <bestblackberryapplications.com>, <bestblackberryapps.com>, <bestblackberrystormapps.com>, <blackberryapplicationstore.com>, <blackberryappsstore.com>, <blackberrystormapplications.com>, <blackberrystormapplicationstore.com>, <newblackberryapps.com>, <newblackberrystormapps.com> are registered with SRSplus.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2008. On December 18, 2008, the Center transmitted by email to SRSplus a request for registrar verification in connection with the Disputed Domain Names. On December 18, 2008, SRSplus transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and provided the contact details. The Center verified that the 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 December 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2009. The Respondent did not submit a Response. Accordingly, the Center notified the Respondent's default on January 13, 2009.
On January 14, 2009, the Center received an email communication from the Respondent stating, “We did respond. Please contact Mr Lee.” attaching previous email communications between the Respondent and the Complainant. The Center advised that prior to above-mentioned email communication the Center had not received any email communication from the Respondent. The Center also advised that in the event the parties were interested in negotiating settlement, the Complainant could submit a request for suspension of proceedings. Having not heard from the parties, the Center proceeded to appoint Alistair Payne as the sole panelist in this matter on January 21, 2009. 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.
The Complainant designs, manufactures and markets wireless communication products for the worldwide mobile communications market.
The Complainant is the owner of numerous trade mark registrations for or incorporating the BLACKBERRY mark and the STORM mark.
The Complainant is also the owner of a number of domain names incorporating the BLACKBERRY mark.
The Complainant's Blackberry smartphones are available on over 300 networks in over 100 countries worldwide. In its latest fiscal year ending March 4, 2008 the Complainant's revenues were in excess of USD 6 billion and the Complainant has over 16 million subscribers to its Blackberry devices.
The Disputed Domain Names were registered by the Respondent on October 17, 2008. The Disputed Domain Names each resolve to inactive websites. The Respondent is not affiliated with the Complainant nor is it in any way endorsed by the Complainant as an authorized distributor of the Blackberry products.
The Complainant issued a cease and desist letter to the Respondent on November 26, 2008, requiring the transfer of one of the said Disputed Domain Names, <blackberryapplicationstore.com>. A response to this letter was sent by e-mail correspondence by the Respondent to the Complainant on January 12, 2009.
The Complainant contends that on October 17, 2008 the Respondent registered the Disputed Domain Names without the Complainant's permission.
The Complainant contends that the Disputed Domain Names are confusingly similar with the BLACKBERRY marks in which the Complainant has usage rights.
The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Names.
The Complainant contends that the Respondent has engaged in a pattern of registering domain names that contain trade marks to which the Respondent is not entitled to and by doing so has prevented the Complainant from registering the Disputed Domain Names.
The Complainant contends that the Respondent has registered and used the Disputed Domain Names to attempt to attract, for commercial gain, Internet users to the Respondent's websites by creating a likelihood of confusion with the Complainant's BLACKBERRY mark as to source, sponsorship, affiliation or endorsement.
The Complainant seeks a transfer of the Disputed Domain Names in accordance with paragraph 4(i) of the Policy.
The Respondent has not filed a formal Response to the Complaint. Pursuant to paragraph 14(a) of the Rules, the Panel will proceed to a decision on the Complaint in the absence of a Response from the Respondent. The Panel may draw negative inferences from the Respondent's default where necessary.
If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.
The Complainant has provided sufficient evidence of its ownership of both registered rights and unregistered usage rights in the BLACKBERRY mark. The Panel is satisfied that the Disputed Domain Names are confusingly similar to the BLACKBERRY mark. Previous panels have decided that a domain name which wholly incorporates a complainant's registered mark may be sufficient to establish confusing similarity for the purposes of the Policy. See Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888; Xerox Corporation v. Imaging Solution, WIPO Case No. D2001-0313. The addition of non-distinctive generic terms such as “best”, “new”, “applications”, “apps”, “application store”, “appsstore” etc. and the top level domain suffix do not dispel confusion. In the Panel's view many Internet users would suppose that the Disputed Domain Names refer to websites operated by the Complainant. See Research in Motion Limited v. WG/Shahbaz Khan, WIPO Case No. D2008-0165; Research in Motion Limited v. Nicholas Stewart, WIPO Case No. D2008-0262; Research in Motion Limited v. Domains by Proxy, Inc, and Kafiint, WIPO Case No. D2008-0164.
Therefore the Panel considers that the Disputed Domain Names are confusingly similar to the Complainant's BLACKBERRY mark for the purposes of paragraph 4(a)(i) of the Policy.
The Complainant must make out at least a prima facie case that the Respondent lacks rights or a legitimate interest. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Once a prima facie case is shown the burden of proof then shifts to the Respondent who must demonstrate its rights or legitimate interests to the Panel.
Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that can be brought forward by the Respondent, which if found by the Panel to be proved based on its evaluation of all evidence presented, shall be demonstrative of the Respondent's rights or legitimate interests to the Disputed Domain Name for the purposes of Paragraph 4(a)(ii):
(i) that before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(ii) that the respondent (as an individual, business, or other organization) has been commonly known by the domain name even if it has acquired no trademark rights; or
(iii) that the respondent is making a legitimate non-commercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark or service mark at issue.
It is generally regarded as prima facie evidence proof, for a complainant to show that the disputed domain name is identical or confusingly similar to its mark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. Roust Trading Limited v AMG LLC, WIPO Case No. D2007-1857. There is no supporting evidence to suggest that the Respondent is commonly known by the Disputed Domain Names or is operating a bona fide business through its websites, or that it is affiliated with, or authorised by, the Complainant. The Panel considers that the Complainant has therefore made out a prima facie case.
The Respondent has failed to file a formal Response to the Complaint. It remains for the Panel to determine whether or not the Respondent has no right or legitimate interest in the Disputed Domain Names as a consequence of its actions.
The Panel has reviewed the content of an e-mail sent by the Respondent to the Complainant on January 12, 2009, which purported to be in response to the cease and desist letter sent by the Complainant to the Respondent on November 26, 2008. This e-mail states that:
“[the Respondent's] intention was to promote sales of the storm, which would have benefited [the Complainant] and only [the Complainant] [the Respondent] did not register [the Disputed Domain Names] in bad faith as [the cease and desist letter] outlines. [The Respondent] in no way intend to confuse or mislead the public.”
The Respondent's suggestion that the Disputed Domain Names were registered for the ultimate benefit of the Complainant and that registration was not in bad faith nor was there an intention to create confusion with the Complainant's BLACKBERRY mark are, in the Panel's view, unsubstantiated and disingenuous. The Respondent was not authorised by the Complainant to register the Disputed Domain Names. Paragraph 2 of the Policy stipulates that it is the respondent's responsibility to determine whether the respondent's domain name registration infringes or violates someone else's rights. The Panel is willing to infer that by registering the Disputed Domain Names the Respondent was aware that it was violating the Complainant's registered and unregistered usage rights in the BLACKBERRY mark. The Panel considers that the only plausible rationale on the part of the Respondent for registering the Disputed Domain Names was for commercial gain.
As the Respondent has failed to substantially refute the Complainant's contention that the Respondent has no right or legitimate interest in the Disputed Domain Names the Panel considers that the Complainant has satisfied Paragraph 4(a)(ii) of the Policy.
The Policy requires a complainant to prove both registration and use in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's 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 trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; 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, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website 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 website or location or of a product or service on respondent's website or location.
The Complainant contends that paragraph 4(b)(iv) of the Policy is satisfied as the Respondent is using the Disputed Domain Names to intentionally attract, for commercial gain, Internet users to the Respondent's websites by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation or endorsement.
The Panel notes that the Disputed Domain Names do not link to operative websites. However previous panels have decided that the requirement for “use in bad faith” is satisfied by registering a domain name that will ultimately result in consumer confusion. See CBS Broadcasting, Inc. v. LA-Twilight-Zone, WIPO Case No. D2000-0397; Hewlett-Packard Company v. Marcel Wieland, NAF, Case No. FA95852. The Panel is willing to infer that the Respondent registered the Disputed Domain Names to intentionally attract, for commercial gain, Internet users to the Respondent's websites by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation or endorsement. The Respondent implicitly admitted that this is what it was doing in its e-mail to Complainant. Had the Respondent had the bona fide intention of dealing with the Complainant's products it would have sought the Complainant's authorisation for using the Disputed Domain Names. To the extent that the Disputed Domain Names are not in operative use, the Panel is satisfied that they are being passively held and therefore used in bad faith within the ambit of decisions such as, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel considers that the Complainant has satisfied the requirement to show bad faith registration within the meaning of the Policy
The Panel considers that the Complainant has satisfied Paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names:
8. <newblackberryapps.com>; and
Be transferred to the Complainant.
Dated: January 30, 2009