1.1 The Complainant is Research in Motion Limited of Waterloo, Ontario, Canada, represented by Novak Druce & Quigg LLP, United States of America.
1.2 The Respondent is One Star Global LLC of Midland, Texas, United States of America.
2.1 The disputed domain name <unofficialblackberrystore.com> (the “Domain Name”) is registered with Wild West Domains, Inc (the “Registrar”).
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2009. On February 23, 2009, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the Domain Name. On February 23, 2009, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing 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”).
3.2 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 February 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2009.The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 19, 2009.
3.3 The Center appointed Matthew S. Harris as the sole panelist in this matter on March 31, 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.
4.1 The Complainant is incorporated in Ontario, Canada. It is a manufacturer and marketer of wireless devices and is particularly well known for its “blackberry” handheld devices.
4.2 The Complainant's Blackberry devices are now available in 150 countries and in the fiscal year ended March 4, 2008 it revenues were USD 6.0 billion.
4.3 It is the owner of numerous trade mark registrations that comprise or incorporate the term “blackberry”. They include:
(i) United States Registered Trade Mark No. 2672464 for the word BLACKBERRY registered on January 7, 2003 filed in class 9; and
(ii) United States Registered Trade Mark No. 2700671 for the word BLACKBERRY registered on March 25, 2003 filed in class 38
4.4 The Complainant also conducts business from a number of domain names that incorporate the term “blackberry”. These include <blackberry.com>. <discoverblackberry.com> and <www.shopblackberry.com>.
4.5 The Respondent appears to be a corporation based in Texas. It is a retailer of mobile phones and smart phones.
4.6 The Domain Name was registered on January 23, 2009. It has been used since that date for a website that sells Blackberry products and wireless carrier plans for Blackberry products.
4.7 The website operating from the Domain Name as at the time of the Complaint prominently displayed the following text:
“Welcome to The Unofficial BlackBerry Store .com!
We Absolutely Have No Relationship With Research In Motion!! Hell We Don't Even Like ‘Em. That being said and despite their Numerous Lawsuits for Patent Infringement, they do make a good product.
Founded in 2003 as BlackBerryStore.com the Unofficial BlackBerry Store represents all Major US Wireless carriers though it's brand and fulfillment partners you can Compare BlackBerry Phones and buy your BlackBerry and take your current cell phone number with you (local number portability). Order your BlackBerry cell phone from us and save money - BlackBerry prices are typically $100-$250 cheaper than buying a cell phone from a local cellular dealer or mall! We offer BlackBerry phones, BlackBerry PDA's including Verizon BlackBerry, AT&T BlackBerry, T-Mobile BlackBerry, Sprint Blackberry and Nextel Blackberry. Just to round things out, we also offer a full line of cell phones and Widows Mobile Devices here at the Unofficial BlackBerry Store .com.”
4.8 Underneath this were pictures and various offers of Blackberry products. Beneath that at the bottom of the page was the following text:
“BlackBerryStore.com is not associated with Research In Motion In Any Way. *Use of any trademark term or image on this site is used solely in “Good Faith” under “Fair Use Provisions” and for comparison purposes as held by The United States Supreme Court in : KP Permanent Make-Up, Inc. v. Lasting Impression, Inc., No. 03-409, 2004 U.S. Lexis 8170 (December 8, 2004). Use of any registered trademarked term in the name of, or the content of this web site is used for SEO (search engine optimization) AND COMPARISON PURPOSES ONLY. SUCH USE OF SAID TRADE MARK OR TRADE NAME SHOULD NOT BE CONSTRUED AS APPROVAL OF SAID MARKS OWNER OF THE CONTENT OR BUSINESS PRACTICES OF THIS SITE”.
4.9 There then followed a large number of links. Most of these appear to be Blackberry related but a significant number do not fall into that category. They included “Cell Phones”, “Real time electricity Prices”, “Cash Transfers” and “GPS Teen Tracking”.
4.10 The web page also contained a side segment which included links to various phones and phone providers which are not necessarily Blackberry or even mobile phone related. They included “Moto RAZR Phones”, “Cellular One Phones” and “Get Dish TV Now”.
4.11 At the date of this decision the webpage operating from the Domain Name continues to take broadly the same form as it did at the time of the Complaint.
5.1 The Complainant refers to its business and makes various assertions as to the size of its reputation and the scope of its trade mark registrations.
5.2 It contends that the Respondent is not one of its authorised network of distributors nor otherwise affiliated with the Complainant. It refers to the Respondent's website at the Domain Name and asserts that there are links on that site to the website operating from the url “www.cellphoneshop.net”, which offers Blackberry related accessories alongside phones and accessories from the Complainant's competitors.
5.3 It asserts that the Complainant registered the Domain Name one day after the Respondent received the decision against it in Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2008-1752 in relation to the domain name <blackberrystore.com>. It is claimed that this “opportunistic conduct” does not cure the bad faith that was found to exist in WIPO Case No. D2008-1752.
5.4 The Complainant contends that the Domain Name is confusingly similar to the Complainant's BLACKBERRY mark. This is said to be because (a) the Domain Name wholly incorporates the Complainant's mark (citing a number of cases including Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662); (b) the dominant impression of the Domain Name arises from the Complainant's famous BLACKBERRY mark; and (c) the likelihood of confusion is compounded by the addition of the generic dictionary word “store” (referring again to WIPO Case No. D2008-1752). Reference is also made to 6 other UDRP cases in which the disputed domain name comprised the word “blackberry” in combination with other words such as “accessories” or “world”.
5.5 The Complainant contends that the use of the word “unofficial” in the Domain Name does not dispel such confusing similarity (citing the United States decision of Ty, Inc. v. West Highland Publishing, Inc. and Highview Recording, LLC 1998 WL 698922 (N.D. Ill. 1998). The Complainant further contends that:
“With respect to the threshold purpose of the first element of the Policy, considerations that inform UDRP Panel decisions holding that domain names consisting of a trademark and a negative term are confusingly similar apply with even greater force here.”
Reference is also made to the fact that the BLACKBERRY mark is known around the world and many Internet users interested in the Complainant and its products may not be fluent English speakers (citing Southern California Regional Rail Authority v. Robert Arkow, WIPO Case No. D2008-0430).
5.6 On the issue of rights or legitimate interests, the Complainant contends that the Domain Name resolves to a website that is simply a modified version of the website in the <blackberrystore.com> case. Reference is made to the fact that the site offers for sale Blackberry smartphones and accessories as well as the products of the Complainant's competitors.
5.7 The Complainant also refers to a number of cases that are said to reject the proposition that a reseller can register a domain name incorporating a manufacturer's trade mark without the trade mark owner's consent. These include Motorola, Inc. v. NewGate Internet Inc., WIPO Case No. D2000-0079, The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113, and Gorstew Limited and Unique Vacations, Inc. v. Caribbean Tours & Cruises, NAF Claim No. 94927. Reference is also made to United States law which is said to provide that the right of an unauthorized reseller of trade marked goods is “carefully bounded by the requirement that a reseller not make use of the mark in a way that is likely to confuse consumers”. The Complainant also cites General Electric Company v. Japan, Inc., WIPO Case No. D2001-0410, Motorola, Inc., supra, and Amphenol Corporation v. Applied Interconnect, Inc., WIPO Case No. D2001-0296.
5.8 The Complainant also states that if the Panel were to apply the standard first set out in the Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (which was a case involving the activities of an authorised dealer), the Respondent would not have rights or legitimate interests. In particular, the Respondent's website at the Domain Name is said to sell competing products and reference is again made to the decision in the <blackberrystore.com> case.
5.9 The disclaimer appearing on the website operating from the Domain Name is said to be irrelevant given that it does not prevent Internet users from being diverted to the Respondent's website. The addition of the word “unofficial” in the website is said not to dispel such initial interest confusion.
5.10 The Complainant also contends that this is a case where there is neither a legitimate noncommercial use of the Domain Name, and denies that the Respondent has been commonly known by the Domain Name.
5.11 So far as bad faith is concerned, the Complainant contends that the current case forms part of a continuing pattern of registrations by the Respondent to attract for commercial gain Interent users to its website by creating a likelihood of confusion with the BLACKBERRY mark. Again reference is made to the offer of the Complainant's competitor's goods and services on the website operating from the Domain Name and previous domain name cases that the Complainant has brought against the Respondent under the Policy.
5.12 The Complainant also contends that the existence of a disclaimer cannot cure this alleged bad faith.
5.13 Finally, the Complainant contends that the “overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another” (citing Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230). It asserts that the “Respondent should not be allowed to thwart the fundamental objectives of the Policy by merely adding the word ‘unofficial' to a domain name that has already been found to have been registered and used in bad faith”.
5.14 The Respondent did not reply to the Complainant's contentions.
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
6.4 It is clear that the Complainant owns a large number of registered trade marks that incorporate the term “blackberry”. This includes marks for the term “blackberry” alone. It is also clear that the Domain Name can only be sensibly understood as the term “blackberry” combined with the words “unofficial” and “store” and the “.com” TLD.
6.5 The Panel accepts the Complainant's contention that the use of term “unofficial” does not prevent the Domain Name from being confusingly similar to the Complainant's BLACKBERRY mark.
6.6 It is necessary to recognise that the term of confusing similarity is a low threshold test the purpose of which is effectively to assess whether a complainant has sufficient rights so as to give it standing to bring a complaint (see, for example, Aubert International SAS and Aubert France SA v. Tucows.com Co., WIPO Case No. D2008-1986). It involves a simple comparison of the mark relied upon with the domain name in issue. The geographical location of that mark is not important and normally neither is the degree of fame or reputation that a registered mark has achieved. Similarly, reference to local case law on confusing similarity or likelihood of confusion, is also unlikely to be that helpful.
6.7 It is against this “standing” requirement that the word “confusing” is to be understood. So for example, even in cases where the domain name in issue takes the form of a trade mark combined with the pejorative term such as “sucks”, there is still likely to be confusing similarity (see for example, Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647). There are cases where a domain name combining the term “sucks” with a mark has not been held to be confusingly similar to that mark where the domain name has been used for a criticism site (see the case listed in The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO Case No. D2003-0166), but the Panel would suggest that the real rationale of those cases may rather be found in an assessment of whether the operation of a criticism site from such a domain name provides rights or legitimate interests and/or is in bad faith.
6.8 This low threshold approach in cases where the pejorative or the alleged distinguishing term is incorporated in a Domain Name is sometimes said to be justified by the fact that the domain name might be seen by persons who are not familiar with the language from which the additional word is taken. It is claimed that such persons will be confused by the mark element of the domain name and that this confusion will not be dispelled by the additional word or words in the domain name. There may be some force in this argument, but regardless of its exact justification, the advantages of the low threshold approach are clear. Take for example, a company that registers the domain name <[name of competitor]sucks.com> for a website that does nothing more than sell its own goods. In the opinion of this Panel the question of whether or not such use should be allowed is best addressed in the context of an assessment of rights or legitimate interests and bad faith. To interpret paragraph 4(a)(i) as setting a low threshold test permits this to happen.
6.9 It is also an approach that means that in most cases where a domain name incorporates the entirety of a trade mark, then the domain name will for the purposes of the Policy be confusingly similar to the mark. The Complainant has cited a number of cases that are said to support that proposition. However, this Panel would prefer not to endorse this as a hard and fast rule. Are the domain names <theatre.com> or (to adopt American spelling) <theater.com> really confusingly similar to a mark for the word “heat”1? Each case must be judged on its own facts, and the assessment will always depend on the specific mark and the specific domain name.
6.10 In the circumstances of this case the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
6.11 This is one of these cases where the issue of rights or legitimate interests and bad faith can be more conveniently dealt with together.
6.12 The facts in this case are relatively clear. The Respondent is using a domain name that incorporates the Complainant's BLACKBERRY mark predominantly to sell genuine Blackberry products and accessories but is also to fair degree promoting both competing and unrelated goods and services.
6.13 The Complainant's legal arguments as to rights or legitimate interests and bad faith are extensive. However, in the Panel's view the outcome to this case depends upon the answer to a single question. That is, to what extent under the Policy can an entity that resells the genuine trade-marked goods of another register and use a domain name that incorporates an unauthorised use of such mark for that purpose. In such case the questions of rights and legitimate interests and bad faith will usually be just the opposite sides of the same coin2. If the registrant is found to have a legitimate interest in the use of a domain name for such purpose, then it is not likely to have registered the domain name in bad faith. The converse is also the case.
6.14 This question is addressed in some detail in paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Overview”). It is worth setting this out in full:
“Can a reseller have a right or a legitimate interest in the disputed domain name?
Majority view: A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant's relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.
Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903, Denied; Experian Information Solutions, Inc. v. Credit Research, Inc. WIPO Case No. D2002-0095 among others, Transfer
Minority view: Without the express permission of the trademark holder the right to resell the trademark holder's products does not create a right to use the trademark as the basis for a domain name.
Motorola, Inc. v. NewGate Internet, Inc. WIPO Case No. D2000-0079, Transfer with Dissenting Opinion
For cases dealing with a non-contractual relationship see:
DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160, Denied (with dissent); Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946, Transfer; Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481, Denied”
6.15 The WIPO Overview is now nearly 5 years old. As a consequence the argument has moved on somewhat from that set down in the Overview. For example, one of the issues that has been explored in greater detail in a number of more recent cases is whether a distinction should be drawn between cases where the domain name is being used by an authorised distributor and when it is being used by someone who has no contractual arrangement with the trade mark owner. In the Oki Data case, supra, in which the four criteria said to be representative of the majority view were laid down, an authorised arrangement was in place. This was commented upon by the panelist in General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645 where the respondent was not an authorised distributor and the Oki Data criteria were not applied.
6.16 However, it seems to be the case that the predominant view amongst panelists is now that the Oki Data criteria are capable of applying regardless of whether or not a respondent is an authorised distributor. Examples include, Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447; Daimler AG v. William Wood, WIPO Case No. D2008-1712; IVECO S.p.A. v. Zeppelin Trading Company Limited, WIPO Case No. D2008-1725; ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc., WIPO Case No. D2008-0936; and Magma Products Inc. v. Herb Halling, WIPO Case No. D2007-0995. In this Panel's view this must be right. It is difficult to see why an official distributor who is not bound by any contractual provision as to the registration of domain names incorporating a mark should be treated any differently from an unauthorised distributor who engages in the same activity.
6.17 That is not to say that this Panel believes the decision in General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645 was wrong. In the opinion of the Panel it was still rightly decided. (Nor for that matter is the Panel convinced that all the cases cited above as authority for the proposition that the Oki Data criteria are capable of applying regardless of whether or not a respondent is an authorised distributor, were necessarily rightly decided). The reason for this lies not in any distinction between authorised or unauthorised distributors but in a distinction between those cases where the domain name contains a distinguishing element and those that do not. In General Electric the domain name (i.e. <ge-merlin.com>) was essentially identical to the complaint's mark. As the panelist in that case commented:
“In the relatively limited number of cases where panels have been prepared to find bona fide use in the absence of authorization, the domain names at issue have tended to be at least distinguishable in some way from the complainant's mark. On balance, the existing panel decisions suggest that where there is no authorization, the combination of an identical trademark in a domain name and the ensuing likelihood of initial interest confusion alone ought to be sufficient to demonstrate that Respondent has no legitimate interest in this case and the Panel has adopted this approach. While the approach of the existing panel decisions may be thought to have potentially anti-competitive effects, it is likely also to lead to greater transparency in the conduct of on-line business and does not, on balance, unduly inhibit competition with the trademark owner.”
6.18 This Panel believes that in a case where the domain name used by a distributor is essentially identical to a trade mark (or a domain name that incorporates a trade mark without some distinguishing feature) then it is strongly arguable that there are no rights or legitimate interests (and there is also bad faith) even if the Oki Data requirements might be satisfied.
6.19 There is a clear analogy here with the position in “criticism” site cases. Recently there are a number of cases under the Policy that have held that there can be no rights or legitimate interests in the use of a domain name that comprises another's trade mark even if the registrant intends to use the domain name for the purposes of a noncommercial site that is critical of the trade mark owner (see, for example this Panel's decision in 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461 and the cases referred to therein). The rationale for this approach is that the intentional adoption of a domain name that is essentially identical to or does not distinguish itself from another's trade mark will involve an impermissible impersonation of the trade mark owner.
6.20 It is fair to say that this is approach in criticism cases is not universally accepted and this is an area where there is still an ongoing debate amongst panelists. But if this is the right approach in criticism cases (and the Panel still believes that it is), then it is difficult to see why a commercial use by a legitimate reseller of goods of a domain name that is identical to the trade mark for the goods should be treated differently.
6.21 However, it is not necessary to consider this issue further because in the present case the Domain Name does not comprise the Complainant's trade mark alone. It also contains additional elements and one of those additional elements is the word “unofficial”. It is a term that distinguishes and is intended to distinguish the Respondent from the Complainant (see also in this respect Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206). As a consequence this case cannot be simply dealt with on the basis that the Domain Name and the Domain Name alone involves an impersonation of the Complainant. It does not. It is necessary to look at the use actually made of the Domain Name and the nature of the website that operates from it to see whether the registration and use is abusive.
6.22 Therefore, in the opinion of the Panel the rules recorded as the majority position in the WIPO Overview and first set down in the case of Oki Data Americas, Inc., supra, still apply. Of these the two most significant are:
(a) that the site operating from the disputed domain name must sell only goods bearing the trade mark; and
(b) the site accurately disclosing the registrant's relationship with the trade mark owner.
6.23 This Panel also stated in Owens Corning v. NA, WIPO Case No. D2007-1143, that it was for a respondent to show that the Oki Data rules apply, and this is an approach that has been followed in a number of subsequent cases including Dell Inc. v. Radvar Computers LLC, WIPO Case No. D2007-1420; Compagnie Gervais Danone v. yunengdonglishangmao(beijing)youxiangongsi, WIPO Case No. D2007-1918; Philip Morris Products S.A. v. Keyword Marketing, Inc., WIPO Case No. D2008-0031; Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Varentinuo inc. reg by sopao.com, WIPO Case No. D2008-0186; and Deutsche Post AG v. Yonghua Zhang, WIPO Case No. D2008-0326.
6.24 Given that the Respondent has not filed a response in this case, it might therefore be said that this is the end of the matter as the Respondent has not sought to raise an Oki Data type argument. However, on this occasion the Panel considers this to be an unnecessarily artificial approach. The nature of the Respondent's use of the Domain Name is quite clear, and the Complainant has expressly argued that the Oki Data conditions do not arise in this case. The Panel can and will substantively consider whether the Oki Data conditions have been fulfilled.
6.25 In the opinion of the Panel they have not. The key reason for that conclusion is the fact that the website operating from the Domain Name has been used to sell and promote goods other than those that either bear the Complainant's mark or which are intended to be used exclusively with such goods. Whilst it seems clear that predominantly Blackberry products that have been advertised and offered for sale on the website, it is also clear that to a significant degree the Domain Name has been used for other purposes. There are, for example, references to Motorola RAZR Phones. There would also appear to be links to non-mobile phone and smart phone related products and services that are as diverse as satellite television products, information about electricity prices and cash transfer services.
6.26 The Panel also questions whether the requirement that the Respondent fully disclose its relationship with the trade mark owner has been satisfied in this case. The Respondent's website contains a clear and prominent disclaimer. However, as this Panel held in Sanofi-aventis v. M72 Hosting, WIPO Case No. D2007-1937, it is arguable that even where there is a disclaimer there is insufficient disclosure unless the respondent also positively identifies who it is. As far as the Panel can tell, the identity of the Respondent is not disclosed anywhere on the site. Nevertheless, it is unnecessary to, and the Panel declines to, decide the case on this basis.
6.27 In the circumstances the Complainant has made out the requirements of paragraph 4(a)(ii) and (iii) of the Policy.
6.28 A comparison with the facts of, and the approach adopted in, Research in Motion Limited v. One Star Global v. One Star Global, supra, is in the opinion of the Panel also instructive. The Panel accepts that the timing of the registration of the Domain Name was not coincidental and that the Respondent wanted to continue and has continued its old activities under a new domain name that differed from its previous domain name solely by the addition of the word “unofficial”.
6.29 The Complainant contends that the “overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another” (citing Match.com LP, supra). The Panel accepts that this is generally correct, although this choice of wording is in danger of overstating things somewhat.
6.30 Anyone who sells genuine products that bear the trade mark of another is to some degree or other seeking to profit from and/or exploit another's trade mark. In this Panel's view, that activity is not from the point of view of the Policy per se abusive. However, there is likely to be abusive use where the mark is used in a domain name so as to either, firstly, impersonate the trade mark owner (so as to benefit from initial interest confusion created by the domain name itself) or, secondly, promote the sale of competing or unrelated products. It is these sorts of unfair exploitation of another's trade mark that are precluded by the Policy.
6.31 It would appear that the panel in Research in Motion Limited v. One Star Global, supra, held that the Respondent had, in that case, essentially engaged in both sorts of abuse. In this case, the Respondent by reason of its adoption of this particular Domain Name may have succeeded in avoiding the first abuse, but has evidently persisted in the second. As a consequence the current case has also been decided in the Complainant's favour.
7.1 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 <unofficialblackberrystore.com> be transferred to the Complainant.
Matthew S. Harris
Dated: April 9, 2009
1 Those familiar with English trade mark law may perhaps also be reminded of the following words of Jacob J (as he was then) in British Sugar PLC v. James Robertson & Sons Ltd., 1996 R.P.C. 281: “No-one but a crossword fanatic, for instance, would [say] that ‘treat' is present in ‘theatre atmosphere'”.
2 The fact that bad faith is to be judged by reference to registration and use, whilst rights or legitimate interests will usually be judged at the time that a complaint is brought, may in some cases complicate matters somewhat. However, in this case no such complication arises as there is no suggestion that the motives at the time of registration and use were any different.