The Complainant is Research In Motion Limited of Ontario, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent as identified in the Complaint is Privacy Locked LLC, of Ford Bragg, California, United States of America. The Respondent, as identified by the Registrar, is Nat Collicott, of SolidDomains.com, Inc., Fort Bragg, California, United States, who is represented by John Berryhill Ph.d., Esq., United States.
The disputed domain name, <backberry.com> (the “Domain Name”), is registered with Moniker Online Services, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2009. On March 11, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name.
On March 13, 2009, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 19, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On March 30, 2009 the Complainant confirmed that it was of the view that the name of the Respondent need not be amended.
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 the UDRP (the “Rules”), and the WIPO Supplemental Rules for the UDRP (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified both Respondents (i.e., the registrant at the date of filing of the Complaint and the registrant identified by the Registrar at the date of its verification response to the Center) of the Complaint, and the proceedings commenced on April 1, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2009. The Response of the current Registrar-confirmed registrant of record, Nat Collicott, was filed with the Center on April 21, 2009.
The Center appointed Tony Willoughby as the sole panelist in this matter on April 30, 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.
As will be apparent from the above there is an issue as to the identity of the proper Respondent in this administrative proceeding. The Panel deals with this issue in detail in Section 6 below. Suffice it to say at this stage that the Panel is satisfied that the Complaint as filed against Privacy Locked, LLC is a valid complaint and does not require amendment. The Panel is also satisfied that, in the circumstances, it was right for the Center to provide the Complainant with the registrant information as confirmed by the Registrar and to invite the Complainant to amend the Complaint if it so wished and thereafter to treat Nat Collicott, the registrant identified following Registrar verification, as a Respondent to the Complaint.
Accordingly, the Panel proceeds on the basis that both Privacy Locked LLC and Nat Collicott are Respondents in this administrative proceeding, but proposes to treat Nat Collicott as the substantive Respondent and references hereinafter to “the Respondent” are to be construed accordingly.
The Complainant is a Canadian company, which was founded in 1984 and is best known for its line of mobile communications products marketed under the BLACKBERRY trade mark.
The Complainant is the proprietor of a large number of trade mark registrations comprising or including the word, “Blackberry” including United States registration no. 2672464 dated January 7, 2003 (filed December 28, 1998) BLACKBERRY (word) in, inter alia, class 9 for scientific and electric apparatus and instruments.
The Complainant's website is at “www.blackberry.com”.
The Domain Name was registered on December 4, 2002 and is connected to a parking page featuring sponsored advertising links, some (but not all) of which relate to the Complainant's products.
On October 8, 2008 the Complainant wrote to Privacy Locked LLC. drawing attention to the Complainant's rights and its concerns regarding what it perceived to be the deceptive nature of the use being made of the Domain Name and demanding transfer of the Domain Name. The Complainant received no reply to that letter.
The Complainant contends that the Domain Name is confusingly similar to its BLACKBERRY trade mark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith. The Complainant contends that this is a clear case of typosquatting and that the registration is an abusive registration within the meaning of sub-paragraphs 4(b)(iii) and (iv) of the Policy.
The substance of the Response reads as follows:
"Consent to Transfer"
The Respondent has no objection to transfer of the domain name, which was acquired among a batch of domains obtained by the Respondent. The Complainant has been provided with a suspension request setting forth such consent, and it is the Complainant's option whether to proceed directly to transfer upon suspension of the Proceeding or to await a decision on the Respondent's consent.”
In an email of April 22, 2009 the Respondent's representative states that “the prior correspondence” (apparently referring to the warning letter of October 8, 2008) was not forwarded on to the Respondent.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant 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 in bad faith and is being used in bad faith.
Before addressing the above there are two preliminary points to be addressed, the identity of the proper Respondent and whether or not it is necessary in light of the Respondent's consent to transfer of the Domain Name that the Panel should proceed to a decision.
The Complaint was filed by the Complainant with the Center against Privacy Locked LLC, the WhoIs-listed registrant of the Domain Name at that time. At some stage following service of the Complaint on Privacy Locked LLC and the Registrar by the Complainant, but prior to formal notification of the Complaint and commencement of the administrative proceedings by the Center, the Registrar appears to have permitted a change to its WhoIs database identifying Nat Collicott as the registrant in place of Privacy Locked LLC. At all events, the Registrar in its reply to the Center's verification request confirmed Nat Collicott as the registrant.
This scenario is now commonplace. Someone wishing to acquire a domain name, but wishing to conceal his/her identity, uses a privacy service such as that provided by Privacy Locked LLC. The domain name is registered in the name of the privacy service. The agreements between privacy services and their customers vary when it comes to UDRP complaints. Some privacy services unmask (or disclose) the customer (“underlying registrant”) on receipt of a warning letter from a complainant, thereby enabling the complainant to address a complaint to the underlying registrant. Some privacy services only unmask the underlying registrant following receipt of a complaint, or receipt of the Center's request for registrar verification, thereby leading to a situation such as this one where the Center provides the registrar-confirmed registrant information to the complainant and invites an amendment to the complaint. Others, it appears, decline to unmask the underlying registrant at all.
Various interesting questions arise in relation to the use of privacy services in the context of a proceeding under the Policy where the unmasking of an underlying registrant takes place after the filing of a complaint with a provider but prior to formal commencement of the administrative proceedings, namely:
(i) Who is the proper respondent? Is it the privacy service named on the registrar's WhoIs database as the registrant at the date of filing of the complaint, or is it the underlying registrant identified by the registrar in response to the Center's verification request?
(ii) If the underlying registrant is the proper respondent, is it necessary for the complainant to file an amended complaint naming the underlying registrant?
(iii) Paragraph 8(a) of the Policy forbids transfer of a domain name registration while a dispute under the Policy is pending. Is the unmasking of an underlying registrant such a transfer within the meaning of paragraph 8(a) of the Policy? When is a proceeding under the Policy pending? Does the pendency commence on initiation of the proceeding, on service of the complaint by the complainant, or does it commence when a UDRP service provider formally notifies the respondent that the proceeding has commenced pursuant to paragraph 4(c) of the Rules?
(iv) If the unmasking of the underlying registrant after service of the complaint by the complainant is a transfer in breach of paragraph 8(a) of the Policy, what is the significance of that breach in the context of a proceeding under the Policy?
These issues have been explored in great detail by a number of learned panelists. See for example Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696; Mrs Eva Padberg v. Eurobox Ltd, WIPO supra; Baylor University v. Domains by Proxy, Inc., a/k/a Mark Felton a/k/a Thomas Bassett a/k/a William Bunn a/k/a Fertility Specialists of Dallas a/k/a Becky Chatham a/k/a Amanda Scott a/k/a Nathan Flaga a/k/a Lisa Payne a/k/a Victor Weir III., NAF Claim No. 1145651; Karsten Manufacturing Corp. v. Pingify Networks Inc., NAF Claim No. 1232823; The American Automobile Association, Inc. v. Domains By Proxy, Inc. by itself and as proxy for its customers, NAF Claim No. 1226461; and, Aluship Technology SP. ZO.O v. Belize Domain WHOIS Service, WIPO Case No. D2009-0028.
There appear to be three possible options for panelists:
(1) Treat the underlying registrant as the respondent, taking the pragmatic approach adopted by the panel in the Karsten case. In that case the panel opined:
“Further to the Procedural History set out above, it is to be noted that on the date on which the Complaint was filed, November 6, 2008, the WHOIS information showed the domain name registrant as Domains By Proxy Inc. As originally filed, Complaint nominated Domains By Proxy Inc. as Respondent. After identification by the Registrar of Respondent and at the invitation of the National Arbitration Forum, the Complaint was amended to nominate the current Respondent.
Much of the argument from both sides centered on the question of who should be properly nominated as respondent. Complainant was determined to treat Domains By Proxy Inc. as the respondent, whilst Respondent argued that it was the correct entity. Whilst this Panel is aware that the facts here invite a number of questions concerning interpretation of the Policy which have engaged the close attention of other panels, (See Padberg v. Eurobox Ltd, WIPO Case No. D2009-1886, (WIPO Mar 10, 2008; see also Baylor Univ. v. Domains by Proxy Inc, FA 1145651 (Nat. Arb. Forum, May 26, 2005) it is also conscious that the overriding intention of the Policy is to provide a practical alternative to court proceedings to combat abusive domain name registrations. Against that fact would stand the manifest fiction of investing a proxy service company with either good faith or bad faith intentions. This panel takes the pragmatic view that if the identity of the beneficial owner of the domain name is known, can be readily identified, or is revealed by a registrar in response to a complaint, then it should be the named respondent and the case under the Policy should be made against that party.”
(2) Treat the privacy service as the respondent. In The American Automobile Association case, supra, in part due to the particularities of the concerned Provider's Supplemental Rules, the panel came down firmly on the side of the proper respondent being the respondent as defined in paragraph 1 of the Rules, namely “the holder of a domain name registration against which a complaint is initiated” i.e., the privacy service. The panel concluded that the unmasking of the underlying registrant after service of the complaint was a transfer of the domain name registration in breach of paragraph 8(a) of the Policy. They concluded:
“The prohibition against transfer during the UDRP proceeding was aimed at preventing cyberflying and did not anticipate the advent of privacy services. Notwithstanding the ‘pragmatic view,' until the Policy and the Rules are changed, the current Policy and Rules must be interpreted in accordance with the natural and ordinary meaning of their provisions.”
(3) Treat both the privacy service and the underlying registrant as respondents. In all past cases of this kind, which this Panel has decided, complainants who have been provided the registrar-confirmed registrant information by the Center have unanimously filed amended complaints naming the underlying registrants as replacement or additional respondents. In all those cases this Panel has adopted what it feels is a pragmatic approach effectively treating the privacy service and the underlying registrant as one. In this Panel's most recent case, Mark Alan Pearson and Markco Media Limited v. Domains by Proxy, Inc. and China Snake Media, WIPO Case No. D2009-0253 the Panel expressed itself as follows:
“The Panel proposes to treat the Second Respondent [the underlying registrant] as the substantive Respondent and references hereinafter to “the Respondent” are to be construed accordingly.”
As noted in Section 3 above, the Panel continues to prefer the third of these above-listed options.
In an email of March 21, 2009 the Complainant's representatives argue forcefully that the Complaint was lodged against the proper Respondent, that the Complaint is a valid complaint and that there is no call for an amendment.
The Panel is satisfied that the Complainant commenced the proceeding against the correct Respondent and that there is no necessity for it to amend its Complaint to render it compliant with the Policy and Rules. One need look no further than the definition of “Mutual Jurisdiction” in paragraph 1 of the Rules, which provides as an alternative jurisdiction, “a court jurisdiction at the location of … the domain-name holder's address as shown for the registration of the domain name in Registrar's Whois database at the time the complaint is submitted to the Provider.” Clearly it was always intended that a respondent to a UDRP proceeding should be the person identified on the registrar's WhoIs database at the time the complaint is submitted to the provider.
While in the view of the Panel in circumstances such as are present here, there is no need for the Complainant to lodge any amendment to the Complaint, nonetheless, it is appropriate for the Center to provide the registrar-confirmed information to the Complainant and to invite the Complainant to amend its Complaint if it wishes to do so. After all, the unmasking of the underlying registrant might provide scope for the Complainant to strengthen its case.
The Panel also believes that it is sensible for the Center to treat the underlying registrant as a respondent by providing notice of the formal commencement of administrative proceedings to the underlying registrant verified by the registrar as well as to any registrant identified in the Complaint. While there is scope for arguing that the unmasking of the underlying registrant is a transfer in breach of paragraph 8(a) of the Policy and invalid, there are potential difficulties attached to treating it as a nullity, namely:
(a) The wording of the Policy and the Rules leaves room for doubt. The provision of privacy services does not appear to have been contemplated at the time the Policy was introduced. The wording of paragraph 4(c) of the Rules has been construed by some to provide a possible counter-argument in this regard.
(b) The practice of some registrars to permit post-complaint transfers of domain names from privacy services to the underlying registrants has become so commonplace that there may well be a perception in some quarters that it must be a permissible practice; were it otherwise, the authorities would have taken steps to stop it by now;
(c) If the Center were to ignore the “transfer” from the privacy service to the underlying registrant (i.e., the registrar-confirmed registrant information), there may be a risk that the entity most closely associated with the domain name registration would be deprived of the opportunity to make submissions in his/her defence;
(d) If a panel were to ignore submissions from any underlying registrant, the panel would knowingly be excluding evidence relevant to the dispute, a far from satisfactory course. If a privacy service files a response, the submissions of the underlying registrant can readily be treated as the evidence of the respondent, but if, as is the case here, the privacy service fails to respond, that will not be the case.
(e) If a case proceeds against an entity which is not the registrar-confirmed domain name registrant in the registrar's WhoIs database, there may be some risk concerning implementation of the panel's decision. The following is a quote from an email to the Center from the registrar in the Eva Padberg case, supra:
“According to par. 3.8 of Registrar Accreditation Agreement, during the currency of the contract, the Registrar must act according the policy and procedure of disputes in relation to registered domain names.
According to par. 3(c) of the Uniform Domain Name Dispute Resolution Policy the Registrar cancels, transfers or otherwise makes changes in domain name registration data in the case of receipt of Administrative Panel decision requesting this action, but only on condition that the decision relates to administrative proceeding where domain name owner was a party.
On the basis of the abovementioned we notify that since the administrative proceeding (#D2007-1886) is brought against the person who is not the owner of domain name, the decision to transfer domain name eva-padberg.com (in case of such order) will be not fulfilled by Registrar. Other behavior of Registrar would contradict the requirements of the Registrar Accreditation Agreement and the Uniform Domain Name Dispute Resolution Policy, and it would also infringe rights of the third parties.”
This Panel believes UDRP service providers and panelists alike should administer proceedings under the Policy and the Rules “in accordance with the natural and ordinary meaning of their provisions”, where it is practically possible to do so, but recognizing that a more purposive construction might be necessary to give effect to “the overriding intention of the Policy”, namely “to provide a practical alternative to court proceedings to combat abusive domain name registrations.” See inter alia, the Karsten case, supra, and Baumer Holding AG v. Gee Whiz Domains Privacy Service, Domain, Admin, Nevis Domains, WIPO Case No. D2008-1882. In the view of this Panel, no course should be adopted, which puts at risk a fair and effective resolution of the dispute. In particular, panels need to be confident that their orders to transfer are duly carried out.
As will be apparent from the Panel's definition of the privacy service's customer as the “underlying registrant”, the Panel would prefer, as a general rule, to treat a privacy service's “unmasking” of a registrant not as a transfer, but simply the lifting of a veil. This would have the benefit of recognising the practical reality that (a) the use of privacy services appears to be lawful and with us to stay and (b) there seems to be little likelihood of any official, authoritative clarification that paragraph 8(a) of the Policy constitutes a bar on post-complaint transfers of this kind. Retaining the privacy service as a respondent obviates potential problems over the Mutual Jurisdiction clause.
In summary, the Panel finds that (a) the Complaint is compliant with the Policy and Rules, (b) it was appropriate for the Center to provide the Complainant with the registrar-confirmed registrant information and to invite the Complainant (in its discretion) to amend the Complaint, (c) it was appropriate for the Center to provide notice of the commencement of the administrative proceedings to both the Complaint-listed and Registrar-confirmed registrants and (d) it was appropriate for the Center to accept the Response of Nat Collicott (the registrar-confirmed / underlying registrant) as the Response in this administrative proceeding.
In light of the Respondent's consent to transfer of the Domain Name, is it necessary for the Panel to proceed to a reasoned decision?
The panel in Bharat Sanchar Nigam Limited (BNSL) v. Domain Hostmaster, WIPO Case No. D2007-1800 reviews the position as follows:
“As analyzed by the Panel in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, panels, when faced with a “unilateral consent to transfer,” have taken three different approaches. Some panels have granted the relief requested on the basis of Respondent's consent without a review and analysis of the facts supporting the claim. Williams Sonoma, Inc. v. EZ Port, WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri, WIPO Case No. D2000-0195. Others have held that the consent to transfer is effectively a concession that the three elements of the Policy have been satisfied, and ordered transfer on this basis. Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398. Still other panels have proceeded to analyze whether the evidence submitted satisfies the three elements of the Policy. Société Française du Radiotéléphone-SFR v. Karen, WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co., WIPO Case No. D2003-0745.
In the present case, where Respondent, who stated that his registration of Complainant's trade mark was “inadvertent” and resulted from a “semi-automatic process,” has used the domain name at issue that incorporates Complainant's famous mark for more than five years to resolve to a website with links to Complainant's competitors and which displays prominently at the top of the home page Complainant's full corporate name, the Panel elects to follow the reasoning of those panels which found that the consent to transfer is a concession that the three elements of the Policy have been satisfied.”
How panels have approached the issue has depended in most cases on the circumstances under which the respondent came to acquire the domain name in issue and how the respondent has been using it. If there has been a reason to suspect the respondent's motives and/or a reason to ensure that the respondent's bad faith conduct is not swept under the carpet, some panels have felt it appropriate to proceed to a decision (President and Fellows of Harvard College v. Texas International Property Associates, NA NA, WIPO Case No. D2008-0597).
In this case there is nothing to suggest that the Respondent has deliberately set out to act in bad faith towards the Complainant. The circumstances appear to be somewhat similar to those identified in the above quote from the BSNL case, supra. The Respondent states that he acquired the Domain Name as one of a batch of domain names. No more is said on the matter. A possible inference is that the Respondent's acquisition of the Domain Name and his connection of it to a revenue earning parking page was all conducted by way of automated processes with the result that until the Complainant's letter of October 8, 2008 was belatedly drawn to his attention, he was unaware that he had the Domain Name in his portfolio and cannot therefore have had any actual knowledge of the use to which it was being put. On becoming aware of the Complainant's Complaint, the Respondent immediately responds by consenting to transfer of the Domain Name.
Whether or not that accurately describes the position, nobody other than the Respondent can know, but for the purposes of this decision that is the factual scenario upon which the Panel proposes to proceed.
On that basis there might seem to be justification for simply ordering transfer of the Domain Name either on the basis that the consent to transfer is to be treated as a concession that the three elements of paragraph 4(a) of the Policy are present (as in BSNL) or on the more broad brush basis that no purpose will be served by postponing a decision to address paragraph 4(a) of the Policy (Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; The Cartoon Network, supra; Jeffrey Gorman (Jeff Gorman) v. Cocktails For A Cause, WIPO Case No. D2007-1029).
Having reviewed these decisions and the Policy and the Rules, the Panel is of the view that it is not open to him to order transfer without consideration of the merits.
Paragraph 10 of the Rules sets out the General Powers of the Panel as follows:
“(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.”
Paragraph 15(a) of the Rules provides that:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy, having set out the three elements of a compliant complaint concludes: “In the administrative proceeding, the complainant must prove that each of these three elements is present.”
Taking those provisions together, the Panel believes that in this case he must satisfy himself that those three elements are in fact present.
It is tempting to adopt the BSNL approach and treat the consent to transfer as a concession that the three elements of paragraph 4(a) of the Policy are present, but in correspondence between the parties, the Respondent's representative has expressed concern that the Respondent's consent to transfer should not be mis-characterised. Notably, there is nothing before the Panel to merit a finding that the Respondent concedes that he has acted in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
Additionally, the Panel has sympathy with those panelists who have taken the view that once a complainant has invoked the Policy and paid the fee, it is entitled to what it paid for (Sanofi-aventis v. Standard Tactics LLC, WIPO Case No. D2007-1909; Davis+Henderson, Limited Partnership v. Whois Privacy Protection Service, Inc./Demand Domains Inc., WIPO Case No. D2008-1162).
Finally, proceeding to a proper consideration of the three elements of paragraph 4(a) of the Policy reduces the risk of an injustice (e.g., the transfer of a domain name to a complainant with no relevant trade mark rights).
The Domain Name comprises the Complainant's well-known trade mark BLACKBERRY (absent one letter) and the generic domain suffix. Both visually and phonetically the Domain Name and the trade mark are very similar.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
The Complainant makes out a powerful prima facie case that the Respondent acquired the Domain Name with a view to trading on the reputation of the Complainant's well-known trade mark.
The Respondent's use of the Domain Name to connect to a parking page featuring sponsored links, many of which feature references to the Complainant's products, certainly adds weight to the Complainant's contentions.
The only response of the Respondent is to the effect that the Domain Name was acquired as part of a batch; and the implication, inferred by the Panel for the purposes of this case, is that the Respondent did not know what he had acquired.
The fact (if it be a fact) that the Respondent did not know that he had acquired the Domain Name is a fair indication that he can claim no rights or legitimate interests in respect of it for the purposes of paragraphs 4(c) and 4(a)(ii) of the Policy; nor does he do so.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Domain Name is confusingly similar to a very well-known trade mark, BLACKBERRY. The word “backberry” is meaningless and the clear inference is that whoever selected the name, selected it with the Complainant's trade mark in mind. The use, to which the Domain Name is being put, namely a parking page featuring sponsored advertising links, is calculated to attract Internet users to the site in the mistaken belief that they are visiting a site of or associated with the Complainant. The object has to be commercial gain, namely pay-per-click or referral revenue achieved through the visitors to the site clicking on the sponsored advertising links.
Some visitors may believe the site to be a site licensed by the Complainant, given the large number of references to the Complainant's products. Even, if it is the case, however, that the majority of visitors on arriving at the site immediately appreciate that the site is not a site of the Complainant, the operator of the site will nonetheless have achieved commercial gain in the form of a business opportunity, the possibility that a proportion of those visitors will click on the sponsored links.
Thus, whoever selected the Domain Name and put it to the use to which it is now being put clearly did so in bad faith within the meaning of bad faith registration and use as set out in paragraph 4(b)(iv) of the Policy.
Can this be attributed to the Respondent, even though on the factual background set out above, the Panel has accepted for the purpose of this proceeding that the Respondent had no actual knowledge that the Domain Name formed part of the batch of domain names he purchased and therefore that, while he will be likely to have known that the batch of domain names he purchased were connected to revenue earning sites, he had no actual knowledge that the Domain Name was connected to such a site?
In recent years there have been several decisions under the Policy addressing the issue of domainer acquisitions of portfolios of large numbers of domain names in circumstances where the acquiring domainer may not have actual knowledge of every domain name in the portfolio purchased. It would seem that frequently the processes by which these batches of domain names are acquired are automated, as are the processes by which the domain names are subsequently connected to parking pages and the advertising links selected.
These bulk transfers and associated automated processes, frequently conducted by legitimate businesses, are unlikely to have been in contemplation when the Policy was drafted and introduced.
The Policy was introduced to deal primarily with cybersquatters, broadly being domain name registrants whose intentions from the outset have been to target trade mark owners with a view to extorting money from them or causing disruption to their businesses or unfairly exploiting their trade mark rights (Paragraph 4(b) of the Policy). The Policy does not expressly address the problems arising from bulk transfers of domain names by way of automated processes in circumstances where it may be difficult to impute bad faith intent on the part of the acquirer directed towards any particular trade mark owner.
Some panels have sought to get round the problem by correctly drawing attention to the fact that the problem stems from the failure of the respondents to conduct proper due diligence in advance of purchase of a portfolio. Some say that the failure to conduct trade mark searches in advance of purchase may be evidence of bad faith within the meaning of paragraph 4(a)(iii) of the Policy (mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141). Some support that view on the basis that it constitutes “willful blindness” (Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448). Some say that paragraph 2 of the Policy requires a registrant to satisfy himself/herself in advance that “the registration of the domain name will not infringe upon or otherwise violate the rights of any third party” thereby necessitating trade mark searches if a bad faith finding is to be avoided (Media General Communications, Inc. v. WebReg, WIPO Case No. D2006-0964 and Grundfos, supra). However, notwithstanding the fact that paragraph 2 of the Policy applies to all domain name registrants in domains covered by the Policy, to the best of the Panel's information and belief, no panelist has gone so far as to suggest that all registrants should conduct trade mark searches, only “sophisticated” or “professional” domainers' (see, e.g., mVisible and Grundfos, supra).
Calling for due diligence and trade mark searches in order to avoid a finding of bad faith registration and use could be seen as taking the Policy away from its commonly recognized anti-cybersquatting roots. While the Panel understands only too well the justifiable outrage felt by trade mark owners at the unauthorized use of their trade marks in this way for commercial gain, this Panel believes that to deem bad faith within the meaning of paragraph 4(a)(iii) of the Policy for failing to conduct a trade mark search may be a step too far. The 3-member panel in the mVisible case, supra, went even further holding not only that trade mark searches may be necessary, but that they must also be “adequate” and that to be “adequate” “the searches should be properly done to make it likely that any existing trademark rights will be found”. In that case the respondent actually conducted a search of a database maintained on the United States Patent & Trademark Office website, but the panel's criticism of the search was that the database in question did not include pending applications and was only updated annually; accordingly, the database was not up to date at the material time.
This Panel has never favoured constructive knowledge leading to findings of bad faith, but now concedes that these new practices of automated bulk transfers of domain names do necessitate a limited form of constructive knowledge if the Policy is not to fall into disrepute. The Panel believes it appropriate that purchasers of domain names should be taken to have knowledge of (a) what they have purchased and (b) how their domain names are being used. Accordingly, if a domain name, which they have purchased incorporates a third party's trade mark of which they are likely to have knowledge, they should be treated as having acquired that domain name knowingly and knowingly to have put the domain name to the use to which it is being put. Were it otherwise, automated bulk transfers of domain names would be the perfect shield for abusive registrations.
Applying that process to this case, is it likely that the Respondent knew of the Complainant's BLACKBERRY trade mark when he acquired the Domain Name? Yes. Would he have appreciated that the Domain Name was clearly intended to be a confusingly similar mis-spelling of the Complainant's trade mark? Yes. Would he have appreciated that the use to which the Domain Name is being put is an abusive use of the Domain Name within the meaning of paragraphs 4(b)(iv) and 4(a)(iii) of the Policy? Yes.
On that basis and with those findings the Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(b)(iv) and 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 Domain Name, <backberry.com>, be transferred to the Complainant.
Dated: May 8, 2009