Complainant is Research In Motion Limited, Waterloo, Ontario, Canada, represented by the law firm Gowling Lafleur Henderson LLP, Canada.
Respondent named in the Complaint is PrivacyProtect.org, Zürich, Switzerland. As noted in Sections 3 and 5 below, the Registrar identified Pluto Domain Services Private Limited, Mumbai, India as the owner of the disputed domain names.
The disputed domain names <blackberru.com> and <blackkberry.com> are registered with Lead Networks Domains Pvt. Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2009. On March 12, 2009, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the disputed domain names. On March 16, 2009, Lead Networks Domains Pvt. Ltd., transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names that differed from the named Respondent and contact information in the Complaint. The Registrar stated that its records indicated that the disputed domain name was registered to Pluto Domain Services Private Limited of Mumbai, India (“Pluto”).
Following its customary practice, the Center on March 16, 2009, sent an email communication to Complainant's representative, informing of this information and inviting Complainant to file an amendment to the Complaint, stating, inter alia, that “such amendment is commonly made by the simple addition of the newly identified registrant [Pluto] to the Complaint (i.e. in addition to the original Respondent)” (Emphasis in original.)
Complainant's representative replied on March 21, 2009, respectfully declining to file an amendment. Complainant's reasons are discussed in further detail below.
On March 24, 2009, the Center requested Complainant's representative to confirm for the record Complainant's election as to the identity of the Respondent. Complainant's representative submitted this confirmation by email communication on March 30, 2009, with a further request for ten days to amend the Complaint should the Panel upon appointment not agree with Complainant's position.
On March 31, 2009, the Center's case manager notified the parties by email that the Complaint was filed with the Center naming a privacy or proxy registration service as the respondent and the Registrar's reply to the center's verification request disclosing “an underlying registrant.” The Center further noted:
“In this case, the Complaint was filed with the Center naming a privacy or proxy registration service as the respondent, and the registrar in replying to the Center's verification request disclosed an underlying registrant. The WIPO Center has invited the complainant to amend the Complaint to reflect the disclosed registrant data. Such invitation would not be regarded by the Center an administrative deficiency, and would thus not be regarded as necessary in order for the Center to be able to proceed administratively with the Complaint. Rather, the Center has received certain registrant data from the concerned registrar in reply to our request for registrar verification which differs from that seemingly contained in the WhoIs at the time the Complaint was filed, and we have provided that information to the Complainant.
The Center would note that in past similar circumstances, Complainants have typically (1) amended the Complaint to add the disclosed underlying registrant as (co-)respondent (i.e., in the alternative), (2) amended the Complaint to replace the privacy or proxy registration service with the underlying registrant, or (3) expressed a preference not to amend, and to rather proceed with the Complaint as filed, confirming that in the Complainant's view, the privacy or proxy registration service be regarded as the sole respondent. Obviously the Center takes no position on a complainant's election of any of the above options, and in any event a determination would typically need to be made by the Panel in its decision as to the identity and conduct of the appropriate respondent.
For avoidance of doubt regarding the Center's notification obligations under the Policy and Rules and to preserve the Panel's discretion (on appointment) to consider any Respondent identity issues or further procedural steps, in this case, the Center will provide a copy of the Complaint to the Respondent as named in the Complaint and to the registrant contact details subsequently disclosed by the Registrar.”
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 named Respondent and Pluto of the Complaint, and the proceedings commenced on April 1, 2009. In accordance with the Rules, paragraph 5(a), the due date for a Response was April 21, 2009. No response was submitted. Accordingly, the Center notified Respondent's default on April 30, 2009.
The Center appointed Richard G. Lyon as the sole panelist in this matter on May 1, 2009. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant, a Canadian corporation, is the manufacturer and seller of mobile communication devices, the most well known of which is sold as a Blackberry. Complainant owns more than 1500 trademark registrations and applications worldwide containing or comprised of the word “blackberry”. It has used this mark in commerce for many years, expends millions of dollars promoting the Blackberry name around the world, and derives substantial revenue from the sale of its Blackberry devices. Complainant's principal website is <www.shopblackberry.com>. Complainant has never authorized either the named Respondent or Pluto to use its BLACKBERRY trademarks.
One disputed domain name was registered in 2005, the other in 2007. Each disputed domain name resolves to a webpage consisting entirely of hyperlinks to mobile communications products and services. One of these the links included Complainant's BLACKBERRY mark and the names of products and services sold by Complainant.
Before proceeding to the merits of this proceeding the Panel shall comment on the identity of Respondent, though as stated in Section 6 in this case it matters naught whether PrivacyProtect.org, the Respondent named in the Complaint, or Pluto be deemed the actual Respondent.
The Policy and Rules were adopted prior to the existence of privacy services and take no account of anything but a single respondent. See Rules, paragraph 1, which defines Respondent as “the holder of a domain-name registration against which a complaint is initiated.” Since the advent of proxy registrations and privacy services panels in Policy proceedings have not reached a consensus on how to deal with this practice. As catalogued in Divex Limited v. ZJ, Sam Chang and Tim NG, WIPO Case No. D2007-0861, most panels appear to treat as the respondent the person or entity that has engaged the privacy service, even when that person or entity cannot be identified, see Association Robert Mazars v. Private Whois Service, c/o mazarsrevenge.com, WIPO Case No. D2009-0183. Other panels, including some very recent cases,1 have suggested that the definition of the Respondent in the Rules should be interpreted literally. As argued forcefully by Complainant here, paragraph 8(a) of the Policy2 lends support to this latter approach should the Panel accept Complainant's argument (also supported by some decisions) that the proceeding commences upon Complainant's filing its Complaint with the provider.
Complainant further contends that requiring an amendment would put Complainant to additional expense, and that delay between the filing a complaint and the date of an amendment is inconsistent with the Policy's underlying purpose of providing a speedy means of combating cybersquatting. Complainant thus takes issue with the Center's practice, set forth in the quoted language above, of inviting an amendment. In Complainant's words, “the Complainant sees no authority under the Policy and Rules for WIPO's request that the Complainant amend its Complaint.”3
The Center itself noted that determination of the proper respondent may have serious practical consequences such as the mutual jurisdiction to which the parties agree to submit. Here the named respondent is located in Switzerland, the registrar-identified domain name owner in India – not an insubstantial distinction. Occasionally the choice of respondent may affect the merits, see Divex, supra.
The Panel acknowledges that none of the arguments advanced by Complainant is frivolous, and acknowledges further that these matters are evidently of concern to Complainant, which is forced by cybersquatters' affinity for its marks regularly to file Policy complaints to protect its intellectual property rights. Complainant's concern over undue delay is especially understandable. Some domain name holders have intentionally used privacy services to evade the Policy or delay a properly instituted proceeding. Occasionally registrars have through carelessness or intent abetted such holders; offending registrar conduct has ranged from inexcusable delay in responding to providers' verification requests to open defiance of paragraph 8's proscription on transfer while proceedings are pending.4
But these issues are not as black and white as Complainant argues. Ever since the first recorded decision by a Center-provided panel, World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001, the Center has treated proceedings as “commencing” upon notification of the complaint, not its filing. While the “filing” of a Complaint may suffice to render a proceeding “pending” for the purpose of paragraph 8 of the Policy, paragraph 4(c) of the Rules makes clear that the date of “commencement” is the date on which the provider completes its verification of the Complaint and forwards it to the Respondent.5 This Panel is not prepared almost a decade later unilaterally to declare this practice inconsistent with the Policy and Rules, which it manifestly is not. This Panel endorses the Center's approach to the post-Policy practice of proxy registration as an appropriate and fair procedure intended to address the interests of all parties to a dispute. The Center does not require an amendment, as its communications with Complainant here made plain. Rather the Center offers a complainant the opportunity to amend, and leaves ultimate resolution to the discretion of the panel. Even where (as in this proceeding) the complainant declines to amend the Center “employ[s] reasonably available means calculated to achieve actual notice to Respondent” (Rules, paragraph 2(a)) by transmitting the complaint to both the party and address for respondent in the complaint and to the other entity provided by the registrar. In this Panel's opinion the Center's practice is a pragmatic choice that advances the purpose of the Policy.
A bright line rule determining the identity of the proper respondent by strict adherence to the Whois data base at the date the complaint is prepared (and perhaps – but not always – filed) could easily frustrate the Policy, for example by mooting responsible registrars' recent practice of disclosing a domain name's underlying registrant upon receipt of a Policy complaint; see discussion in Bittorrent Marketing GmbH v. AdIntensity Ltd, Adam Smith, WIPO Case No. D2007-1033, section 6-B.6 A more practical approach of having panels address particular issues in the particular factual circumstances in which they arise while awaiting possible amendment of the Policy or the Rules, or a provider's adoption of a duly considered supplemental rule, better serves all parties and the public interest as well as the Policy's objectives. That may mean in certain cases that a panel will treat differently the Policy's proof requirements in privacy service cases, especially when the case's facts suggest circumvention.7 Or it may mean use of a panel's discretion under paragraph 12 of the Rules to request additional information appropriate in a particular proceeding. It should not mean a Procrustean approach that may do as much harm as good.
In this case the Panel will honor Complainant's election to proceed against PrivacyProtect.org. The Panel is satisfied that the Complaint was appropriately filed in this case, and that the Complainant's election not to amend the Complaint to reflect the name of “Pluto Domain Services Private Limited”, (the Registrar-identified underlying registrant) does not render the Complaint administratively deficient. The principal reason for this is that in this Panel's view a registrant that chooses to register through a privacy service and the registrar that provides such registration must bear some of the consequences of anonymous registration. See F. Hoffmann-La Roche AG v. PrivacyProtect.org, Domain Admin and Mark Sergijenko, WIPO Case No. D2007-1854; Ohio Savings Bank v. 1&1 Internet, Inc. and David Rosenbaum, WIPO Case No. D2006-0881. Neither Complainant nor the provider is to blame if the underlying registrant fails to receive actual notice of this proceeding because it selected a registrar that did not ensure re-transmission of applicable notice to the actual registrant. In any event, the Center in this case prudently forwarded a copy of the Complaint both to the Privacy Provider and to the Registrar-disclosed underlying registrant. The Panel would also have considered a response from Pluto, if any had been submitted, and regards the latter as also being at least an appropriate substantive Respondent.
The Panel is also influenced by the obvious case of typosquatting shown on the record, as discussed in the following section, which calls for immediate resolution of the merits.
Complainant's evidence has established both elements of paragraph 4(a)(i) of the Policy. Complainant has registered trademarks around the world, and comparable rights accruing from usage and widespread recognition of BLACKBERRY. Both disputed domain names are close misspellings of this word. Similarity and confusion are obvious.
Both domain names are classic examples of typosquatting intentional close misspellings of a prominent trademark. Both are intended to nab careless typists who are seeking Complainant. One has an extra “k” and the other substitutes a “u” for a “y” at the end of the word, “u” being the letter immediately to the right of “y” on a standard English computer keyboard. Typosquatting is presumptive in most cases well-nigh conclusive evidence of registration in bad faith, as engaging in this practice reveals Respondent's knowledge of Complainant's mark and an attempt “to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location” (Policy, paragraph 4(b)(iv)). Subsequent use that includes references or links to Complainant, Complainant's competitors, or Complainant's industry both reinforces such knowledge and constitutes use in bad faith, as held by many panels. Nothing in the record in this proceeding overcomes this presumption. Complainant has met its burden of proof under paragraph 4(a)(iii) of the Policy.
Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name: Complainant has not authorized Respondent to use its marks, Respondent uses the disputed domain names commercially, and Respondent is not known (insofar as the record reveals) by the word “blackberry” or indeed by either of the domain names. Under well-established Policy precedent the burden thus shifts to Respondent to provide evidence of a bona fide use or other defense. Respondent has stood silent.
It might be argued that a registrar such as Respondent has a legitimate interest in registering any domain name. Registering a portfolio of domain names is an everyday business that by itself may be entirely lawful. Privacy services may likewise be legitimate in the absence of proof of abuse. And the ICANN name registration system requires a registrar to register a domain name upon its receipt of a proper registration agreement duly completed by a registrant; a registrar is forbidden to undertake any investigation to verify for example, the truth of a registrant's representation and warranty that “to [the registrant's] knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party.” (Policy, paragraph 2(b)) If a registrar registers for its own account, when faced with a Policy proceeding it still must demonstrate its own legitimate interest in the domain name at issue, and may not be willfully blind to the marks of third parties. If for example a registrar or privacy service registers as agent, as appears to be the case here, it obtains no greater rights than its principal, the person engaging its privacy service. True, a complainant that chooses not to name a known principal as co-respondent may find it more difficult to make a prima facie case under paragraph 4(a)(ii) of the Policy against the principal, and is definitely vulnerable to the principal's advancing a defense (perhaps through the privacy service respondent) based upon its own interest or use. By limiting its case against PrivacyProtect.org, Complainant took that risk.8 That presents no issue in this proceeding, since it is difficult to imagine any person or entity that is entitled to engage in typosquatting on a famous trademark as a legitimate interest. The presumption and reasoning set forth in section B need to be overcome to establish legitimacy. Complainant has met its burden of proof under 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 domain names, <blackberru.com> and <blackkberry.com> be transferred to Complainant.
Richard G. Lyon
Dated: May 11, 2009
1 E.g., Mark Alan Pearson and Markco Media Limited v. Domains by Proxy, Inc. and China Snake Media, WIPO Case No. D2009-0253, although the panel did proceed to find the party that had engaged the privacy service (and not the privacy Service itself) to be the substantive Respondent.
2 Paragraph 8 provides in relevant part that “You [respondent] may not transfer your domain name registration to another holder (i) during a pending administrative proceeding brought pursuant to Paragraph 4 or for a period of fifteen (15) business days (as observed in the location of our principal place of business) after such proceeding is concluded.”
3 Complainant identifies Baylor University v. Domains by Proxy, Inc. aka Mark Felton aka Thomas Bassett aka William Bunn aka Fertility Specialists of Dallas aka Becky Chatham aka Amanda Scott aka Nathan Flaga aka Lisa Payne aka Victor Weir III, NAF Case No FA1145651 (2008) as the “leading case” on this subject. As the text following makes clear, this Panel's views differ in some respects from those expressed in Baylor. But, as should be apparent from the other cases cited in this Decision, it is inappropriate to consider Baylor or any other case “leading” in so unsettled an area.
4 The Registrar involved in this proceeding has been singled out as engaging in practices “undermin[ing] the efficacy of the UDRP in both spirit and letter.” See April 9, 2009 letter from the Center to ICANN, available at http://www.wipo.int/export/sites/www/amc/en/docs/icann090409.pdf.
5 Paragraph 4(c) reads: "The date of commencement of the administrative proceeding shall be the date on which the Provider completes its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent."
6 Nor is it entirely clear that a registrar's disclosing the underlying registrant's contact information is a “transfer” proscribed by paragraph 8.
7 As stated by the dissenting panelist in Bacchus Gate Corporation d/b/a International Wine Accessories v. CKV and Port Media, Inc., WIPO Case No. D2008-0321: “In the new era of privacy services, it is not appropriate to apply the same burdens of proof that were strictly insisted upon in the past.With the adoption of privacy services, the rules of the game have changed. Panelists can no longer use the traditional approach. Panelists may be more proactive in determining the facts of the case.”
8 Subject, of course, to its request for time to amend if the Panel ordered an amendment or treated Pluto as the sole proper respondent.