The Complainant is Research In Motion Limited of Waterloo, Ontario, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is Montego Diversified Media of Miami, Florida, United States of America appearing pro se.
The disputed domain name <blackberrymovies.com> is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2009. On April 29, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On April 29, 2009, Tucows Inc. 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”).
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 May 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 27, 2009.
The Center appointed Knud Wallberg as the sole panelist in this matter on June 5, 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 is a leading designer and manufacturer of innovative wireless solutions for the worldwide mobile communications market. The Complainant was established in 1984 and is now a global company with offices in North America, Europe and in the Asia Pacific region.
Furthermore, the Complainant has developed and marketed a line of products, accessories, smart phones and services in connection with the BLACKBERRY trademark. The BLACKBERRY smart phone is available on over 300 networks in over 100 countries worldwide. The Complainant has since 2001 incurred hundreds of United States dollars in promotional expenses for the BLACKBERRY trademarks.
The Complainant has registered and uses <blackberry.com>, where information and support services for the BLACBERRY products can be found, and also operates a website at <shopblackberry.com>, wherefrom BLACKBERRY products and related accessories are sold.
The Complainant is the owner of over 1500 trademark registrations and applications worldwide containing, or comprised of, the element “Blackberry”.
The Respondent registered the domain name <blackberrymovies.com> on March 5, 2006. The disputed domain name is used to hyperlink to “www.pdaflix.com”, which promotes the sale of downloadable movie services for BLACKBERRY, PALM LG and WINDOWS MOBILE devices for USD 29.99.
The Complainant sent the Respondent a cease and desist letter on March 3, 2009. The Respondent did not respond to the letter.
The Complainant contends that the Domain Name is confusingly similar to its BLACKBERRY mark. The Complainant states that the non-distinctive element “movies” does nothing to diminish confusion.
The Complainant states that there is no evidence to suggest the Respondent has ever used or demonstrated preparations to use, the <blackberrymovies.com> domain name, or a name corresponding to same, in connection with a bona fide offering of goods or services.
Furthermore, the Complainant states that the unauthorized use of the domain name is likely to mislead or confuse the public into believing that the Complainant has authorized or endorsed the Respondent's activities.
It is further alleged by the Complainant that the Respondent has attempted to exploit the Complainant's reputation and goodwill to drive traffic to its website.
The Complainant asks for a decision that the domain name be transferred to it.
The Respondent did not reply to the Complainant's contentions.
According to paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) that the Respondent has no rights or legitimate interests in respects of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
It has been satisfactorily established that the Complainant has registered rights in the mark BLACKBERRY.
The Panel finds that the domain name is confusingly similar to the BLACKBERRY marks. The addition of the descriptive term “movies” does not change the possibility of confusion. Many Internet users would suppose that the Domain Name refers to a website of or was authorized by the Complainant to sell downloadable movie services for BLACKBERRY.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled.
According to the Complaint the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark.
The Panel is satisfied that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the domain name.
It has to be pointed out that in accordance with paragraph 4(c) of the Policy, a registrant may demonstrate that it has rights or legitimate interests in a domain name where (i) it used or made demonstrable preparations to use the domain name or a corresponding name in connection with a bona fide offering of goods or services before notice of the dispute; (ii) it has been commonly known by the domain name; or (iii) it is making a legitimate non-commercial or fair use of the domain name without intent to misleadingly divert consumers or tarnish the complainant's mark. The examples in paragraph 4(c) are not exhaustive, but are more likely to be perceived as indicating the kinds of circumstances which may be regarded as giving rise to a right or legitimate interest of a respondent in a disputed domain name, see, inter alia, Dr. Ing. h.c. F. Porsche AG v. ANC Online Avrasya Bilisim Tekn San ve Dis Tic A S, WIPO Case No. D2006-0912.
The Complainant states the an unauthorized party (in this case the Respondent) cannot claim a legitimate interest in a domain name that contains, or is confusing with, a complainant's mark, as the activities of such a party cannot be said to constitute a bona fide offering of goods or services, see, inter alia, Dr. Ing. h.c. F. Porsche AG v. ANC Online Avrasya Bilisim Tekn San ve Dis Tic A S, supra. Further, the Complainant is arguing that the use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services, and to conclude otherwise would mean that a respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the Policy, see, inter alia, Pfizer Inc. v. Enamecorp.com, WIPO Case No. D2001-0791.
The Respondent has not rebutted this by way of a formal Response or otherwise. The Respondent could thus not credibly claim that the domain name is intended to be used for any legitimate interests and such a claim would in any event also be contrary to the way the Respondent has been using and is still using the contested domain name as a hyperlink to “www.pdaflix.com”, which promotes the sale of downloadable movie services for BLACKBERRY, PALM LG and WINDOWS MOBILE devices for USD 29.99.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
Paragraph 4(a)(iii) of the Policy further provides that the Complainant must prove the Respondent's registration and use of the domain name in bad faith. Paragraph 4(b) of the Policy sets out, by way of example, the kind of evidence that may be put forward.
Bad faith registration will be found where a Respondent is using a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement.
The <blackberrymovies.com> domain name contains the whole of the BLACKBERRY trademark, and the distinctive element of the BLACKBERRY trademarks. Accordingly, the domain name is likely to confuse potential consumers into believing that the Respondent is somehow affiliated with, or endorsed by, the Complainant. Further enhancing a likelihood of confusion is the Respondent's use of images of the Complainant's BLACKBERRY device as well as offering services for personal digital assistants (“PDAs”), including for the BLACKBERRY device.
Furthermore, the Respondent's website is commercial in nature by selling movie services for USD 29.99. The disputed domain name is being used to attract potential consumers to the website with the intended purpose of putting the Respondent in a position to get a commercial benefit from the said use by creating a likelihood of confusion with the BLACKBERRY trademarks as to source or sponsorship of the domain name.
Furthermore, the Respondent is offering downloadable movies for competitor PDAs, which renders the Respondent a competitor of the Complainant. By offering services for the BLACKBERRY device that are not authorized by the Complainant, the Respondent is offering services that compete with, or rival, those offered by the Complainant and its authorized networks.
Consumers are therefore likely to be misled into believing that the Respondent's website is somehow affiliated with, or endorsed by, the Complainant. The use of the domain name, the BLACKBERRY trademark and the images of the BLACKBERRY devices on the Respondent's homepage are likely to create an impression in the minds of consumers that the Respondent is somehow authorized by the Complainant.
The Panel therefore finds that the Respondent has registered the <blackberrymovies.com> domain name for the purpose of disrupting the business of the Complainant, a competitor of the Respondent.
Even though, the Respondent's website includes a disclaimer at the bottom of the page which indicates the Respondent is not associated with the Complainant, the existence of a disclaimer cannot cure bad faith, as it has been established by other factors. The disclaimer appears at the bottom of the page and also appears after the customer's ordering option, which also does nothing to cure bad faith, see, inter alia, Pliva, Inc. v. Eric Kaiser, WIPO Case No. D2003-0316.
Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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, <blackberrymovies.com> be transferred to the Complainant.
Dated: June 19, 2009