The Complainant is Research In Motion Limited of Waterloo, Ontario, Canada, represented by Novak Druce & Quigg LLP, United States of America.
The Respondent is John Heck of Indianapolis, Indiana, United States.
The disputed domain name <blackberrystormtwo.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2009. On November 25, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 30, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the domain name is registered with GoDaddy.com, Inc. and that the Respondent, John Heck, is the registrant of the domain name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name
Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 2, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2009. The Respondent did not submit a formal Response. There is, however, on file an email to the Center from the Respondent dated December 28, 2009 apparently sent from the Respondent's iPhone (No. 317[]) stating:
“Have the website, I don't care!! I don't even know what is going on!”
A further email from the Respondent dated December 29, 2009 states:
“Will someone just contact me via phone? John.”
A final email from the Respondent dated January 5, 2009 states:
“Call someone please call me about this subject 317[]”
There is no evidence before the Panel of any later communication from the Respondent.
Given that the Respondent is in default in not submitting a Response, the Panel proceeds to determine the Complaint on the basis of the Complainant's Complaint and supporting evidence.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on January 12, 2010. 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, Research In Motion Limited is a corporation organised and existing under the laws of Ontario, Canada. It was founded in 1984 and is based in Waterloo, Ontario. It has offices in North America, Europe, Asia Pacific and has been listed on the Toronto Stock Exchange since 1997 and on the Nasdaq Index since 1999. The Complainant is a leading designer, manufacturer, and marketer of innovative wireless solutions for the worldwide mobile communications market. Its portfolio of award winning product services and embedded technologies are used by thousands of organisations around the world.
It is the owner of the BLACKBERRY trademark. It has developed and markets a highly successful line of products, accessories and services in connection with the mark BLACKBERRY including BLACKBERRY smart phones which the Complainant asserts have become iconic in the wireless telecommunications industry. It has used the mark BLACKBERRY since 1999 and is the owner of, inter alia, United States (“US”) trademark registration Nos. 2762464, 2700671, 2402763, 2678454, 2672472, 2700678, 2844339, 2844340, 2842571, 3098588 and 3102687 all incorporating the mark BLACKBERRY. A schedule of United States registrations for BLACKBERRY is annexed as Annex 4 to the Complaint together with copies of the United States registrations as Annex 5. Additionally, the Complainant owns more than 1,500 pending trademark applications and subsisting registrations in over 120 countries worldwide for the BLACKBERRY mark and other trademarks incorporating the mark BLACKBERRY.
The Complainant also owns registrations for the mark BLACKBERRY STORM in Austria, Cambodia, Laos, Lebanon, Albania, Monaco and Mongolia, as can be seen from Annex 6 to the Complaint. It also has pending applications for that mark in countries around the word including the United States and Canada. The Complainant also asserts that as a result of its use and extensive promotion since 2008 of the mark BLACKBERRY STORM, it has acquired common law rights in the mark. By way of example, at Annex 8 to the Complaint is a copy of a Verizon wireless online advertisement for the Blackberry Storm Smartphone. Additionally, the Complainant produces in evidence extracts from its Annual Report for 2009, at Annex 9 to the Complaint, which demonstrates that the Complainant has expended significant resources in the promotion and advertisement of the BLACKBERRY marks. Examples of advertising are annexed as Annex 10 to the Complaint.
The Complainant submits that BLACKBERRY has become one of the most recognised and respected brands in the industry. It enjoys widespread recognition among consumers in the trade and is a source of significant goodwill for the Complainant. It submits on the evidence that the mark has become a famous mark. It also produces evidence that the BLACKBERRY brand was recently listed 16th in a survey of the top 100 most powerful brands.
The background to the present Complaint is that on August 23, 2009 a Boy Genius Report leaked information regarding a purported Blackberry smartphone model that had yet to be released by the Complainant identifying this model as the BLACKBERRY STORM. A copy of this is annexed at Annex 16 to the Complaint. A week later the Respondent registered the domain name in dispute; <blackberrystormtwo.com>. The Complainant publicly announced the release of the BLACKBERRY STORM2 smartphone in a press release dated October 15, 2009.
As a result of the Respondent's activity in registering the domain name, the Complainant sent a cease and desist letter to the Respondent on September 29, 2009. A copy is annexed at Annex 18 to the Complaint. The Respondent sent an email response to this letter on October 2, 2009 denying that the website infringed the Complainant's trademark rights and stating that the website was currently being used as a personal blog. At Annex 2 is a copy of a printout of the home page from the Respondent's site entitled “Mr Henry's Website” as it appeared on October 7, 2009 after the Respondent was clearly placed on notice as to the Complainant's rights.
In the absence of a Response from the Respondent, the Panel accepts the truth of the above facts and the evidence as adduced by the Complainant.
The Complainant submits:
(i) that the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
(ii) The Respondent has no rights or legitimate interests in the disputed domain name. In particular, it submits:-
(a) The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services
(b) The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
(c) The Respondent has not been commonly known by the disputed domain name.
(iii) The domain name is registered and is being used in bad faith. The Complainant relies upon the inference that the Respondent was well aware of the Complainant's famous mark at the time of the registration of the domain name and that it registered the domain name in bad faith with intent to profit from and exploit the Complainant's mark after he had been put on notice of the Complainant's trademark rights.
The Respondent did not reply to the Complainant's contentions.
The Complainant, for the reasons set out above, has established that it has trademark rights in the marks BLACKBERRY and BLACKBERRY STORM.
In the Panel's view the inclusion of the suffix “two” and the <.com> generic top level domain (“gTLD”) do not detract from the confusing similarity of the disputed domain name with the Complainant's marks BLACKBERRY and BLACKBERRY STORM. The fact that the Complainant offers a line of Blackberry smartphones and accessories including the Blackberry Storm2 smartphone adds to the likelihood of confusion arising from the Respondent's use of the disputed domain name.
It follows that the Complainant has succeeded in proving this element within paragraph 4(a)(i) of the Rules.
(i) The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.
There is no evidence before the Panel that the Respondent has established rights or legitimate interests in the disputed domain name. Given the correspondence between the parties the Panel takes the view that the Respondent was, very likely, aware of the Complainant's rights in its mark when it registered the disputed domain name.
The Respondent has no affiliation with the Complainant and has not been authorised or licensed by the Complainant to use the mark BLACKBERRY. The Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.
(ii) The Respondent Is Not Making a Legitimate Noncommercial or Fair Use of the Disputed Domain Name
The use of the disputed domain name by the Respondent does not reflect any legitimate attempt to make any fair use of the Complainant's mark BLACKBERRY. For example, for the purposes of noncommercial use or fair use.
(iii) The Respondent has not been commonly known by the disputed domain name.
There is no evidence before the Panel that the Respondent can claim to have been commonly known by the disputed domain name within paragraph 4(c)(ii) of the Policy. There is no evidence that the Respondent has been known either by use of the mark BLACKBERRY or BLACKBERRY STORM.
It follows that the Complainant succeeds in respect of this element of the Policy within paragraph 4(a)(ii).
The evidence of the registration and use of the domain name in dispute and in particular the exchange of correspondence between the parties is in the Panel's view sufficient to justify a finding of bad faith registration and use. In particular, the Panel places emphasis upon the registration of the disputed domain name following the Boy Genius Report and the Respondent's persistence in maintaining the registration despite the cease and desist letter and the evidence of the Complainant's trademark rights.
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 <blackberrystormtwo.com> be transferred to the Complainant.
Clive Duncan Thorne
Sole Panelist
Dated: January 28, 2010