WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Research In Motion Limited v. Rem-art
Case No. D2012-1397
1. The Parties
The Complainant is Research In Motion Limited of Waterloo, Ontario, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is Rem-art, Remmert van Braam of Amsterdam, the Netherlands, represented by Th. Papachatzidis, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <blackberryx.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2012. On July 10, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 2012, 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. On July 11, 2012, the Center sent an email communication to the Complainant inviting it to amend the Complaint, namely paragraphs 6, relating to the identification of the disputed domain name, and 88, relating to the notification of the Respondent of the present proceeding. The Complainant filed an amended Complaint on July 11, 2012.
The Center verified that the Complaint together with the amended 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 July 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2012. The Response was filed with the Center on July 19, 2012. On August 2, 2012, the Center notified parties about commencement of the panel appointment process.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on August 9, 2012. 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 filed an amended Complaint to correct a clerical error in the initial Complaint brought to its attention by the Center on July 11, 2012. The Respondent’s legal representative filed what it referred to as a statement of defense by way of email to the Center on July 19, 2012. In an email to the Respondent on July 20, 2012, the Center noted that the deadline for filing a Response was August 1, 2012, and indicated that in the absence of any further communication from the Respondent it would treat the email communication of July 19, 2012 as its full Response. No further communication was received from the Respondent.
4. Factual Background
The Complainant is the owner of 4000 trademark registrations worldwide containing or consisting of the word mark BLACKBERRY. The Complainant attaches a table referencing a number of CTM, US and Canadian trademark registrations for the word mark BLACKBERRY, for that mark with a design, and with the word “connection”.
The disputed domain name was registered on March 21, 2006.
5. Parties’ Contentions
The Complainant asserts that it is a global company that generated revenue of USD 19 billion in 2011. It markets a line of products, accessories and services in connection with the BLACKBERRY trademark, including the Blackberry smartphone. It has expended considerable resources in the promotion and advertising of the BLACKBERRY trademarks, amounting to hundreds of millions of US dollars since 2001, as it asserts. It has a significant Internet presence, in particular through its website at “www.blackberry.com” and also “www.shopblackberry.com”. In 2010 the Blackberry brand was rated 14 in the Top 100 Global Brands ranking in BrandZ. Interbrand ranked it 54th in 2010.
The Complainant contends that the Respondent, without the permission of the Complainant, has registered the disputed domain name, which resolves to a website comprised of a single page advertising the sale of the disputed domain name in the following manner: “BlackberryX.com FOR SALE - Contact Rem-art for enquiries about this domain name”. The Complainant asserts that in response to a cease and desist letter from the Complainant, the Respondent offered to sell the disputed domain name to the Complainant for EUR 15,000.
In response to the position the Respondent has adopted, that “blackberry” is the English translation of his surname, the Complainant asserts that the surname of the Respondent is “Van Braam” and not “Braam”, and accordingly, the disputed domain name is only a partial translation of his last name. Further, the Complainant stresses that the disputed domain name includes the letter “x” at the end, which further distinguishes the disputed domain name from the Respondent’s surname, as he is not known as “BlackberryX” or “BraamX”.
The Complainant asserts that the Respondent has a high degree of online sophistication having been a web designer since at least 2002 and also operating a website which connects web designers and programmers. As well, the Complainant asserts that the Respondent is the owner of at least 16 domain names that contain third party trademarks to which he has no apparent entitlement, including <jamesbondlifestyle.net>, <jamesbondlifestyle.org>, <jamesbondquantumofsolace.com> and <007-store.com>.
The Complainant contends that the Respondent’s reasons for the registration are a contrived, transparent and ill-conceived attempt to legitimize what is clearly an abusive domain name registration. According to the Complainant, the Respondent did not act in good faith at the time of the registration and registered the disputed domain name in the hope of extracting a financial windfall from the Complainant, as is apparent from the surrounding circumstances.
Further, the Complainant asserts that incorporation of a complete trademark, or such a trademark with the addition of descriptive elements, such as the letter “x” in this case, does not militate against a finding of confusion. In fact the addition adds to the confusion, because it suggests a particular Blackberry product is available at the relevant website. Therefore, the Complainant submits that the disputed domain name is confusingly similar to the BLACKBERRY trademarks of the Complainant.
The Complainant contends that it is a well-established principle that an unauthorized party cannot claim a legitimate interest in a domain name that contains or is confusingly similar to a complainant’s mark, as the activities of such a party cannot amount to bona fide offering of goods or services. Intentional trading on the fame of another’s trademark is said not to be bona fide, nor is there any evidence the Respondent has ever used or intended to use the disputed domain name or a corresponding name for the bona fide offering of goods or services.
Nor, according to the Complainant, is the Respondent licensed or in any way authorized to register or use the BLACKBERRY trademark in any manner. The Respondent has also not been commonly known under the name “Blackberry” or “BlackberryX”, and there is no evidence to suggest it makes or intends to make a legitimate noncommercial or fair use of the disputed domain name. The Respondent’s surname defense is not credible, particularly in the light of his opportunistic behavior in seeking a financial windfall from the Complainant. In any case, the Complainant argues that allowing a case to be made out on the basis of a partial translation of a name would set a dangerous precedent.
Further, the Complainant submits that the disputed domain name was registered in bad faith, as is evidenced by the offering for sale on the website and directly to the Complainant. The Complainant also contends that the Respondent has engaged in a pattern of registering domain names incorporating trademarks that he has no entitlement to. A pattern of abusive registration is evidenced by at least 16 such registrations. The Complainant also contends that the disputed domain name was registered for the purpose of disrupting the Complainant’s business. If the disputed domain name were ever put to use, it would be disruptive to the Complainant as potential consumers would likely be confused into believing that the Respondent’s website was somehow affiliated with, or sponsored by, the Complainant.
The Complainant also contends that the Respondent has registered the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement. The fact that the website to which the disputed domain name resolves is not active is no bar to this contention. Further, in relation to bad faith, the Respondent being a sophisticated and professional web user must have had knowledge of the BLACKBERRY trademarks at the time of registration. Further, the inactivity of the disputed domain name also supports a finding of bad faith. The disputed domain name has been inactive for over 6 years, the Complainant asserts.
The Respondent refutes the Complainant’s contention that the registration of the disputed domain name was contrived and abusive. The Respondent, who is referred to as “Braam” as opposed to “Van Braam” throughout the Response, asserts that he intended to establish a website and platform for all family members of the Braam clan in the Netherlands and abroad. His intention was also to create a genealogical register and discover how the Braam clan has branched out. The clan is said to be old and some of its members have emigrated around the world. The Respondent asserts some of them have changed their name to Braam rather than Van Braam. Since the word “blackberry” is the English translation of the Dutch word “braam”, the Respondent asserts he chose the word “blackberry” as the translation of the most significant part of the name “Van Braam”. The addition of “x” was intended to indicate the unknown factor inherent in genealogical research.
The Respondent asserts that he has not abandoned his plan concerning a genealogical website, although he has not acted upon it, and is now considering and planning the use of the website to link to him as a provider of website services. It is said to be a playful reference to his last name, to which he has patronymic rights.
Further the Respondent asserts that he has not infringed the intellectual property rights of the Complainant since the website to which the disputed domain name resolves is inactive. It does not therefore link any consumer to a competing website or commercial service nor does it create confusion. The Respondent asserts that any future use will not be competitive or cause confusion, and the Respondent offers to submit evidence to that effect, which would establish that the intended use is noncommercial. Although the disputed domain name was for sale for the first 4 years of its registration, the Respondent intends to withdraw the offer.
The Respondent also disputes that there is a pattern of abusive registration, and asserts that it is nonsense to say that the disputed domain name was registered to disrupt the Complainant’s business, since the Respondent is not acting in the field of telephony, and certainly not under the relevant name, and does not intend to be. Rather the Respondent registered the disputed domain name because he develops websites for clients and therefore has had to register 77 domain names for customers and for his personal or professional plans and projects. The registrations concerned are therefore part of a legitimate business activity, the Respondent asserts. Further, there has never been any intellectual property claim or dispute involving the Respondent. The Respondent asserts he has not obtained any financial gain from the disputed domain name since it is inactive. Legal representative for the Respondent asserts that the Respondent will remove the “for sale” sign at the relevant website when he returns from holidays.
Further, the Respondent asserts that the Complainant cannot be “extremely concerned” about the registration of the disputed domain name since it did nothing about it for 6 years. The Respondent asserts that the “trade mark registration buro” advised him to give up the registration to avoid legal costs and subject to compensation. The Complainant should not obtain the disputed domain name without paying such compensation, since the Respondent will have to abandon legitimate future uses and also the disputed domain name reflects his own surname. No confusion or infringement is caused by any product or service provided at the relevant website, as it is inactive and has been “for sale” for a number of years.
The Respondent asserts that he objects to being portrayed by the Complainant as an opportunistic registrant who only seeks a windfall profit of EUR 15,000. The Complainant declares repeatedly that his family name is a very old one; that intended future use will not result in confusion; that he will not use the disputed domain name in a commercial manner; and that he will take up the project which is very important to him and his family who are committed to it.
Finally, the Respondent opposes to the request of the Complainant and offers to submit any information and data showing the future intended use, which was not sent to the Respondent’s representative due to the Respondent’s absence abroad during the 20 day period of this filing.
6. Discussion and Findings
On a preliminary question, the Respondent asserts, through his legal representative, that he has certain good faith intentions in relation to the website to which the disputed domain name resolves. His legal representative on his behalf offered to submit information and data in relation to such future intended use. His legal representative asserts that such material is not attached to the Response because of the absence of the Respondent during the 20 day period of filing.
The Center sent an email communication to the Respondent on July 20, 2012 indicating that the Respondent had time until August 1, 2012 to file a complete and final Response. The Center received an “Out of office” reply dated July 20, 2012 from Remmert van Braam, the Respondent, indicating he would not return until August 7, 2012. On August 2, 2012, the Center notified parties about commencement of the panel appointment process. In reply, the Center received an “Out of Office” response dated August 2, 2012 from the Respondent’s legal representative indicating she would only return on August 11, 2012.
The Panel is of the view that the Respondent’s statements concerning his intentions, and his offer to provide further material is of no consequence. The Respondent was clearly able to take the time to instruct his legal representative as to the details of his defense, and it would take very little to provide any associated documentation that would support it. The Respondent could have removed the “for sale” statement on the relevant website very easily, given his expressed intention in that regard.
But more importantly, in this Panel’s view as stated below, the Respondent’s assertions rest on the false foundation that the fact that his name is “Van Braam” somehow gives him a right or legitimate interest in exploiting a website that resolves to the disputed domain name either as a “genealogical” site or as a site offering legitimate website development services. The Panel is of the view that the Respondent’s assertions in this regard contradict the evidence before it, that the reliance on his personal name amounts to little more than a smokescreen, and that his assertions about the impact of his absence on his ability to submit further material within the regulatory deadlines is to be interpreted in that light. Rather, the Panel is of the view that the real reason the evidence was not submitted is that it is not available.
Therefore the Panel considers that it should proceed on the basis that the email communication of the Respondent of July 19, 2012 constitutes the full and final Response.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the well-known trademark BLACKBERRY of the Complainant. Although the disputed domain name is not identical to the Complainant’s trademark, the generic letter “x” does nothing to distinguish the disputed domain name to any relevant extent from the Complainant’s trademark. The Complainant’s trademark is very distinctive and recognizable to consumers, whose attention will immediately be drawn to the mark itself as it forms the overwhelming portion of the disputed domain name. Some consumers might indeed take the disputed domain name to be referencing a particular product in the Complainant’s catalogue of telephony products and accessories, as the Complainant contends.
Therefore, the Panel holds that the disputed domain name is confusingly similar to the Complainant’s registered trademark BLACKBERRY.
B. Rights or Legitimate Interests
The Complainant’s trademark is distinctive and well-known, in particular amongst consumers familiar with the use of the Internet, web-based communications and telephony. The Complainant has not authorized the Respondent to use its trademark in any way or to reflect it in any registered domain name. The Respondent does not do business by reference to, or have any trademark or trade name rights in the word “blackberry”. The Respondent is, on the evidence before the Panel, not concerned with any activities concerning blackberries.
Leaving aside the fact that the Respondent has actually offered the disputed domain name for sale from the website to which it resolves, and offered to sell it to the Complainant directly, and has not in fact developed a genealogical site relating to his surname, the Panel must consider the Respondent’s contention that he has some right or legitimate interest in his family name in translation. Although it may, in certain circumstances, be the case that legitimate interests or rights in a distinctive mark or name extend to that same mark or name in translation, that is clearly not apposite in this context. The notion that family members with the name “Van Braam” or “Braam” would look out for a website with the name “BlackberryX” because this is substantially a translation of an element of their family name is not founded in reality. Individuals with the name “(Van) Braam” interested in knowing more about that name and the underlying family origins will search for that name and not English translations of that name that neither look nor sound similar. To develop a website under the name “BlackberryX” for the sake of attracting individuals with the name “(Van) Braam”, interested in their own surname and its history, or in finding others with that name, would amount, in the Panel’s view, to an exercise in futility. The Respondent’s submissions in this regard are without merit.
Further, the Respondent has in reality not put any of his supposed plans into effect, although he has owned the disputed domain name for 6 years or so. He has not submitted any evidence of a legitimate intention in this regard, and has offered differing accounts of what he allegedly intends to do with the relevant website, one connected to family genealogy and the other to his business as a website developer.
Therefore, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The trademark BLACKBERRY is well-known around the world, as is illustrated by the turnover and advertising expenditure figures contained in the Complaint. That the Respondent, who is also a sophisticated web user, was aware of the Complainant’s trademark at the time of registration is therefore self-evident in this Panel’s view. The addition of the letter “x” further indicates that the Respondent was engaged in a deliberate, calculated and abusive course of conduct when he registered the disputed domain name. His subsequent offering of the disputed domain name for sale generally and specifically to the Complainant, provides further support for that view.
The disputed domain name is very distinctive in the context of telephony and the Internet, and very widely advertised, and the Panel has already concluded that the Respondent’s argument concerning legitimate right or fair use based on his surname is spurious. The Respondent has had a considerable amount of time to develop a website resolving to the disputed domain name for some legitimate use, but has not in fact done so. Instead, the Respondent has offered the disputed domain name for sale. Therefore, the evidence before the Panel supports the view that the Respondent registered and used the disputed domain name because its fame would provide him with an opportunity to make money by riding on the coattails of the Complainant’s well-known trademark. The arguments the Respondent puts forward are without foundation and evidently spurious, and they do not advance his cause in terms of establishing good faith registration and use.
Therefore, the Panel holds that the disputed domain name was registered and used in bad faith.
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 <blackberryx.com> be transferred to the Complainant.
William A. Van Caenegem
Date: August 23, 2012