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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BlackBerry Limited v. Bryan Fan

Case No. D2015-0464

1. The Parties

The Complainant is BlackBerry Limited of Waterloo, Canada, represented by Davis Wright Tremaine LLP, United States of America ("United States").

The Respondent is Bryan Fan of Waterloo, Canada, self-represented.

2. The Domain Names and Registrar

The disputed domain names <bbmprotected.com> and <blackberryleap.com> are registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 17, 2015. On March 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 19, 2015, 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.

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 March 26, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2015. The Response was filed with the Center on April 15, 2015.

The Center appointed Cherise Valles as the sole panelist in this matter on April 29, 2015. 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.

4. Factual Background

The Complainant is a Canadian corporation providing wireless technologies for the worldwide mobile communications market. It is best known for its wireless BlackBerry handheld device product line and related software, accessories, and services.

BLACKBERRY LEAP is the name of a model of smartphone marketed and sold by the Complainant. BBM PROTECTED is the name of a secure instant messaging software program marketed and sold by the Complainant. The Complainant uses BLACKBERRY LEAP and BBM PROTECTED as trademarks.

For over fifteen years, the Complainant has continuously and extensively used one or more of the BLACKBERRY marks in connection with its products. In addition, it has spent millions of dollars on advertising containing BLACKBERRY marks and promoting its products.

The Complainant is the owner of multiple trademark registrations throughout the world, including in the United States and Canada, for the marks BLACKBERRY and BBM. These include the following:

- United States trademark registration No. 3715717 for the BLACKBERRY logo, registered on November 24, 2009, in class 35;

- United States trademark registration No. 3102687 for the BLACKBERRY logo, registered on June 13, 2006, in classes 9, 38 and 41;

- United States trademark registration No. 3715716 for BLACKBERRY, registered on November 24, 2009, in class 35;

- United States trademark registration No. 2844340 for BLACKBERRY, registered on May 25, 2004, in classes 9, 38 and 41;

- United States trademark registration No. 2700671 for BLACKBERRY, registered on March 25, 2003, in class 38;

- United States trademark registration No. 2672464 for BLACKBERRY, registered on January 7, 2003, in class 9;

- United States trademark registration No. 4468494 for BBM, registered on January 21, 2014, in classes 9 and 38;

- United States trademark registration No. 4459339 for BBM, registered on December 31, 2013, in classes 9 and 38;

- Canadian trademark registration No. TMA890468 for BBM, registered on November 21, 2014;

- Canadian trademark registration No. TMA554207 for BLACKBERRY, registered on November 21, 2001;

- Canadian trademark registration No. TMA554206 for the BLACKBERRY logo, registered on November 21, 2001;

- Canadian trademark registration No. TMA555231 for the BLACKBERRY logo, registered on December 11, 2001;

- Canadian trademark registration No. TMA638068 for BLACKBERRY, registered on April 21, 2005;

- Canadian trademark registration No. TMA659954 for the BLACKBERRY logo, registered on March 1, 2006;

- Canadian trademark registration No. TMA659946 for the BLACKBERRY logo, registered on March 1, 2006;

- Canadian trademark registration No. TMA764275 for BLACKBERRY CURVE, registered on April 15, 2010;

- Canadian trademark registration No. TMA817778 for BLACKBERRY PEARL, registered on February 16, 2012;

- Canadian trademark registration No. TMA843966 for BLACKBERRY STORM, registered on February 20, 2013;

- Canadian trademark registration No. TMA870999 for BLACKBERRY BOLD, registered on February 10, 2014;

- Canadian trademark registration No. TMA872824 for BLACKBERRY WORLD, registered on March 7, 2014;

- Canadian trademark registration No. TMA877552 for BLACKBERRY TRAFFIC, registered on May 9, 2014;

- Canadian trademark registration No. TMA867542 for BLACKBERRY BALANCE, registered on December 17, 2013;

- Canadian trademark registration No. TMA624894 for BLACKBERRY CONNECTION, registered on November 8, 2004;

- Canadian trademark registration No. TMA804707 for the BLACKBERRY logo, registered on August 18, 2011;

- Canadian trademark registration No. TMA804708 for BLACKBERRY PARTNERS FUND, registered on August 18, 2011.

The disputed domain names <bbmprotected.com> and <blackberryleap.com> were registered on May 26, 2014 and February 25, 2015, respectively.

5. Parties' Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

The disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights.

- The disputed domain names are confusingly similar or identical to the Complainant's registered BLACKBERRY and BBM trademarks and common law BLACKBERRY LEAP and BBM PROTECTED trademarks, in light of the fact that they wholly incorporate the Complainant's marks.

The Respondent lacks rights or legitimate interests in the disputed domain names.

- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain names. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.

The disputed domain names have been registered and are being used in bad faith.

- The Complainant asserts that the disputed domain names were registered and are used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.

The Complainant requests the Panel to issue a decision finding that the disputed domain names be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent responded to the Complaint on April 15, 2015. The Respondent agreed to transfer the disputed domain name <blackberryleap.com> to the Complainant, but requested that the Panel deny transfer in respect of the disputed domain name <bbmprotected.com>. The Respondent asserts that "bbm" is a common three-letter acronym, and that in the case of the disputed domain name <bbmprotected.com> the acronym is an abbreviation of "Bryan's Book Marks", for which the Respondent registered the domain name <bryans-bookmarks.com> in July 1999. The Respondent denies that he is using the acronym in bad faith.

6. Discussion and Findings

The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:

(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name was registered and is being used in bad faith.

The Complainant has the burden of proof in establishing each of these elements.1

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the disputed domain names must be identical or confusingly similar to the Complainant's trademark.

The Complainant is the sole and exclusive owner of the BLACKBERRY and BBM marks. The Complainant has submitted evidence in Exhibits D and E to the Complaint demonstrating that it is the owner of multiple trademark registrations in the United States, Canada and worldwide for these marks. Moreover, the Complainant has shown that it uses BLACKBERRY LEAP and BBM PROTECTED as trademarks. By virtue of these activities the Panel finds that the Complainant owns common law trademarks in BLACKBERRY LEAP and BBM PROTECTED for purposes of the Policy. See Metamachine, Inc. v. eDonkey Records, WIPO Case No. D2003-0420. Use of a mark in commerce and marketing, including displaying the mark prominently on a company website, is evidence of common law trademark ownership. United States and Canadian law and the UDRP recognize and protect common law trademarks. See, for example, Capstone Mortgage Co. v. Shook, WIPO Case No. D2004-0395.

The disputed domain name <blackberryleap.com> wholly incorporates the term "blackberry" which is identical to the Complainant's registered BLACKBERRY trademarks. The disputed domain name is also identical to the Complainant's common law BLACKBERRY LEAP trademark, with the addition of the generic Top-Level Domain (gTLD) ".com". The disputed domain name <bbmprotected.com> wholly incorporates the term "bbm" which is identical to the Complainant's registered BBM mark. The disputed domain name is also identical to the Complainant's common law BBM PROTECTED trademark, with the addition of the gTLD ".com".

Numerous earlier UDRP decisions have held that when a domain name wholly incorporates a complainant's registered trademark, it is typically sufficient to establish confusing similarity for purpose of the Policy. See Alstom v. FM Laughna, WIPO Case No. D2007-1736. The addition of the gTLD ".com" is in these circumstances irrelevant in determining whether the disputed domain names are confusingly similar to the Complainant's marks. See Research in Motion Limited v. Banay, WIPO Case No. D2009-0151.

In the light of the foregoing, the Panel finds that the disputed domain names <blackberryleap.com> and <bbmprotected.com> are identical or confusingly similar to the Complainant's registered marks and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain names. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names.

Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name: "Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

The Complainant has established its rights in the BLACKBERRY and BBM marks, and the Respondent has failed to demonstrate its rights in the disputed domain names. In these circumstances, the registration of domain names incorporating another's famous marks does not confer any rights or legitimate interests in the domain names, but rather constitutes bad faith under paragraph 4(b) of the Policy. See PRL USA Holdings, Inc. v. Vivienne Westwood / Contact Privacy Inc. Customer 0126347680, WIPO Case No. D2011-1292.

The Respondent's website for the disputed domain name <blackberryleap.com> bears the message

"Website coming soon! Please check back soon to see if the site is available." In Research in Motion Limited v. Jesse Kaye, WIPO Case No. D2009-1140, the panel concluded that due to the fame of the BLACKBERRY mark and of the BLACKBERRY STORM mark (like BLACKBERRY LEAP, the name of a BLACKBERRY brand smartphone product), and the respondent's failure to make use of the domain name in any meaningful way, the Panel could infer that the respondent had no legitimate interest in the disputed domain name and that the disputed domain name was being used in bad faith. The Respondent himself appears to acknowledge that he lacks rights or legitimate interests in <blackberryleap.com>, as he has indicated his willingness to voluntarily transfer this disputed domain name.

The Respondent claims he has legitimate interests in respect of the disputed domain name <bbmprotected.com> since the term "bbm" is an abbreviation of "Bryan's Book Marks", and since the website for the disputed domain name is for personal use. However, the Respondent does not have any registered trademarks or trade names corresponding to this disputed domain name, and has not provided any evidence suggesting that he is known by, or trades under, the "Bryan's Book Marks" name. Specifically, while the Respondent claims that he registered the domain name <bryans-bookmarks.com> in 1999, he has not filed any evidence is support of this contention. The timing of the Respondent's registration of <bbmprotected.com>, just over a month after the Complainant launched a service with the same name, suggests that the registration was motivated to capitalize on the Complainant's mark.

The Respondent is not in any way associated with the Complainant and has never sought nor received authorization or a license to use the Complainant's BBM trademark in any way or manner, including registering a domain name containing the term "bbm". The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name. Moreover, the Respondent is not an authorized dealer of the Complainant's products and has never had a business relationship with the Complainant. Previous UDRP panels have found that this evidence supports a finding of a lack of legitimate interests. See, for example, Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312.

The website for the disputed domain name <bbmprotected.com> is composed of a single "parking page" (provided by a domain parking service) containing a series of sponsored click-through links for, inter alia, websites pertaining to the Complainant's competitors. Previous panels have established that operating such a link farm parking page using a distinctive trademark in a domain name, and providing connection to goods and/or services competitive with the trademark owner, does not establish rights or legitimate interests. See, for example, Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404.

In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent's website or location or of a product or service on its website or location.

As indicated in Section 4 above, the Complainant's BLACKBERRY and BBM trademarks are registered in numerous countries around the world, including in the United States and in Canada, where the Respondent is located. The Respondent must have been aware of the existence of the Complainant's trademarks given the popularity of the Complainant's products globally. The Respondent registered the disputed domain name <blackberryleap.com> more than 12 years after the registration of one of the BLACKBERRY marks in the United States, more than 13 years after the registration of one of the BLACKBERRY marks in Canada and more than 15 years after the Complainant's first use of the BLACKBERRY marks in commerce. The Respondent registered <bbmprotected.com> just over one month after the Complainant announced the BBM PROTECTED secure instant messaging software product. Previous panels have held that the registration of a domain name "obviously connected with well-known trademarks by someone without any connection to these trademarks suggests opportunistic bad faith". See PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189. The Respondent should be considered to have registered, and to be using, the disputed domain name in bad faith.

As indicated in Section 6B above, the fame of the BLACKBERRY marks and the Respondent's failure to use either of the websites for the disputed domain names in any meaningful way leads to the inference that the Respondent is using the disputed domain names in bad faith.

The Respondent's pay-per-click link farm parking page on the website for the disputed domain name <bbmprotected.com> uses the Complainant's registered BBM trademark and its common law BBM PROTECTED trademark intentionally to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion as to whether the Complainant is the source, sponsor, affiliate or endorser of the Respondent's website. This constitutes bad faith registration and use of the disputed domain name. See Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., supra.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain names under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <blackberryleap.com> and <bbmprotected.com> be transferred to the Complainant.

Cherise Valles
Sole Panelist
Date: May 12, 2015

1 Although the Respondent has already consented to the transfer of one of the disputed domain names, <blackberryleap.com>, the Panel will proceed to render a decision on the merits on both disputed domain names. "The Complainant has paid its fee and is entitled to a reasoned Decision." American Woodmark Corporation v. DN Capital Inc., WIPO Case No. D2014-2016.

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