WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BlackBerry Limited v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Patrascu Vlad
Case No. D2015-1484
1. The Parties
The Complainant is BlackBerry Limited of Waterloo, Ontario, Canada, represented by Davis Wright Tremaine LLP, United States of America (“USA”).
The Respondent is Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia / Patrascu Vlad of Bucharest, Romania, represented by Balulescu Cristian.
2. The Domain Name and Registrar
The disputed domain name <bbpgp.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 20, 2015. On August 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 21, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on August 25, 2015.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 27, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2015. The Center received an informal communication from the Respondent on August 21, 2015. The Response was filed with the Center on September 15, 2015.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on September 24, 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.
On October 1, 2015, the Complainant sent to the Center, and copied to the Respondent, an unsolicited Supplemental Filing, which the Center forwarded to the Panel. On October 1, 2015 the Respondent sent an email to the Center, which forwarded it to the Panel, asking that the Supplemental Filing should not be accepted.
4. Factual Background
BlackBerry is the name of a range of products and services in the sphere of consumer electronics and communications. In broad terms BlackBerry devices are commonly referred to as smartphones, capable not only of communicating by telephone but of sending and receiving communications by email, fax and text, together with other features such as Internet access and web browsing. The name BlackBerry is often abbreviated by users and commentators to “BB” and this is one of the Complainant’s trademarks.
The Complainant holds numerous trademarks internationally in three categories: BB, BLACKBERRY, and a logo geometric design comprising seven spots.
The Complainant has produced a listing of registered trademarks for BB in 21 countries or country groupings, and others pending, of which the following are representative:
BB, European Community Trademark, registered June 28, 2012, registration number 009104449, classes 6, 9, 11, 20, 21, 28, 35, 36, 37, 38, 39, 41, 42, 45;
BB, Singapore Trademark, registered October 21, 2013, registration number T1005394B, classes 9, 38;
BB, Switzerland Trademark, registered May 9, 2011, registration number 615029, classes 6, 9, 11, 16, 18, 20, 21, 28, 35, 36, 37, 38, 39, 41, 42, 45.
The Respondent trades in the after market for consumer electronics, offering in particular to install encryption software on BlackBerry devices. In a previous dispute under the Policy (BlackBerry Limited v. Teodor Cristian Remus / Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, WIPO Case No. D2015-0860, dated July 7, 2015), the domain name <blackberryencryptedphones.com>, through which the respondent in that case traded, was ordered to be transferred to the present Complainant. On July 15, 2015, the same previous respondent wrote to the Center saying, among other things, that it already owned the presently disputed domain name <bbpgp.com>, and the Center could so inform the Complainant. The disputed domain name had been registered on June 2, 2015.
5. Parties’ Contentions
The Complainant contends that it has rights in the registered trademark BB and has submitted a list detailing its BB trademark registrations in 21 countries or country groupings, together with BB trademark applications pending in certain other countries. The Complainant additionally asserts rights in the trademark BB under common law in jurisdictions including the USA and throughout the world. It says that consumers and others routinely refer to BlackBerry as BB, and BB is the Complainant’s ticker symbol on the Toronto Stock Exchange. The Complainant also provides details of its numerous trademarks internationally for BLACKBERRY and for its logo design.
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark BB. The addition of the generic or descriptive term “pgp”, which refers to encryption software, does not diminish confusing similarity to BB but strengthens it. The generic Top-Level Domain (“gTLD”) “.com” should be disregarded in the determination of confusing similarity.
The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no relationship with the Complainant and has not been authorized in any way to incorporate the Complainant’s trademark in the disputed domain name. The Complainant’s trademarks and name are so well known and widely recognized that there can be no legitimate use by the Respondent.
The Complainant says the Respondent must have known of the Complainant’s BB trademarks when it registered the disputed domain name. Being a reseller of the Complainant’s products would not give the Respondent any right to use the Complainant’s trademark without authorization. The Respondent’s display of the Complainant’s trademarks on the website of the disputed domain name is capable of suggesting that the Respondent is an authorized reseller of the Complainant’s products and has some association with the Complainant. The Respondent purports to be able to offer buyers of at least eight BlackBerry devices the opportunity to become a BlackBerry dealer.
The Complainant contends that the Respondent is not commonly known by the disputed domain name, and is not making a legitimate noncommercial or fair use of it.
The Complainant further contends that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant submits that in accordance with previous decisions under the Policy, the registration of a domain name obviously connected with a well-known trademark by someone without any connection to the trademark suggests opportunistic bad faith unless the Respondent can demonstrate otherwise.
The Complainant infers that the Respondent in the present case is effectively the same as in the case of BlackBerry Limited v. Teodor Cristian Remus / Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, supra, concerning the domain name <blackberryencryptedphones.com>. The Complainant’s reasons include:
(i) that both registrants had the same underlying contact details, including email address;
(ii) that the websites to which <blackberryencryptedphones.com> and the presently disputed domain name have resolved have considerable similarities;
(iii) that the Respondent reacted to the transfer of <blackberryencryptedphones.com> to the Complainant by sending an email to the Center dated July 15, 2015 in which it declared itself to be the owner of the presently disputed domain name, in the following terms (verbatim):
“In my opinion this is unfair, why ICANN gave me the right to register this domain name, and after i invest time and money in it, someone like you came and say i am using a trademark in the domain name, and i have to close my domain. This is the biggest lie i ever saw, who is paying me for my time and money? At the beginning when i saw this dispute, i gave my faith in the right judgment of the arbitration part, but i was wrong, evident he gave right to the one who pay …. that is why nothing in this world is right …. however you can let Blackberry INC that we already own BBPGP.com, and they can sue us for trademark anymore ….”
The Complainant says, furthermore, that the disputed domain name was registered on June 2, 2015, being 16 days after the Complainant sent a Digital Millennium Copyright Act (DMCA) notice and a cease and desist notice in the case concerning <blackberryencryptedphones.com>.
The Complainant contends that the Respondent is intending to derive commercial benefit through confusion between the Complainant’s trademark and the disputed domain name and by means of the similarity in layout between the Complainant’s and the Respondent’s websites.
The Complainant contends that the use of a privacy service for a domain name being used in a commercial context implies registration and use in bad faith unless the Respondent can demonstrate otherwise. The Complainant also says that the street address provided by the Respondent appears to be false, or at least incomplete.
The Complainant has cited numerous previous decisions under the UDRP that it considers may be supportive of its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent denies the Complaint.
In terms of confusing similarity between the disputed domain name and the Complainant’s trademark, the Respondent contends that “www.BB-Shop.ro” is a website similar to the Respondent’s.
The Respondent says it does not sell any BlackBerry product, but offers PGP open source software to customers who already own a BlackBerry phone.
It is contended that the term BB is derived from the Respondent’s “Best Buddy” PGP and cannot be confounded with BlackBerry.
The Respondent states that it offers its services to customers in Romania only, and indicates the Romanian address given on its contact page.
The Respondent states that as the owner of <bbpgp.com> it applied on August 25, 2015 for the trademark BBPGP and expects to receive the trademark within two months. An image of the Romanian application form is produced in evidence.
In respect of the Respondent’s rights or legitimate interests in the disputed domain name, the Respondent contends that, before notice of the dispute, there was evidence of its use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
In respect of registration and use in bad faith, the Respondent contends that the disputed domain name was registered to represent its motto: “Best Buddy PGP”, and reasserts several of the points made above.
6. Discussion and Findings
A. Procedural Matters
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
Paragraph 1 of the Rules defines a respondent as “the holder of a domain-name registration against which a complaint is initiated”. The Registrar has disclosed that the recorded holder of the disputed domain name is Patrascu Vlad. The Panel finds that no Response is required from Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, being a privacy protection service enabled by the Respondent. All other references herein to the “Respondent” refer to the registrant of record, Patrascu Vlad.
The formal Response was received from Balulescu Cristian with a street address in Romania that differs from that of the Respondent of record as disclosed by the Registrar, but has the same telephone number. The Panel will treat the Respondent of record as being informally represented by Balulescu Cristian.
Paragraph 12 of the Rules provides that the Panel, in its sole discretion, may request further statements or documents from either of the Parties. The Complainant’s communication to the Center dated October 1, 2015 was forwarded to the Panel as an unsolicited Supplemental Filing. Proceedings under the Policy are expected to be conducted expeditiously (Rules, paragraph 10(c)). As observed by the panel in Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703, in a different context: “[a] Complainant should ‘get it right’ the first time and should have provided all the information necessary to prove its case from the material contained in the Complaint and its annexes alone. There is no right of reply under the Rules.” Having read the Supplemental Filing, the Panel found it not to be of significant assistance and has decided in accordance with paragraphs 10 and 12 of the Rules that it shall not be admitted to this proceeding.
B. Identical or Confusingly Similar
The Panel is satisfied by the Complainant’s certification, uncontested, that it holds numerous registrations for the trademark BB worldwide. It is also accepted solely for the purpose of this proceeding that the Complainant has rights in the unregistered trademark BB in the USA and other countries in which it has not necessarily acquired a registered trademark for BB.
The disputed domain name is <bbpgp.com>. Generally the gTLD designation of a disputed domain name, in this instance “.com”, may be disregarded in the determination of confusing similarity. What remains is “bbpgp”. The disputed domain name can be considered to be composed of the elements BB and PGP. The latter is widely understood within the world of computing and communications to mean Pretty Good Privacy, i.e., not the most advanced encryption available within the limits of technology, but nevertheless “pretty good”. The “BB” element coincides with the Complainant’s trademark in its entirety.
Noting that the first element of the UDRP serves essentially as a standing requirement, with the threshold test for confusing similarity involving a comparison between the trademark and domain name with the latter generally needing to be recognizable as such within the domain name to satisfy such test, the Panel considers that the inclusion of the Complainant’s BB trademark in its entirety, as the first element of the disputed domain name, is sufficient to establish that the disputed domain name is confusingly similar to the Complainant’s trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
While not necessarily relevant under the threshold test, the Panel observes that the Respondent has asserted that the term BB in the disputed domain name is derived from the Respondent’s “Best Buddy” PGP and cannot be confused with BlackBerry. Especially in the light of the Respondent’s specific references on its website to BlackBerry, e.g., “BlackBerry® Q10 True End-To-End Encryption”, the Panel prefers the interpretation that BB in the disputed domain name refers and is intended to refer to the Complainant’s trademark BB.
The Respondent also advances the argument that the website “www.BB-Shop.ro” exists. This matter does not impinge on whether the disputed domain name is confusingly similar to the Complainant’s trademark.
In the Panel’s view at least some Internet users being confronted with a search result or otherwise discovering the disputed domain name could be confused, at least initially, into expecting that it would lead to the Complainant’s Internet location. Accordingly the Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has asserted that the Respondent has not been licensed or authorized in any way to use the Complainant’s trademark.
Paragraph 4(c) of the Policy provides for the Respondent to rebut the Complainant’s prima facie case and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(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 Respondent claims in effect that its use of the disputed domain name is for the purposes of a bona fide business in the terms of paragraph 4(c)(i) of the Policy.
The Respondent has described its business with the disputed domain name as the provision of PGP encryption software in connection with BlackBerry devices. The consumer electronics industry is followed by a considerable after market for additional software and hardware and the Panel need not question the legitimacy of the Respondent’s products per se in this proceeding. Neither does the Panel need to consider if the Respondent could conduct its business over the Internet and in an otherwise legitimate manner through a suitably generic domain name. It cannot be legitimate, however, for the business to be conducted through a domain name that exploits the strength of another company’s well-known and valuable trademark. The Panel finds that the Respondent’s use of the disputed domain name, incorporating the Complainant’s trademark BB in a manner which causes confusion as to the source of the services in the website at the disputed domain name and the relationship with the Complainant, does not qualify to be considered bona fide in the terms of paragraph 4(c)(i) of the Policy. There is no evidence that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy and the Respondent’s Romanian application for the trademark BBPGP, having been made after receipt of notice of the Complaint, cannot be taken into account. See WIPO Overview 2.0, paragraph 2.7. The use of the disputed domain name is clearly not noncommercial (paragraph 4(c)(iii) of the Policy).
Accordingly the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant is required to prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted 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 website or location or of a product or service on your website or location”.
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found otherwise by the Panel.
The Complainant has referred to previous decisions in which, on the relevant facts, the use of a privacy service for a commercial website led to a presumption of bad faith (e.g., Stuart Weitzman IP, LLC v. ty / Privacy Protection Service Inc., d/b/a PrivacyProtect.org, WIPO Case No. D2015-0480). Registrants may avail themselves of a privacy service for benign reasons and the Panel does not find this action, in and of itself, necessarily to be associated with bad faith intent.
As the Complainant submits, the provision of false or incomplete contact details has commonly been held to be supportive evidence of bad faith. In an email dated August 21, 2015, being the day after the Complaint was filed, the Respondent, through its informal representative, sent an email to the Center providing a contact postal address and email address. The Notification of Complaint and Commencement of Administrative Proceeding sent by the Center by courier to the Respondent’s name and address of record was reported to be undeliverable owing to a wrong address, however the same sent to the name and address provided in the email of August 21, 2015, and in the formal Response, after initially finding the “Customer Not Home”, was eventually reported as “Consignment Delivered To Residential”. Notices sent to the Respondent by email appear to have been satisfactorily delivered.
The Respondent duly responded and the Panel does not find the Respondent to have acted in bad faith to the extent of having attempted avoidance of service of the Complaint.
Paragraph 4(b)(iv) of the Policy is, however, pertinent. The Respondent’s email of July 15, 2015 to the Center reproduced in Section 5.A above, in respect of the domain name <blackberryencryptedphones.com>, states in part, “we already own BBPGP.com”. This concession of common or related ownership of the disputed domain name and <blackberryencryptedphones.com>, with identical contact details, and the similarity of the websites to which these domain names have resolved, together with the use of the word “we” in “we already own BBPGP.com”, lead reasonably to the conclusion that the two domain names have been owned by at least a common guiding entity if not the same individual. It may therefore be concluded that the Respondent was aware of the Complainant’s trademark at the time of registration of the disputed domain name.
The owner of <blackberryencryptedphones.com> had motivation to re-establish its website at a replacement domain name after it was transferred pursuant to the previous UDRP case, but could not expect to create one featuring another version of the Complainant’s trademark. By so doing it has created a likelihood of confusion with the Complainant’s BB trademark as to the endorsement of the Respondent’s website, in order to attract business for commercial gain. The confusion is compounded by the Respondent’s use of words and imagery identical to or emulating those found on the Complainant’s authentic website and by the Respondent’s use of phraseology implying that the Respondent was able to grant dealership status to purchasers of eight or more BlackBerry devices. The Respondent’s website is accessible internationally and the Respondent cannot excuse its use of another’s trademark by claiming that it does so only in Romania.
On the basis of the evidence, the Panel finds on the balance of probabilities that the disputed domain name has been used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and it is clear from the Respondent’s email of July 15, 2015 that the disputed domain name was registered for the purpose for which it has been used. The Panel finds registration and use of the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.
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 name <bbpgp.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: October 5, 2015