WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BlackBerry Limited v. Han Truong, HANTRUONG
Case No. D2018-0617
1. The Parties
The Complainant is BlackBerry Limited of Waterloo, Ontario, Canada, represented by Davis Wright Tremaine LLP, United States of America.
The Respondent is Han Truong, HANTRUONG of Ho Chi Minh, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <blackberry-go.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 March 21, 2018. On March 21, 2018, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the disputed domain name. On March 22, 2018, the Registrar transmitted by e-mail 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 17, 2018.
The Center appointed Jon Lang as the sole panelist in this matter on April 30, 2018. 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 leading designer, manufacturer and marketer of innovative wireless solutions for the worldwide mobile communications market and is best known for its BlackBerry handheld device. It operates an extensive website featuring information about its goods and activities throughout the world at “www.blackberry.com”. The Complainant has obtained numerous trademark registrations for BLACKBERRY in the United States of America, Viet Nam (the Respondent’s location) and throughout the world (collectively the BLACKBERRY Marks or BLACKBERRY trademark in the singular), including U.S. Registration No. 2,672,464 for BLACKBERRY, which has a registration date of January 7, 2003. The registration claims use as early as January 19, 1999.
The Respondent registered the disputed domain name (the Domain Name) on September 24, 2010. The Domain Name resolves to the website “www.chalosoft.com” (the Chalosoft Website), which markets, promotes and offers for sale, e-commerce software and services and custom application development, including development of BlackBerry apps. The Respondent is also the registrant of <chalosoft.com>.
5. Parties’ Contentions
The following is a summary of the Complainant’s main contentions.
For over 17 years, the Complainant has continuously and extensively used one or more of the BLACKBERRY Marks in connection with one or more of its products. It has spent millions of dollars in advertising using the BLACKBERRY Marks, generating hundreds of millions of dollars in sales each year. By virtue of a long history of use throughout the world, as well as sales and promotional activities, the BLACKBERRY Marks have generated valuable goodwill. The BLACKBERRY Marks enjoy protection under the Paris Convention worldwide.
The Domain Name is confusingly similar to the BLACKBERRY Marks:
The Domain Name simply combines the BLACKBERRY mark with the generic term “go,” (and the generic top level domain “.com”). It is a well-established principle that a domain name that wholly incorporates a trademark, particularly one that is as famous as the BLACKBERRY mark, would likely be found to be confusingly similar for the purposes of the Policy notwithstanding that the domain name may contain other descriptive or generic words. Indeed, the addition of generic or descriptive terms may not diminish but in fact strengthen the confusing similarity between domain name and mark.
The Respondent lacks any rights or legitimate interest in the Domain Name:
The Respondent cannot demonstrate any legitimate interest in the Domain Name. Registration of a domain name incorporating another’s famous mark does not confer any rights or legitimate interests in that domain name, but rather constitutes bad faith under paragraph 4(b) of the Policy.
Where, as here, a complainant’s marks and name are so well-known and so widely recognized, there can be no legitimate use by a respondent.
The Respondent had knowledge of the Complainant’s BLACKBERRY Marks when it registered the Domain Name, and its choice in registering the name cannot be explained as anything other than a misappropriation of the Complainant’s trademarks. As noted earlier, the Respondent sells services related to BlackBerry apps and has clearly misappropriated the Complainant’s BLACKBERRY Marks to advance its services.
The fact that the Domain Name resolves to the Chalosoft Website, which promotes competing products and services as well as services associated with BlackBerry, but fails to disclose its lack of authorization by the Complainant, leads to the conclusion that the Respondent was seeking to create an impression of association with the Complainant which does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the Domain Name.
There exists no relationship between the Complainant and Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name. Moreover, the Respondent is not commonly known by the Domain Name.
The Respondent registered and is using the Domain Name in bad faith:
The registration of a domain name so obviously connected with a well-known trademark by someone without any connection to such trademark, suggests opportunistic bad faith.
The Chalosoft Website markets services related to the Complainant suggesting that the Respondent is using the Domain Name in bad faith.
The fact that the Domain Name resolves to the Chalosoft Website is designed to make it (the Chalosoft Website) appear as an official, authorized vendor of the Complainant, which it is not. The Respondent’s use of the BLACKBERRY trademark in connection with the Chalosoft Website is clearly an attempt to mislead viewers into believing that the Complainant is affiliated with Chalosoft. The Respondent is using the Domain Name intentionally to attract, for commercial gain, Internet users to the Chalosoft Website, by creating a likelihood of confusion with the BLACKBERRY Marks as to the source, sponsorship, affiliation, or endorsement of the Chalosoft Website or of products or services available from that website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the BLACKBERRY Marks.
Ignoring the generic Top-Level Domain “.com” (as the Panel may do for comparison purposes), the Domain Name comprises the BLACKBERRY trademark, followed by a hyphen and the word “go”. As the BLACKBERRY trademark and Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity involves a comparison between the trademark and the domain name to determine the likelihood of Internet user confusion. To satisfy the test, the trademark to which the domain name is said to be confusingly similar would generally need to be recognizable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent confusing similarity. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between trademark and domain name.
The BLACKBERRY trademark is clearly recognizable within the Domain Name. It is a well-known mark and the first and dominant element of the Domain Name. The only issue therefore is whether the addition of “-go”, renders the Domain Name something other than confusingly similar to the Complainant’s BLACKBERRY trademark. Clearly it does not and hence the Panel finds that the Domain Name is confusingly similar to the BLACKBERRY trademark for the purposes of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to ask whether there would be anything inappropriate in such a finding.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is 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. Here, however, the Respondent is not known by the Domain Name and given the nature of the (confusingly similar) website to which the Domain Name resolves, the Panel would not accept that there is legitimate noncommercial or fair use. Moreover, any noncommercial or fair use must be without intent to mislead but it is likely in fact (in the absence of any alternative explanation), that the very purpose in the Respondent choosing the Domain Name was to deliberately create a false impression of association with the Complainant. In Drexel University v. David Brouda, WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. That seems to be the case here.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it would be difficult to accept that a non-authorized website to which a domain name resolves, which so obviously takes advantage of the renown of the trademark of another (such that Internet users may well be misled), could amount to a bona fide offering, particularly where such website promotes competing products and services as well as services associated with the Complainant or its trademark (and fails to disclose its lack of authorization).
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent has not come forward with a Response or taken any other action to address the Complaint. The contentions of the Complainant by which it has made out a prima facie case that the Respondent has no rights or legitimate interests, have not been contradicted or challenged, or cast into doubt by the brief analysis set out above. Accordingly, the Panel finds that the Respondent lacks rights or legitimate interests in respect of the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy and is satisfied that there is nothing inappropriate in such a finding.
C. Registered and Used in Bad Faith
One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it (paragraph 4(b)(iv) of the Policy).
The Respondent was clearly aware of the Complainant’s BLACKBERRY trademark given the (unauthorized) use to which the Domain Name has been put. The purpose behind the registration appears to have been to attract Internet users to the Respondent’s website using a domain name confusingly similar to the Complainant’s BLACKBERRY trademark. In other words, precisely the circumstances envisaged above and accordingly, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <blackberry-go.com> be transferred to the Complainant.
Date: May 9, 2018