WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BlackBerry Limited v. Teodor Cristian Remus / Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org

Case No. D2015-0860

1. The Parties

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

The Respondent is Teodor Cristian Remus of Bucuresti, Romania / Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org of Nobby Beach, Australia, self-represented.

2. The Domain Name and Registrar

The disputed domain name <blackberryencryptedphones.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 May 20, 2015. On May 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 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 May 22, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 22, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 28, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2015. The Response was filed with the Center on May 24, 2015 before the commencement of the proceeding. The Center later sent email on May 28, 2015 asking the Respondent to confirm this submission as the final Response. The Respondent did not reply by the due date for Response. The Center therefore acknowledged the receipt of the Response on June 18, 2015. The Panel will exceptionally take into account and examine the facts and the arguments filed outside the time frame for Response by the Respondent.

The Center appointed Daniel Peña as the sole panelist in this matter on June 25, 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 designer, manufacturer and marketer of innovative wireless solutions for the worldwide mobile communications market, best known for its high-quality wireless BlackBerry handheld device product line and related software, accessories, and services.

The Complainant 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, Canada, and throughout the world.

The Complainant also has registrations and/or applications for BLACKBERRY trademarks in these other jurisdictions: Argentina, Australia, Bahrain, Brazil, Canada, Chile, China, Colombia, European Union, Dominican Republic, Ecuador, Egypt, El Salvador, Guatemala, India, Indonesia, the Islamic Republic of Iran, Israel, Jamaica, Japan, Kenya, Kuwait, Lebanon, Malaysia, Mexico, Morocco, New Zealand, Nigeria, Pakistan, Panama, Paraguay, Peru, Philippines, Qatar, the Russian Federation, Saudi Arabia, Singapore, South Africa, Republic of Korea, Switzerland, Taiwan, Province of China, Thailand, Turkey, United Arab Emirates, Uruguay, Venezuela and Viet Nam.

The list of registered trademarks owned by the Complainant includes Reg. No. 2,672,464 for the trademark BLACKBERRY, for use with electronic handheld units for the wireless receipt and/or transmission of data, that enable the user to keep track of or manage personal information; software for the redirection of messages, global computer network email, and/or other data to one or more electronic handheld units from a data store on or associated with a personal computer or a server; and software for the synchronization of data between a remote station or unit and a fixed or remote station or unit. The registration date for the said mark is January 7, 2003, and the registration alleges use of the mark in commerce in connection with the goods at least as early as January 19, 1999.

Some of the Complainant’s U.S. trademark registrations for BLACKBERRY are now “incontestable,” meaning that these registrations provide conclusive evidence of (a) the validity of the mark depicted in those registrations, (b) BlackBerry’s ownership of the mark, and (c) BlackBerry’s exclusive right to use the mark in U.S. commerce in connection with the goods and services identified in the registrations. See15 U.S.C. §§ 1065, 1115(b). Registration No. 2,844,340 for the mark BLACKBERRY is an example of an incontestable registration.

The disputed domain name was created on March 28, 2015.

5. Parties’ Contentions

A. Complainant

For over fifteen years, the Complainant has continuously used one or more of the BLACKBERRY trademarks in connection with one or more of the Complainant’s products.

The Complainant has spent millions of dollars in advertising containing BLACKBERRY trademarks and promoting the Complainant’s products. BlackBerry’s marketing efforts, combined with its attention to the quality, design and construction of its products, generate hundreds of millions of dollars in sales each year. By virtue of their long history of use throughout the world and in the United States, as well as BlackBerry’s sales and promotional activities, the BLACKBERRY trademarks have generated valuable goodwill.

Due to the extensive registration, use and promotion of the BLACKBERRY trademarks around the world, BLACKBERRY trademarks have become famous under the laws of the United States, and BLACKBERRY trademarks have obtained the status of notorious marks and therefore enjoy liberal protection under the Paris Convention worldwide.

The Respondent registered the disputed domain name <blackberryencryptedphones.com> on March 28, 2015, more than 12 years after the registration of one of the BLACKBERRY trademarks in the United States and more than 15 years after BlackBerry’s first use of the BLACKBERRY trademarks in commerce.

The disputed domain name <blackberryencryptedphones.com> entirely contains the BLACKBERRY trademarks with the addition of the generic Top-Level Domain (“gTLD”) “.com”.

The Respondent operates a website at the disputed domain name <blackberryencryptedphones.com> on which the Respondent claims copyright protection in the name of “BlackBerryEncryptedPhones.com”, stating “Copyright © 2015 BlackBerryEncryptedPhones.com. All Rights Reserved”.

The Complainant did not authorize the Respondent to make use of the Complainant’s BLACKBERRY trademark in either the disputed domain name <blackberryencryptedphones.com> or the Respondent’s own apparent trade name.

The Respondent displays on the website the Complainant’s BLACKBERRY trademarks in a commercial manner—to resell the Complainant’s products as purportedly modified by the Respondent.

The Respondent does not disclose anywhere on the website its lack of authorization by the Complainant. To the contrary, the Respondent holds itself out as at least an affiliate of the Complainant, selling “BlackBerry®” products and offering to the public the opportunity to “Become a Dealer.”

The Complainant provided a notice pursuant to Title II of the Digital Millennium Copyright Act (17 USC § 512) (a “DMCA notice”) to the Respondent’s Internet Service Provider (“ISP”) notifying it that the Respondent’s website displayed unauthorized copies of the Complainant’s copyrighted photographs.

Through its website, the Respondent previously unlawfully exploited copyrighted images owned by the Complainant by featuring those images throughout the website without the Complainant’s authorization. Examples of the specific images infringed by Respondent on the website include, but are not limited to, the following:

The Respondent’s website previously contained infringements of BlackBerry’s copyrighted images appearing at the following URLs:

- “http://ca.blackberry.com/smartphones/blackberry-leap.html”

- “http://ca.blackberry.com/smartphones/blackberry-z30.html”

- “http://ca.blackberry.com/smartphones/blackberry-passport.html”

In light of the Respondent’s unauthorized and bad faith use of the BLACKBERRY trademarks in the disputed domain name, the Complainant requests that the Panel order the transfer of the disputed domain name <blackberryencryptedphones.com> to the Complainant.

B. Respondent

The disputed domain name <blackberryencryptedphones.com> cannot be confused with the domain name <blackberry.com>.

The disputed domain name <blackberryencryptedphones.com> does not “bring any image injury” to the Complainant.

On the website at the disputed domain name the Respondent provides encrypted solutions to its customers. The Respondent purchases all the licenses directly from the Complainant.

The Respondent usually advises his customers to purchase phones directly from an authorized Blackberry dealer; if they cannot purchase mobile phones from them, the Respondent buys the phone from an authorized Blackberry reseller.

The Respondent recognizes the use of Blackberry product images on the website located with the domain name <blackberryencryptedphones.com>.

The Respondent has invested a lot of resources in the disputed domain name.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name 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 respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has clearly shown that it has rights in the BLACKBERRY trademarks.

The disputed domain name incorporates the whole of the trademark BLACKBERRY to which there is added the expressions “encryptedphones” as well as the gTLD “.com”. The Panel considers that the addition of the descriptive technical terms and characteristics of the goods and gTLD suffix does not alter or diminish in any way the confusing similarity between the Complainant’s BLACKBERRY trademarks and the disputed domain name. On the contrary, the similarity between the Complainant’s trademarks and the disputed domain name is reinforced by the fact that its trademarks cover these goods and services and the sale of phones is the main commercial activity of the Complainant.

The Panel finds that the Complainant has rights in the BLACKBERRY trademarks and the disputed domain name <blackberryencryptedphones.com> is confusingly similar to these trademarks.

Therefore, the Panel considers that the requirement of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several manners in which the Respondent may demonstrate rights or legitimate interests in a disputed 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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case not rebutted by the respondent that the respondent has no rights or legitimate interests in the disputed domain name. In this case, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon its submissions that (1) it has not licensed or otherwise authorized the Respondent to use its BLACKBERRY trademarks or to incorporate them into a domain name; (2) that, given the extensive use of the Complainant’s marks, product images and copyrighted materials and the fact that it is uniquely linked to the Complainant, the Respondent must have been aware of this when it registered the disputed domain name; and (3) that the current use of the disputed domain name <blackberryencryptedphones.com> does not relate to a bona fide offering of goods or services or any legitimate noncommercial or fair purpose.

The arguments submitted by the Respondent did not demonstrate any rights or legitimate interests in the disputed domain name, in accordance with the Rules, paragraph 14(b). On the contrary, his response confirms his previous knowledge and use of the Complainant’s trademarks and Intellectual Property Rights.

To the extent the Respondent can be understood to be claiming a legitimate interest in the disputed domain name because he is offering modification services for the Complainant’s products on the website, this claim fails as the Respondent, by failing to discuss his (lack of) relationship with the Complainant on the website, falsely holds himself out as being affiliated with the Complainant.

The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and 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 or use of a disputed 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 web site or location or of a product or service on its website or location.

The Complainant has demonstrated that its trademarks are well-known and that the disputed domain name incorporates in full its trademarks and that the Respondent has no relationship to the BLACKBERRY trademarks.

It is clear to the Panel that the Respondent is using the BLACKBERRY trademark as well as product images and copyrighted material to attract Internet users to its commercial website “www.blackberryencryptedphones.com”. Thus, the Respondent is trying to benefit from the confusion created by the presence of the expressions “Blackberry”, “encrypted” and “phones” within the disputed domain name to intentionally attempt to attract for commercial gain Internet users to the website, by creating a likelihood of confusion with the Complainant’s BLACKBERRY trademarks as to the source, sponsorship, affiliation or endorsement of its website.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraphs 4(a)(iii) and 4(b) 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 name <blackberryencryptedphones.com> be transferred to the Complainant.

Daniel Peña
Sole Panelist
Date: July 7, 2015