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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Research In Motion Limited v. Whois Privacy Protection Service, Inc. / Animesh Srivastava

Case No. D2008-1943

1. The Parties

The Complainant is Research In Motion Limited, of Waterloo, Ontario, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.

The Respondent is Animesh Srivastava, of Lucknow, Uttar Pradesh, India; Whois Privacy Protection Service, Inc., Bellevue, Washington, United States of America.

2. The Domain Name and Registrar

The disputed domain name <onblackberry.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2008. On December 19, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On December 19, 2009, eNom 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 December 30, 2008 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 January 5, 2009.

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 January 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2009.

The Center appointed Boh Young Hwang as the sole panelist in this matter on February 10, 2009. 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 has developed and marketed throughout the world, products, accessories and services related to the BLACKBERRY trademark, including the BLACKBERRY smartphone, since 1984. The Complainant has registered various trademarks containing, or comprised of, the element BLACKBERRY in many countries, including the United States of America, Canada and India. The Complainant has registered and uses the domain name such as <blackberry.com>, <discoverblackberry.com>, <blackberrypearl.com> and <blackberrycurve.com>.

The disputed domain name was registered by the Respondent on September 6, 2007. Further, the Respondent was the owner of domain names <blackberrytoon.com> and <blackberrytoons.com>, having been registered on September 6, 2007 and expired on September 6, 2008.

The disputed domain name had been made to be directed to a Google page, which included a Google search engine and allowed end users to customize the site by importing various Google applications. The disputed domain name had also been made to point to a pay-per-click website, displaying the banner “Welcome to onblackberry.com” together with various links and including a search engine.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the trademark BLACKBERRY in which the Complainant has rights. The disputed domain name incorporates the whole of the Complainant’s trademark BLACKBERRY. The fact that the disputed domain name includes a non-distinctive element of “on” does not diminish confusion. Rather, confusion is heightened by the addition of the term “on” because the domain name as a whole suggests that it is associated with a website operated, or otherwise authorized, by the Complainant that provides support, educational and informational services relating to, or about, the BLACKBERRY devices.

The Respondent has no rights or legitimate interest in the disputed domain name. The Respondent is not licensed, or otherwise authorized, directly or indirectly, to register or use, the BLACKBERRY trademarks in any manner whatsoever, including in, or as part of, a domain name. There is no evidence to suggest the Respondent has ever used, or demonstrated preparations to use, the disputed domain name, or a name corresponding to the same, in connection with a bona fide offering of goods or services. There is no evidence to suggest that the Respondent has been commonly known by the disputed domain name, or that the Respondent is making, or intends to make, a legitimate non-commercial or fair use of the disputed domain name.

The disputed domain name has been registered and is being used in bad faith since the Respondent’s conduct constitutes the evidence of registration and use in bad faith provided in 4(b)(iv), (iii) and (ii) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To obtain a cancellation or transfer of the disputed domain name, a complainant must prove each element of paragraph 4(a) of the Policy, namely:

(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(b) the Respondent has no rights to or legitimate interests in the disputed domain name; and

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

A. Identical or Confusingly Similar

The Complainant has registered and currently owns trademarks and rights on the marks containing or comprised of the term “Blackberry”.

Excluding the part “.com” which merely shows the character of the domain name, the disputed domain name is comprised of the words “on” and “blackberry.” The Panel finds the disputed domain name to be confusingly similar to the Complainant’s BLACKBERRY trademarks. The addition of the generic and/or descriptive term “on” does nothing to alter the confusion.

Therefore, the Complainant has established this element.

B. Rights or Legitimate Interests

Based on the evidence submitted before the Panel, it is recognized that the BLACKBERRY trademarks owned by the Complainant were widely known and recognized before the disputed domain name was registered by the Respondent. Further, there is no evidence that the Complainant licensed or otherwise authorized the Respondent to register the disputed domain name or to use the BLACKBERRY trademarks. The fact that the disputed domain name was made to point a Google page or made to point to a pay-per-click website does not demonstrate the Respondent’s rights or legitimate interests in its use of the disputed domain name.

These circumstances are sufficient here to constitute a prima facie evidence by the Complainant to demonstrate the absence of rights or legitimate interests in the disputed domain name by the Respondent. In this regard, the Panel finds no circumstances to the contrary, and the Respondent provided no evidence that it has rights or legitimate interests in the disputed domain name.

Therefore, the Complainant has established this element.

C. Registered and Used in Bad Faith

The Complainant contended that the fact that the disputed domain name is made to point to a Google page is sufficient evidence to decide that the disputed domain name has been registered and is being used in bad faith. However, the Panel is of a contrary opinion. Although the disputed domain name provides the end users with a search engine enabling them to access links to competitors of the Complainant, and certain Google applications offered by the competitors of the Complainant may be imported and displayed on the “onblackberry.com” website, the consequences that the end users access the links to the website of the competitors of the Complainant or import Google applications offered by the competitors of the Complainant cannot in the Panel’s view be determined to be the Respondent’s intentional activities, amounting to bad faith. Because a search engine is merely a general tool and there are many different Google applications provided in the Google page, the Respondent may not have expected end users to specifically search for the links to the website of the competitors of the Complainant or to import Google applications offered by the competitors of the Complainant. In this regard, the fact that the end users may access Google applications of an adult nature cannot in the Panel’s view also be a dispositive ground on which the disputed domain name could be found to have been registered and is being used in bad faith.

The Complainant contended that the Respondent’s registration of the three domain names which incorporated the word “blackberry” on the same day constitutes a pattern of abusive registrations falling squarely within 4(b)(ii) of the Policy. But in this Panel’s view the registration of two domain names in the same case is not generally sufficient to show a pattern of conduct of preventing a trade or service mark owner from reflecting the mark in a corresponding domain name. And the Panel is also of the opinion that the registration of three domain names is not substantially different from the above situation. While the Complaint presented two WIPO decisions to support this contention, the Panel finds that the two decisions are not directly on point in this case. New York Life Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812 was an exceptional case where the complainant of that case announced a joint venture with other company whose name was partly included in the disputed domain names in that case around the time when the disputed domain names were registered. Sony Kabushiki Kaisha also trading as Sony Corporation and Sony Computer Entertainment Inc. v. Salvatore Vetro, WIPO Case No. D2001-0575 was also an exceptional case where the complainant of that case planned to launch the new product whose name was included in the disputed domain name in that case. Therefore, it seems that the complainant in those cases were eager to register the disputed domain names, but were prevented from the registration due to the registration of the respondents in the respective cases. In contrast to the above, there is no evidence that the Complainant in this case is substantially prevented from reflecting the BLACKBERRY trademark in a corresponding domain name.

However, the Panel finds that the disputed domain name has been registered and is being used in bad faith considering other contentions and evidence submitted by the Complainant.

The Complainant has submitted evidence to show its prior registrations of the BLACKBERRY trademarks and its widespread recognition and significant goodwill gained throughout the world. Based on such evidence, it is alleged that the Respondent had, or should have had actual knowledge of the BLACKBERRY trademarks at the time of the registration of the disputed domain name. Further, the Respondent directed the disputed domain name to pay-per-click website which provided links to cellular phone related websites which overlapped with the business of the Complainant. Considering the above, the Panel finds that the Respondent used the worldwide recognition of the Complainant’s trademark BLACKBERRY to attract Internet users to its website for commercial gain. Therefore, the Respondent’s registration of the disputed domain name constitutes registration and use of the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to source or sponsorship as provided in 4(b)(iv) of the Policy.

Further, the Complainant has submitted evidence supporting that the pay-per-click website which the disputed domain name was pointed to, displayed links to various cellular phone related websites, thus allowed the end users a means by which they may access links to competitors of the Complainant. Therefore, the Panel finds that this situation is sufficient to conclude that the purpose of the Respondent’s registration of the disputed domain name was to disrupt the business of the Complainant.

Given the above, the Panel concludes that the registration and the use of the disputed domain name by the Respondent were made in bad faith, to disrupt the business of the Complainant, and to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s web site using the disputed domain name by creating a likelihood of confusion with the Complainant’s mark.

Therefore, the Complainant has established this element.

Conclusion

The Complainant has established all the elements of its case to obtain cancellation or transfer of the disputed domain name.

7. Decision

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, <onblackberry.com> be transferred to the Complainant.


Boh Young Hwang
Sole Panelist

Dated: February 27, 2009

 

Источник информации: https://internet-law.ru/intlaw/udrp/2008/d2008-1943.html

 

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