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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Research In Motion Limited v. G.H. Wagenaars

Case No. D2009-0319

1. The Parties

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

Respondent is G.H. Wagenaars of Oisterwijk, The Netherlands.

2. The Domain Name and Registrar

The disputed domain name <blackbrrry.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 10, 2009 by email and on March 16, 2009 in hardcopy. On March 11, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On March 11, 2009, Moniker Online Services, LLC 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 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on April 14, 2009.

The Center appointed Eduardo Machado as the sole panelist in this matter on April 21, 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

Complainant is one of the leaders in the field of mobile communications, and the owner of the famous BLACKBERRY trademark.

Founded in 1984, Complainant is one of the leading designer and manufacturer of innovative wireless solutions for the worldwide mobile communications market. Listed on the Toronto Stock Exchange since 1997 and the NASDAQ Index since 1999, Complainant is a global company with offices in North America, Europe and in the Asia Pacific region.

Complainant has developed and marketed a highly successful line of products,

accessories and services in connection with the BLACKBERRY trademark, including the famous BLACKBERRY smartphone. The BLACKBERRY smartphone is available on over 300 networks in over 100 countries worldwide.

For the fiscal year ending March 2008, Complainant generated revenues in excess of USD 6 billion with a subscriber account base of over USD 21 million in 2009.

Complainant has expended significant resources in the promotion and advertisement of the BLACKBERRY trademarks. Since 2001, Complainant has incurred hundreds of millions of US dollars in promotional expenses.

Complainant has established a significant Internet presence. It has registered and uses <blackberry.com>. This site offers, in part, information and support services for the BLACKBERRY products. As well, Complainant operates a website at <shopblackberry.com>, where it sells BLACKBERRY products and related accessories.

The BLACKBERRY trademark is one of Complainant`s most valuable assets. In 2008, the BrandZ study rated the BLACKBERRY brand at number 51 in the Top 100 Global Brands ranking.

Interbrand`s Best Global Brands 2008, ranked the BLACKBERRY brand as the 73rd most valuable brand in the world.

As per Interbrand`s report Best Canadian Brands 2008, the BLACKBERRY brand was ranked as number 1 in Canada.

According to Brand Finance Canada`s report, The Brand Finance of Canada`s Most Valuable Brands 2007, the BLACKBERRY brand was ranked as the eighteenth most valuable brand in Canada, and is ahead of such well known brands as PETRO-CANADA, MOLSON and TIM HORTONS.

Landor`s 2007 report entitled Using brands to drive business results: The third annual Breakaway Brands valuation study, ranked the BLACKBERRY brand as third on its list of Top Ten Breakaway Brands for 2007. The BLACKBERRY brand was ahead of brands such as MICROSOFT, COSTCO, GE and SAMSUNG. The report refers to the "brand`s rapid rise to ubiquity", and adds as follows:

Today, virtually the world over, it is becoming increasingly difficult among the business community to imagine life "BB" (Before BlackBerry).

Complainant is ranked second in the Barron`s 500 report, which ranks the 500 largest publicly traded companies in the United States and Canada. The report noted that the BLACKBERRY device has "become the standard in handheld devices, delivering e-mail, Internet connectivity, music and video".

Complainant`s BLACKBERRY devices have received significant recognition and have been the recipient of numerous awards.

Recently, there has been widespread press coverage regarding President Barack Obama`s desire to keep his BLACKBERRY device. The BLACKBERRY device has been described as precious to President Obama, and when asked for his worst habit during the campaign, President Obama responded with "checking my Blackberry".

Complainant is the owner of over 1500 trademark registrations and applications worldwide containing, or comprised of, the element BLACKBERRY.

The BLACKBERRY trademarks enjoy widespread recognition and have generated significant goodwill. As a result of extensive use and publicity, the BLACKBERRY Trademarks have become famous.

5. Parties` Contentions

A. Complainant

Complainant informs that on April 22, 2007, without the permission of the Complainant, the Respondent registered the <blackbrrry.com> domain name.

Complainant informs that the domain name was made to resolve to a pay-per-click website displaying sponsored links to competitors of the Complainant, including Motorola, Nokia, Samsung and LG, as well as links to sites selling the goods of these same competitors. The website also provided a means by which end users could search for links to competitor sites of the Complainant.

Complainant informs that, as it was extremely concerned over the misleading registration and use of the <blackbrrry.com> domain name, the Complainant issued a cease and desist letter to the Respondent, dated October 8, 2008, requiring the transfer of the <blackbrrry.com> domain name, but that the Respondent did not provide a response.

Identical or Confusingly Similar

Complainant alleges that it is a well-established principle that typosquatting constitutes prima facie evidence of confusion (DaimlerChrysler Corporation and DaimlerChrysler Services North America LLC v. Peter Carrington and Party Night Inc., WIPO Case No. D2002-0756; Citigroup, Inc v. Party Night Inc. aka Peter Carrington, WIPO Case No. D2003-0480; ESPN, Inc. v. XC2, WIPO Case No. D2005-0444; Dow Jones & Company, Inc. and Dow Jones, L.P. v. Power click, Inc., WIPO Case No. D2000-1259).

Complainant asserts that it is a well-established principle that the addition of a generic top level domain, such as dotcom, and the elimination of spaces, are without legal significance in determining the issue of similarity (Research In Motion Limited v. International Domain Names Inc. / Moniker Privacy Services, WIPO Case No. D2008-0780).

Complainant alleges that the <blackbrrry.com> disputed domain name constitutes an intentional misspelling of the famous BLACKBERRY trademark as the Respondent has substituted the letter "e" with the letter "r" and these letters appear right beside each other on a computer keyboard.

Complainant asserts that the Respondent`s typosquatting constitutes prima facie evidence of confusion and is direct evidence of an intent on the part of the Respondent to deceive the public.

Complainant further contends that save for the substitution of a single letter, the <blackbrrry.com> domain name is visually and phonetically identical to the famous BLACKBERRY trademark, which also supports a finding of confusion.

Rights or Legitimate Interests

Complainant asserts that it is a well-established principle that an unauthorized party cannot claim a legitimate interest in a domain name that contains, or is confusing with, a complainant`s mark, as the activities of such a party cannot be said to constitute a bona fide offering of goods or services (Research In Motion Limited v. Blackberry World, WIPO Case No. D2006-1099; Dr. Ing. h.c. F. Porsche AG v. ANC Online Avrasya Bilisim Tekn San ve Dis Tic A S, WIPO Case No. D2006-0912).

Complainant further contends that use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services, and to conclude otherwise would mean that a respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the Policy (Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809; Pfizer Inc. v. Enamecorp.com, WIPO Case No. D2001-0791).

Complainant also claims that it is well settled that diverting Internet traffic, by way of typosquatting, to a website offering sponsored links to competitors of a complainant is prima facie evidence of no rights (ESPN, Inc. v. XC2, supra; MouseSavers, Inc. v. Tsung, WIPO Case No. D2004-1034; Marriott Int`l, Inc. v. Seocho, NAF FA149187).

Also, Complainant states that it is a well-established principle that directing a domain name that is confusing with a third party trademark to a pay-per-click site does not constitute bona fide use of the domain name by a respondent (Research In Motion Limited v. International Domain Names Inc. / Moniker Privacy Services, supra; B and J GarcГ­a, S.L., Arnedo, Spain v. Gorila, WIPO Case No. D2004-1071; Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430).

Complainant informs that there is no evidence to suggest the Respondent has ever used, or demonstrated preparations to use, the <blackbrrry.com> domain name, or a name corresponding to same, in connection with a bona fide offering of goods or services, and that there has never been any relationship between the Complainant and the Respondent. Further, Complainant informs that the Respondent is not licensed, or otherwise authorized, be it directly or indirectly, to register or use, the BLACKBERRY trademarks in any manner whatsoever, including in, or as part of, a domain name.

Complainant alleges that the <blackbrrry.com> domain name is an intentional misspelling of the BLACKBERRY trademark and is being used to divert Internet traffic to a pay-per-click website that displays sponsored links to competitors of the Complainant and that this use of the disputed domain name puts the Respondent in a position to reap a financial benefit. Complainant concludes that this constitutes prima facie evidence of no rights and that, under the circumstances, the Respondent cannot claim the benefit of paragraph 4(c)(i).

Complainant contends that there is no evidence to suggest that the Respondent has been commonly known by the <blackbrrry.com> domain name, or that the Respondent is making, or intends to make, a legitimate noncommercial or fair use of the <blackbrrry.com> domain name.

Registered and Used in Bad Faith

Complainant further contends that it is well-settled that the practice of typosquatting is by itself evidence of the bad faith registration (ESPN, Inc. v. XC2, supra; Longs Drug Stores Cal., Inc. v. Shep Dog, WIPO Case No. D2004-1069; Lexar Media, Inc. v. Huang, WIPO Case No. D2004-1039; Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816).

Complainant asserts that the pointing of an intentionally misspelt domain name to a pay-per-click website also supports a finding of bad faith (ESPN, Inc. v. XC2, supra).

In this case, the Respondent has engaged in typosquatting, which is prima facie evidence of bad faith. Further supporting a finding of bad faith is the pointing of the disputed domain name to a pay-per-click website. Complainant concludes that Respondent`s typosquatting activities therefore support a finding of bad faith.

Complainant asserts that numerous Panels have held that directing a domain name that is confusing with a third party trademark to a pay-per-click website constitutes bad faith as per paragraph 4(b)(iv) (Research In Motion Limited v. International Domain Names Inc. / Moniker Privacy Services, supra; Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, supra; Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584). A respondent`s attempt to derive a financial benefit from typosquatting also constitutes evidence of bad faith (Expedia, Inc. v. Alvaro Collazo, WIPO Case No. D2003-0716).

Complainant alleges that the <blackbrrry.com> domain name is nearly identical to the famous BLACKBERRY trademark.

Complainant concludes that, under the circumstances, the <blackbrrry.com> disputed domain name is likely to confuse potential consumers into believing that the Respondent is somehow affiliated with, or endorsed by, the Complainant.

Complainant contends that the disputed domain name is being used in an attempt to intentionally attract, for commercial gain, Internet users to the Respondent`s website by creating a likelihood of confusion with the Complainant`s mark as to source, sponsorship, affiliation, or endorsement.

Also, Complainant contends that fact that the <blackbrrry.com> domain name is an intentional misspelling further supports a finding of bad faith.

Complainant asserts that it is a well-established principle that the pointing of a domain name to a pay-per-click website that displays links to websites of businesses that offer goods and services that compete with, or rival, those good and services offered by a complainant constitutes evidence of bad faith as per paragraph 4(b)(iii). A respondent need not be a direct competitor of a complainant; it is sufficient if it provides a means for Internet users to access links to businesses that compete with, or rival, the complainant (PepsiCo, Inc. v. LaPorte Holdings, Inc. and Pepsiemployment.com a/k/a Henry Chan, WIPO Case No. D2005-0087).

In this case, Complainant asserts that, the pointing of the <blackbrrry.com> domain name to a pay-per-click website that displays links to competitors of the Complainant qualifies the Respondent as a competitor of the Complainant. The Respondent`s website displays sponsored links to businesses that offer goods and services that compete with, or rival, those goods and services offered by the Complainant, including MOTOROLA, NOKIA, SAMSUNG and LG.

Further, Complainant asserts that the use of the <blackbrrry.com> domain name is disruptive to the Complainant, as potential consumers are likely to be confused into believing that the Respondent`s website is somehow affiliated with, or sponsored by, the Complainant. As well, the misdirection of potential consumers to the Respondent`s website constitutes a disruption to the Complainant and its business.

Complainant alleges that the purpose behind the registration of the <blackbrrry.com> domain name was to piggyback on the goodwill associated with the BLACKBERRY trademarks by capitalizing on a typographical error, in an attempt to exploit, for commercial gain, Internet traffic properly destined for the Complainant. Under the circumstances, it is reasonable to infer that the Respondent not only knew this diversion would be disruptive, but also intended it to be so.

Complainant also addresses to the surrounding circumstances, which further support a finding of bad faith (Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Complainant contends that: a respondent`s actual or constructive knowledge of a complainant`s rights in a domain name at the time of registration has been found to reinforce a finding of bad faith (Document Technologies v. International Electronic Communications, Inc., WIPO Case No. D2000-0270); trademark registration provides constructive knowledge to third parties of a complainant`s rights (The Sportsman`s Guide, Inc. v. Modern Limited, Cayman Islands, WIPO Case No. D2003-0305).

Complainant asserts that, given the fame of the BLACKBERRY trademark, the Respondent`s website and the intentional misspelling of the famous BLACKBERRY trademark, the only plausible conclusion is that the Respondent had actual knowledge of the BLACKBERRY trademarks at the time of registration, thereby supporting a finding of bad faith. The Respondent also had constructive knowledge of the BLACKBERRY trademark by virtue of the Benelux registrations. These registrations cover Netherlands, which is where the Respondent is indicated as being located.

Complainant also asserts that Panels have held that a respondent`s failure to respond to a complainant`s transfer request can reinforce a finding of bad faith registration (America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460). In finding bad faith registration, the Panel in Cigna Corporation v. Jit Consulting, eResolution Case No. AF-00174, remarked on the significance of failing to respond to demand correspondence: "A reasonable party confronted with the implication that it is using a registered domain name within the context of a "cease and desist" letter would be moved to respond with a correction or denial if such implication were untrue".

Complainant asserts that the fact that Respondent did not respond to the Complainant`s cease and desist letter, thereby further supporting a finding of bad faith.

B. Respondent

Respondent did not reply to Complainant`s contentions, although on March 15 and 27, 2009 it did submit email communications in which it appears to agree to transfer the disputed domain name to Complainant. (Complainant replied by email on March 18, 2009 indicating that it wished to proceed to a decision).

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the 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 domain name; and (iii) the domain name has been registered and is being used in bad faith, Policy, paragraph 4(a).

A. Identical or Confusingly Similar

The Panel finds that <blackbrrry.com> is confusingly similar to the BLACKBERRY marks since the dominant portion of Complainant`s registered marks is reproduced. The domain name differs from Complainant`s registered BLACKBERRY marks only in that it changes the letter "e" for the letter "r", which is not enough to characterize it as distinct from Complainant`s trademarks.

The Panel finds that adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of the Complainant.

Even more, the Panel finds that, as the letter "r" is placed right beside the letter "e" in standard QWERTY keyboards, it is evident that Respondent`s intention was to attract users that mistype Complainant`s trademarks/domain names.

The Panel finds that the Complainant has established the first element of the Policy.

B. Rights or Legitimate Interests

With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the domain name.

With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services. At the time the UDRP complaint was filed the domain name provided links to websites that were in direct competition with Complainant. This is not a bona fide use. TM Acquisition Corp. v. Sign Guards, FA132439 (National Arbitration Forum, December 31, 2002) (finding that the respondent`s use of complainant`s marks to divert Internet users to a web site which displayed a series of links, some of which were links to sites of complainant`s competitors, was not a bona fide offering of goods or services).

A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Morgan Freeman v. Mighty LLC, WIPO Case No. D2005-0263; Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

The Panel finds that the Complainant has established the second element of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent`s website or other online location by creating a likelihood of confusion with the complainant`s mark as to the source, sponsorship, affiliation or endorsement of the respondent`s site or of a product or service offered on the respondent`s site. Policy, paragraph 4(b)(iv).

The Panel finds that Respondent registered the domain name in bad faith.

Complainant`s allegations of bad faith are not contested. The trademark registrations of record confirm Complainant`s allegations that it had long been using its BLACKBERRY marks when the domain name that is the subject of this Complaint was registered. The Panel finds persuasive Complainant`s allegation that the Respondent must have been aware of the Complainant`s rights in the mark and, further, that Respondent knowingly infringed the Complainant`s trademark when it registered the subject domain name.

Under the Policy, it is evidence of bad faith that, "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 web site or location or of a product or service on your web site or location.". Policy, paragraph 4(b)(iv). Respondent used Complainant`s known trademark to attract users to Respondents` website where they are offered links to Complainant`s competitors. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant`s mark as to the source, sponsorship, affiliation, or endorsement of Respondents` website or of a product or service on Respondents` website.

At the time the Complaint was filed the domain name resolved to a page that offers visitors links to sites of other companies, including Complainant`s competitors. Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537 ("the Panel is persuaded that Respondent`s registration and use of the disputed domain name for re-directing Internet users, particularly customers and potential customers of Complainants, from Complainants` website to the website of OfficeMax, a company which directly competes with Complainants, constitutes bad faith and use. Prior WIPO UDRP decisions also support this conclusion.") See also Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319 ("registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.").

Moreover, the Panel finds that the practice of typosquatting is by itself evidence of the bad faith registration.

Accordingly the Panel finds that the Complainant has made out bad faith registration and use of the domain name by the Respondent.

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 names <blackbrrry.com> be transferred to the Complainant.


Eduardo Machado
Sole Panelist

Dated: May 5, 2009.

 

Источник информации: https://internet-law.ru/intlaw/udrp/2009/d2009-0319.html

 

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