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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Research In Motion Limited v. Blackberry World

Case No. D2006-1099

 

1. The Parties

Complainant is Research In Motion Limited, Waterloo, Canada, represented by Milbank, Tweed, Hadley & McCloy, LLP, United Kingdom of Great Britain and Northern Ireland.

Respondent is Blackberry World, Surrey, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <blackberryworld.com> is registered with Total Web Solutions Limited trading as TotalRegistrations.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2006. On September 4, 2006, the Center transmitted by email to Total Web Solutions Limited trading as TotalRegistrations a request for registrar verification in connection with the domain name at issue. On September 6, 2006, Total Web Solutions Limited trading as TotalRegistrations transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on October 2, 2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 October 2, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2006.

The Center appointed Jeffrey M. Samuels, Peter G. Nitter and David H. Tatham as panelists in this matter on December 21, 2006. The Panel finds that it was properly constituted. Each member of 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.

In an email of December 29, 2006, the parties were notified by the Center that, at the request of the Panel, the due date of decision had been extended from January 4, 2007, to January 18, 2007.

 

4. Factual Background

Complainant Research In Motion Limited was founded in 1984 and is based in Waterloo, Ontario. Complainant is a leading designer, manufacturer and marketer of innovative wireless solutions for the worldwide mobile communications market. Complainant’s portfolio of award-winning products includes the BLACKBERRY wireless platform, which provides access to a wide range of applications on a variety of wireless devices around the world.

In the year ending February 28, 2004, Complainant’s reported revenue was USD0.6 billion with a subscriber base of over one million. In the following year to February 26, 2005, Complainant’s reported revenue rose to over USD1.3 billion with a subscriber base of over 2.5 million. In the last full year ending February 28, 2006, Complainant’s reported revenue rose still further to over USD2 billion and a subscriber base of 4.9 million. See Complaint, Annex 5.

Complainant has advertised using the BLACKBERRY name and mark since 1999 and has spent some USD264 million on such advertisements since 2001. See Complaint, Annex 7.

Complainant owns some 436 trademark applications and registrations worldwide which include the word or design BLACKBERRY. See Complaint, Annex 6.

The disputed domain name <blackberryworld.com> was registered by Respondent on July 12, 2004. Respondent holds itself out to the public as “The UK’s Leading Supplier of Blackberry Accessories,” using the same stylized form with “B” in upper case as Complainant’s mark.

Complainant states that it first became aware of Respondent’s use of the disputed domain name in March 2005 and formally put Respondent on notice of Complainant’s rights in the BLACKBERRY mark by letter dated October 21, 2005. See Complaint, Annex 8.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is confusingly similar to its BLACKBERRY mark insofar as it simply combines the mark with the generic suffix “world” and the “.com” designation. According to Complainant, the “well-known and distinctive element of [the disputed domain name] is the Complainant’s BLACKBERRY trademark, such that it is inevitable that the public will believe the domain name is somehow connected with the Complainant and its BLACKBERRY product.”

Complainant further asserts that Respondent has no rights or legitimate interests in the domain name. It notes that the disputed domain name <blackberryworld.com> is being used by the Respondent to offer “Blackberry” accessories in the form of chargers, headsets, cases and other accessories, including batteries, desktop stands, books, battery doors, global adaptor clips, screen protectors, and USB cables. Complainant points out that it sells its BLACKBERRY products and accessories through an authorized distributor network and directly itself. Respondent is not a member of that network, nor has Complainant licensed or otherwise authorized Respondent to use the BLACKBERRY mark in connection with the disputed domain name.

According to Complainant, while most of the products offered on Respondent’s website appear to be genuine BLACKBERRY accessories, in the sense that they are made by or authorized by Complainant, certain of the accessories offered by Respondent are not made and/or supplied by Complainant. Under such circumstances, Complainant argues, Respondent cannot demonstrate use of the domain name in connection with the bona fide offering of goods and services or claim that it is making a fair use of the domain name without intent for commercial gain.

With respect to the issue of bad faith registration and use, Complainant maintains that Respondent’s conduct falls “fair and square” within paragraph 4(b)(iv) of the Policy. Complainant alleges that Respondent, by using the domain name in issue, has intentionally attempted to attract, for commercial gain, Internet users to its “www.blackberryworld.com” website, by creating a likelihood of confusion with Complainant’s BLACKBERRY trademark as to source, sponsorship, affiliation or endorsement of such site.

Complainant maintains that, given the fame of the BLACKBERRY mark, it cannot be good faith for Respondent to have registered a domain name incorporating as its dominant and distinctive element that very mark. Further evidence of the requisite bad faith may be found, according to Complainant, in the fact that Respondent uses the disputed domain name to give BLACKBERRY users and retailers the impression it is an authorized supplier and conducts Blackberry training courses.

B. Respondent

Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, Complainant must prove the following elements:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark in which the 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. Identical or Confusingly Similar

The Panel finds that the disputed domain name <blackberryworld.com> is confusingly similar to the BLACKBERRY mark. The domain name incorporates in full the distinctive mark BLACKBERRY. The addition of the descriptive and/or generic terms “world” and “.com” does not dispel the confusing similarity between the mark and the domain name.

The Panel further concludes that, through its ownership of the BLACKBERRY mark throughout the world, as evidenced by its registrations for and use of such mark, Complainant has rights in the BLACKBERRY mark. Accordingly, the Panel finds in favor of Complainant on the first element.

B. Rights or Legitimate Interests

Complainant bears the burden of making out an initial prima facie case that Respondent lacks rights or legitimate interests. The majority view of WIPO UDRP panels is that a party that is authorized by a trademark owner to sell genuine trademarked products can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name provided certain requirements are met. In Oki Data Americas v. ASD, Inc., WIPO Case No. D2001-0903, for example, the panel denied a request to transfer the domain name in issue where the evidence showed that the respondent was offering repair services as an authorized dealer, was listed on the complainant’s website as an authorized dealer and had been given access by complainant to a password-protected part of its website.

In this case, however, the Respondent is apparently not an authorized distributor of BLACKBERRY products and accessories. Moreover, the evidence indicates that Respondent offers certain products and accessories which are neither made nor approved by Complainant and that there is no disclosure of Respondent’s relationship, or lack thereof, to Complainant. Under such circumstances, the Panel concludes that Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the domain name in dispute. Given that Respondent has not filed a Response demonstrating any rights or legitimate interests in the domain name, the Panel finds in favor of Complainant on the second element.

C. Registered and Used in Bad Faith

Finally, the Panel holds that the disputed domain name was registered and is being used in bad faith. Respondent appears to have knowingly appropriated Complainant’s trademark for the domain name at issue to sell Complainant’s products as well as products that are competing and not made and /or supplied by Complainant. The evidence supports the determination that Respondent, by registering and using the domain name in issue, has intentionally attempted to attract, for commercial gain, Internet users to its “www.blackberryworld.com” website, by creating a likelihood of confusion with Complainant’s BLACKBERRY trademark as to source, sponsorship, affiliation or endorsement of such site, within the meaning of paragraph 4(b)(iv) of the Policy.

 

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 <blackberryworld.com> be transferred to the Complainant.

Jeffrey M. Samuels Presiding Panelist
Peter G. Nitter Panelist	David H. Tatham Panelist

Dated: January 18, 2007