Источник информации:
официальный сайт ВОИС

Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Research in Motion Limited v. Zag Media Corp.

Case No. D2008-0848

1. The Parties

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

Respondent is Zag Media Corp., of Richmond, British Colombia, Canada.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2008. On June 4, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On the same day, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on July 4, 2008. 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 Respondent of the Complaint, and the proceedings commenced on July 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2008.

The Center appointed Ross Carson as the sole panelist in this matter on August 11, 2008. 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.

Respondent submitted to the Center that the Amended Complaint filed with the Center on July 4, 2008 was filed out of time and that neither the Center or the Panel may consider the Amended Complaint. On July 14, 2008, the Center advised the Parties that it decided to commence the proceedings on the basis of the Amended Complaint. The Center informed the parties that the procedural implications of the determination remains subject to the review of the appointed panel. The due date for Response was August 3, 2008. On July 31, 2008, Respondent maintained its position that there was no authority under the Rules and Supplementary Rules to accept the late filed Amended Complaint and deferred filing its Response to the Amended Complaint until its filing had been rendered compliant. Respondent advised the Center that if the Panel decides that a Response is necessary, Respondent will show that the Amended Complaint is without merit and will provide further details on its 16 point outline of a response.

On August 18, 2008, the Panel issued Administrative Panel Procedural Order No.1 finding that the Center had authority under the Rules and Supplementary Rules to accept the Amended Complaint. The Panel pursuant to the general powers of the Rules to ensure that each Party is treated fairly granted Respondent an extension of time until September 7, 2008. Respondent submitted its Response on September 6, 2008 and submitted an additional ground to the Response on September 7, 2008. On September 17, 2008, the Panel issued Administrative Panel Procedural Order No. 2 requesting Respondent to file a complete Response which complies with the UDRP Rules, including a certification and conclusion in accordance with paragraph 5(b)(viii) of the Rules by September 24, 2008. Respondent filed a complete Response on September 24, 2008.

On September 29, 2008, Complainant requested leave to file a Supplementary Submission based on some issues arising from the Response which required further evidence. On the same date, Respondent forwarded a submission to the Center with additional material. After considering the submissions of the Parties, the Panel decided that the additional facts and law referred to by the Parties would address some partially developed matters and issued a Third Procedural Order on October 2, 2008 providing that Complainant may file a Supplemental Submission by October 7, 2008 and Respondent may submit a Response to Complainant’s Supplemental Submission by October 12, 2008. Complainant filed its Supplemental Submission on October 7, 2008 and Respondent filed its Response to Complainant’s Supplementary Submission on October 13, 2008 The Third Procedural Order further extended the time for the Panel to file the decision.

4. Factual Background

Complainant is the owner of over 1500 trademark registrations and/or applications throughout the world for trademarks for or including the trademark BLACKBERRY used in association with the goods: electronic handheld units for the wireless reception 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 e-mail, 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 and in association with the services: e-mail services; wireless data messaging services, namely, services that enable a user to send and/or receive messages through a wireless data network using a handheld, portable electronic device; one way and two-way paging services.

Complainant’s registered trademarks for or including Blackberry in Canada include TMA554207 for the trademark BLACKBERRY, registered November 21, 2001; TMA554206 for the trademark BLACKBERRY and colour design, registered on November 21, 2001; TMA555231 for the trademark BLACKBERRY and design, registered December 11, 2001; TMA 624894 for the trademark BLACKBERRY CONNECTION registered on November 8, 2004; TMA659946 for the trademark BLACKBERRY and BBBB design registered March 1, 2006; TMA659954 for the trademark BLACKBERRY and BBBB design registered March 1, 2006 and TMA638068 for the trademark BLACKBERRY registered on April 21, 2005. Complainant is the owner of a greater number of registered trademarks for or including BLACKBERRY registered in the United States of America between the years 2000 and 2006.

Founded in 1984, Complainant is a 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 trade-mark, including the well-known Blackberry smartphone. The Blackberry smartphone is available on over 300 networks in over 100 countries worldwide.

As reported in Complainant’s Annual Report for the fiscal year ending March 2008, Complainant generated revenues in excess of USD6 billion with a subscriber account base of over 14 million. These revenues were generated in association with Complainant’s goods and services sold and advertised in association with its trademarks for or including BLACKBERRY.

In 2008, the BrandZ ranking of leading brands prepared by a leading global research and marketing firm rated the BLACKBERRY brand at number 51 in the Top 100 Global Brands ranking, with a brand value of USD13,734 million. The BrandZ report showed the BLACKBERRY brand having a brand value change of 390% over the previous year, the most substantial improvement among the worlds leading brands.

The Brand Finance of Canada’s MostValuable Brands 2007 report ranks the BLACKBERRY brand as the eighteenth most valuable brand in Canada, ahead of such well-known Canadian brands as Petro-Canada, Molson and Tim Hortons.

Complainant has an established Internet presence. It has registered and uses <blackberry.com>, <discoverblackberry.com>, <blackberrypearl.com> and <blackberrycurve.com>. These sites offer, in part, information and support services for the Blackberry products. As well, the Complainant operates a website at “www.shopblackberry.com”, where it sells Blackberry products and related accessories.

The domain name in dispute <blackberryguru.com> was (according to the Registrar’s WhoIs) registered on August 14, 2006.

5. Parties’ Contentions

A. Complainant

A.1 Identical or Confusingly Similar

Complainant is the registered owner of trademark registrations for the trademark BLACKBERRY in Canada, the United States of America and many other countries throughout the world particulars of some of which trademarks are provided in paragraph 4 above. The trademark BLACKBERRY has been widely used by Complainant to distinguish the goods and services sold or offered by Complainant in association with its registered trademark BLACKBERRY.

Complainant submits that the domain name in dispute is confusingly similar to the trademark BLACKBERRY in which Complainant has rights as it uses the identical term “blackberry” as the distinctive part of the domain name in issue in conjunction with the non-distinctive term “guru” which describes a person having expertise. In Research in Motion Limited v. WG/Shahbaz Khan, WIPO Case No. D2008-0165, the panel, in ordering the domain name “blackberryaccessories.com” to be transferred to Complainant, held that the addition of “accessories” did nothing to diminish confusion stating: “The Panel is satisfied that the Domain Name is confusingly similar to this mark. The addition of the generic term “accessories” and the top level domain suffix do not dispel confusion. Many Internet users would suppose that the Domain Name refers to a website of the Complainant selling smartphone accessories.”

Complainant further submits that the fact that the disputed domain name includes the non-distinctive element “guru” does nothing to diminish confusion. In fact, the Complainant submits that it is quite the contrary confusion is enhanced by the addition of the non-distinctive term “guru”. The word “guru” denotes someone who can be relied upon to be a trusted source of knowledge. The addition of this term may therefore suggest that the disputed domain name resolves to a website operated, or otherwise authorized by Complainant to sell BLACKBERRY devices and accessories, as well as to provide support, educational and informational services in association with the BLACKBERRY devices.

A.2 No Rights or Legitimate Interests in respect of the Domain Name

Complainant states that there has never been any relationship between Complainant and Respondent. 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 further states there is no evidence to suggest Respondent has ever used, or demonstrated preparations to use, <blackberryguru.com> or a name corresponding to the same, in connection with a bona fide offering of goods or services. There is no evidence of business plans, correspondence, reports or other forms of evidence that show that Respondent is engaged in any activities to use the domain name <blackberryguru.com> for the bona fide offering of goods or services.

Complainant further submits that there is no evidence to suggest that Respondent has been commonly known by <blackberryguru.com>, or that Respondent is making, or intends to make, a legitimate non-commercial or fair use of <blackberryguru.com>.

Complainant states that Respondent resolves the domain name in dispute to a homepage displaying various fruit and vegetable-related links, such as links entitled “Wild Mushrooms” and “Pineapple”. These links of course have absolutely nothing to do with the blackberry fruit, and Respondent has rather superficially feigned an interest in the blackberry fruit in a contrived and ill conceived attempt to legitimize what is very clearly an abusive domain name registration.

Complainant states that a predecessor to Respondent registered the domain name <blackberryguru.com> on August 14, 2006, without the permission of Complainant. Complainant conducted a WhoIs search for <blackberryguru.com> with Domain Tools on January 7, 2008. The search did not name a registrant but disclosed “Registration Services Provided by Leading Edge Online.” The address of Leading Edge Online was shown as 186-8120 No.2 Road, Suite 335, Richmond, B.C.

Complainant forwarded a cease and desist letter dated January 7, 2008 to Leading Edge Online by courier and e-mail requiring the transfer of the <blackberryguru.com> domain name to Complainant. Leading Edge Online never provided a response. Complainant’s follow up WhoIs search conducted through Domain Tools on January 25, 2008 shows the following information with respect to the Registrant: “Registrant c/o Zag Media”. The address of Zag Media is shown as 12051 No 1 Road, Richmond, B.C.

Complainant submits that following the issuance of Complainant’s letter, Respondent concealed its identity by availing itself of the Registrar’s privacy feature. As a result, the name of the registrant was changed from Leading Edge Online to “Zag Media Corp. Whois Privacy Services”. While the owner of the domain name was concealed, the creation date of the domain name and the corresponding website remained the same. Therefore, it is Complainant’s position that the true owner of the domain name is Leading Edge Online.

Complainant submits that further undermining a claim of bona fide or good faith use is the pointing of the disputed domain name to a pay-per-click website based on the following facts: Respondent’s <blackberryguru.com> website resolves to a pay per-click website utilizing Parked.com monetization services.

Complainant states that a printout of the homepage for <blackberryguru.com> shows the printout “http://www.searchnut.com/?domain=blackberryguru.com” at the bottom of the <blackberryguru.com> homepage. An Internet search discloses that the domain name “searchnut.com” is owned by Parked.com. Parked.com operates a revenue program whereby domain name holders that park their domain names at its sites become eligible for a referral fee. As per its website, Parked.com describes its domain monetization service as follows:

“Just owning a domain name can earn you money with Parked.com.

All you have to do is send us your visitors. Parked.com can handle all domain parking needs, whether you are looking to park 10 domains or 10,000 domains, let us show you why parking domains is very easy. We’ll pay you industry-leading commissions! We want you to keep as much control as you want. And you never stop owning your domain names. JOIN NOW!”

The website adds as follows:

“Parked.com is a turnkey Internet advertising firm that lets you earn money on your domain names. You simply let us manage the content related to your domain name(s), and we optimize them to display relevant, paid advertising to visitors. The advertisers pay us for results, and we distribute some of the highest commissions in the industry back to you.”

Complainant states that numerous panels have held that directing domain names containing third party trademarks to pay-per-click sites, such as those hosted by Domain Sponsor.com and Hitfarm.com, does not constitute bona fide use of the domain name by a respondent (Air Austral v. WWW Enterprise, Inc., WIPO Case No. D2004-0765; Lowen Corporationd/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430; Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584).

In its finding of bad faith, the panel in Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, supra, held that resolving a disputed domain name to a pay-per-click website undermined a claim of legitimacy: “As described above, it is evident to the Panel that the Respondent uses the disputed domain name for the purpose of redirecting visitors to “http://dp.information.com”, a search engine operated by

<domainsponsors.com>” and further stated that “The use of the domain in such a way does not constitute a bona fide offering of goods or services giving rise to any right or legitimate interest. This conclusion is supported by several WIPO Administrative Panel Decisions.”

Complainant states that the <blackberryguru.com> website provides links to competitors of Complainant, including Motorola, Palm, Nokia, LG, Sony Ericsson and Samsung. These links were all displayed in association with the banner “BLACKBERRYGURU.COM” and the trade name blackberryguru.com. The website also displayed links that contained the famous BLACKBERRY trade-mark and which resolved to websites that sold goods and services that competed with, or rivaled, those goods and services sold by Complainant.

Complainant further submits that the <blackberryguru.com> domain name was listed as being for sale for $500.00 at domaintools.com. The <blackberryguru.com> domain name was also listed for sale for $500.00 at Afternic.com, a domain name auction website. As well, the disputed domain name was listed for sale at the auction site Sedo.com, which indicated that “<blackberryguru.com> is for sale”. It is a well established principle that a respondent offering to sell a domain name can undermine a claim of legitimate interest (Birinyi Associates, Inc. v. Convert, WIPO Case No. D2001-0395; Zagat Survey, LLC. v. Friedmans Construction Inc .a/k/a J HF, NAF Case No. FA210304).

Complainant states that Respondent’s use of the domain name in dispute which intentionally trades on the fame of Complainant’s trademark BLACKBERRY 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; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847).

A.3 Registered and Used in Bad Faith

Complainant submits that Respondent registered the domain name in dispute in bad faith as Complainant had made extensive use of and registered its trademark BLACKBERRY in Canada, the United States of America, and many other countries throughout the world for many years prior to registration of the domain name in dispute on May 19, 2006. In the year 2005, BLACKBERRY hand held products received many awards. In February 2005, the BLACKBERRY 7100 won PC World’s Editor’s Pick Award, earning 4 out of a possible 5 starts. The BLACKBERRY 7290 was awarded the “best Buy Award 2005” by IT Week Magazine for its design, affordability and functionality. Laptop Magazine honored the BLACKBERRY8700c with their “Editors’ Choice “award. The list of awards goes on. Complainant submits that as a result of extensive use and publicity the BLACKBERRY trademarks have become famous.

Relying upon paragraphs 4(b)(iv), (iii), (ii) and (i) of the Policy, Complainant respectfully submits that <blackberryguru.com> was registered and is being used in bad faith by Respondent.

As per paragraph 4(b)(iv), bad faith registration will be found where a Respondent is using a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement. The <blackberryguru.com> domain name contains the whole of the BLACKBERRY trademark and the distinctive element of the BLACKBERRY trademarks. Further, Respondent’s website includes links that contain the famous BLACKBERRY trademark. Accordingly, the use of the domain name by Respondent is likely to confuse potential consumers into believing that Respondent is somehow affiliated with or endorsed by Complainant.

Complainant further submits that the pointing of the domain name in dispute to a pay-per-click website comprised of sponsored links renders Respondent eligible for a referral fee. As such, the use of the domain name in dispute puts Respondent in a position to reap a commercial benefit constituting prima facie evidence that <blackberryguru.com> has been used in an attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the BLACKBERRY trademarks as to source or sponsorship.

Complainant submits that the purpose behind the registration and use of the disputed domain name by Respondent was to piggyback on the tremendous goodwill associated with the BLACKBERRY trademarks in an attempt to exploit, for commercial gain, Internet traffic properly destined for Complainant. Under the circumstances, Complainant respectfully submits that the registration and use of the domain name in dispute falls squarely within paragraph 4(b)(iv) of the Policy.

Complainant submits that the pointing of domain names to pay-per-click websites displaying links to competitors of a complainant constitutes evidence of bad faith as per subparagraph 4(b)(iii). A registrant need not be a direct competitor of a complainant; it is sufficient that it provide a means by which Internet users may access links to businesses that compete with a complainant (PepsiCo, Inc. v. LaPorte Holdings, Inc. and Pepsiemployment.com a/k/a Henry Chan, WIPO Case No. D2005-0087).

Complainant further submits that Respondent’s use of <blackberryguru.com> qualifies Respondent as a competitor of Complainant, as Respondent’s website provides links to competitors of Complainant, including Motorola, Palm, Nokia, LG, Sony Ericsson and Samsung. The <blackberryguru.com> website and trade name is disruptive to Complainant as it is likely to result in potential consumers being confused or misled into believing that Respondent’s website is somehow affiliated with, or sponsored by, Complainant.

Complainant submits that as per paragraph 4(b)(ii) of the Policy, Respondent has engaged in a pattern of registering domain names that contain trademarks to which it is not entitled, and has prevented Complainant from registering the domain Name in dispute. As few as two (2) domain name registrations, including a disputed domain name, has been sufficient to establish that a respondent has engaged in a pattern of registering domain names that incorporate the trademarks of third parties (New York Life Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812).

Repeated registrations of trademarks of third parties by a registrant results in a presumption that a disputed domain name registration was performed in bad faith (Valeant Pharmaceuticals International and Valeant Canada Limited v. Johnny Carpela, WIPO Case No. D2005-0786).

Complainant states that prior to issuing its cease and desist letter, at which time the owner of the domain name was Leading Online Edge, Complainant conducted a Registrant Search through domaintools.com. This type of search retrieves those domain names associated with a particular owner name, email address, or any other query entered to the extent that it is available. In this case, Complainant requested a list of domain names associated with Leading Edge Online’s highly distinctive email string leo607@leadingedgedomains.net. This search retrieved a list of 1500 domain names owned by Leading Edge Online. The Registrant Search revealed that Leading Edge Online had engaged in a pattern of abusive domain name registrations. Apart from <blackberryguru.com>, Respondent registered at least 5 domain names to which it had no entitlement to the knowledge of Complainant. Following is a list of abusive domain names registered in the name of Leading Edge Online followed by the corresponding third party Canadian trademark registration and the name of the owner of the Canadian third party trademark registration: <appleradio.com>, Canadian trademark registration No.TMA263265 for the trademark APPLE registered in the name of Apple Inc.; <ipod-video.com>, Canadian trademark registration No TMA600721 for the trademark IPOD registered in the name of Apple Inc.; <disney-villa.com>, Canadian trademark registration No. TMA699068 for the trademark DISNEY registered in the name of Disney Enterprises, Inc.; <ford-fiesta.com>, Canadian trademark registration No.TMA482232 for the trademark FORD and Canadian trademark registration No TMA213680 for the trademark FIESTA both registered in the name of Ford Motor Company of Canada, Limited; and <yamahasales.com>; Canadian trademark registration No.TMA273373 for the trademark YAMAHA registered in the name of Yamaha Corporation.

Complainant states that the ownership information for the above noted domain names now indicates the Respondent as the owner and not Leading Edge Online. When the Complainant issued its cease and desist letter, Leading Edge Online was listed as the owner of these domains. It therefore appears that Leading Edge Online not only hid itself as owner of <blackberryguru.com> following receipt of the Complainant’s letter, but also hid itself as the owner of the other domain names in its portfolio. Respondent has engaged in an abusive pattern of registering domain names that contain third party trademarks to which it is not entitled by virtue of its registration of the domain names listed immediately above and has prevented Complainant from registering the domain name in dispute. Under the circumstances, Respondent’s pattern of abusive registrations falls squarely within paragraph 4(b)(ii) of the Policy.

Complainant submits that <blackberryguru.com> was acquired by Respondent for the purpose of selling, renting, or otherwise transferring it to Complainant for consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name registration. Such action has been held to constitute evidence of bad faith as per subparagraph 4(b)(i) (Marie Claire Album S.A. v. Buy This Domain, WIPO Case No. D2002-0677. In this case, the <blackberryguru.com> domain name was registered through the Registrar eNom. As per the eNom price list the cost to register a dot-com is approximately $10 for a one year registration. The <blackberryguru.com> domain name was registered for a 2 year period, and as such Respondent’s registrations expenses would have been approximately $20. The disputed domain name has been listed at USD500.00, an amount which significantly exceeds Respondent’s registration fees. The <blackberryguru.com> domain name was acquired by Respondent primarily for the purpose of selling it to Complainant for consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name registration.

Complainant states 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 Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270). A 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). Given Respondent’s wholesale incorporation of the famous BLACKBERRY trademark in the disputed domain name and the pointing of the domain name to a website displaying links to competitors of Complainant, the only plausible conclusion is that Respondent had actual knowledge of the BLACKBERRY trademarks at the time of registration, thereby supporting a finding of bad faith.

Complainant further states 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). Respondent never responded to Complainant’s cease and desist letter of January 7, 2008. In light of the foregoing, Complainant respectfully requests that this Panel find that <blackberryguru.com> is confusingly similar with the BLACKBERRY Trademarks that Respondent has no rights or legitimate interest in <blackberryguru.com>, and that <blackberryguru.com> was registered and is being used in bad faith.

A.4 Supplemental Submission

Complainant submits that since the filing of the Response, Complainant has learned that Respondent has not been entirely forthcoming about its relationship with Leading Edge Online, the initial registrant of the domain name. Despite indicating on two occasions in email correspondence to Complainant that Zag Media was acting on behalf of its “client”, Complainant has learned that Leading Edge Online and Zag Media have the same director. This would appear to explain why both Leading Edge Online and Zag Media are located in the same building in Richmond, British Columbia. Given that the parties share a controlling mind, it appears that the parties are working in concert. This also explains the reason that Zag Media has finally identified itself as the owner of the domain name in its final response dated September 24, 2008, although it remains somewhat troubling that the registrant information still suggests that the true identity of the Registrant is concealed.

Complainant further states that Zag Media is in the business of domain names and is the owner of an extensive domain name portfolio, totaling over 2000 domain names. A fair number of these domain names reflect third party trademarks to which Zag Media does not appear to be entitled. Following is a further list of domain names registered in the name of Zag Media Corp. followed by the corresponding third party Canadian trademark registration and the name of the owner of the Canadian third party trademark registration: <applereviews.com>, Canadian trademark registration No. TMA263265 for the trademark APPLE registered in the name of Apple Inc.; <disney-holiday.com> Canadian trademark registration No. TMA724041 for the trademark DISNEY owned by Disney Enterprises, Inc.; <super7.com>, Canadian trademark registration No. TMA445077 for the trademark SUPER 7 owned by Interprovincial Lottery Corporation; <blockbudter.com>, Canadian trademark registration No. TMA430841 for the trademark BLOCKBUSTER owned by Blockbuster Inc.; <tdhome.com>, Canadian trademark registration No. TMA647831 for the trademark TD owned by The Toronto Dominion Bank.

Complainant further submits that in addition to the above domain names, Zag Media is also the owner of numerous domain names that reflect third party marks. A mere sample include <warimex.com>, <adaenterprises.com>, <basicjeans.com>, <bennetthouse.com>, <blue-phoenix.com>, <bp-solutions.com>, <devonmedical.com> <dinobaby.com>, <durolift.com>, <fcmagazine.com>, <four-roses.com>, <game-mate.com>, <housemaster.com>, <lux-mundi.com> and <promantis.com>.

Complainant states that all of the above-noted domain names are listed for sale for $500.00. This information is included on the Registrant information for each domain name. A review of the portfolios of Zag Media and Leading Edge Online have revealed that they have engaged in what can only be described as an extensive, sytematic and flagrant pattern of abusive domain name registrations, all with a view to securing a financial windfall by selling the domain names to their rightful owners.

Complainant states that Respondent has taken the position that the <blackberryguru.com> domain name constitutes a legitimate registration on the basis that it is a reference to a type of fruit, and that the website provides relevant “information” about “blackberries, berries, and other fruit”. In fact, the website does not contain a link entitled blackberries or information on blackberries. Further, the website does not provide any “information” at all; it is a pay-per-click website comprised exclusively of sponsored link advertisements with no original content. Indeed, the website has nothing to do with the blackberry fruit. Notwithstanding the foregoing, as noted by Respondent, “guru” denotes an expert. The famous BLACKBERRY trademark together with the word “guru” suggests to potential consumers that the site provides expert services related to the BLACKBERRY device. In the minds of consumers, <blackberryguru.com> would therefore be a reference to Complainant.

Respondent has taken the position in its Response that Complainant caused the competitor links to appear on Respondent’s website, and on that basis, bad faith does not exist. Complainant strongly disputes this position, and notes that it is a well-established principle that a respondent is “responsible for the content of any webpage hosted at the disputed domain name” (Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; see also Starwood Hotels & Resorts Worldwide, Inc., Sheraton, LLC, and Sheraton International Inc. v. Jake Porter, WIPO Case No. D2007-1254; Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448).

B. Respondent

Respondent filed a completed Response on September 24, 2008 the last day set for submission of a Response by the Panel in an Administrative Order No. 2. Respondent states that Zag Media Corp. is the registrant of the domain name (Registered name Holder). Respondent states that the name “Respondent” refers to Zag Media Corp. or licensees of the domain name, or both, as may be applicable in this response.

B.1 Identical or Confusingly similar

Respondent submits that <blackberryguru.com> consists of two generic, non-distinct, common English words: “blackberry” being a fruit, and “guru” loosely meaning an expert. The combination of the two words would lead an average user to expect a web site with information and links about the blackberry fruit and related topics. Respondent further submits that Complainant presented no evidence that Complainant has any trademarks relating to products or services known as <blackberryguru.com>. Respondent cannot find any evidence that “blackberryguru” is a registered trademark owned by Complainant.

Respondent submits that Complainant provided no evidence that Complainant has exclusive use of the generic dictionary term “blackberry”. In fact, there are dozens of registered trademarks that are live, that are registered to many entities other than Complainant, and incorporate the term “blackberry”. Respondent produced a list of twenty-two United States Trademark Registrations for the word “blackberry” alone or in combination with another word or words.

Respondent states that the United States Patent and Trademark Office (“USPTO”) continues to allow registrations of “blackberry” trademarks in various classes, for example, “blackberry farm” was registered as recently as May 20, 2008 by Blackberry Hotel Company (United States Trademark Registration No.3433085). Respondent also submits that Complainant was not the first to register the “blackberry” term as a trademark. There were at least 3 registrations (2314647, 2316661, 2384464) prior to Complainant’s earliest registration (2402763) of the “blackberry” mark in the United States Trademarks database.

B.2 Rights or Legitimate Interests in respect of the Domain Name

Respondent states that it has rights and legitimate interests in this domain name as “blackberry” is a common English word for a type of fruit. Respondent claims common law trademark rights to the term “BlackberryGuru” for use as an online web portal showing relevant information about blackberries, berries, and other fruit.

Respondent submits that the fact that the USPTO continues to allow registrations of trademarks incorporating the term “blackberry” show that many parties, including Respondent, have the rights to use the “blackberry” term as long as there are no conflicts with existing registered trademarks incorporating the dictionary word, “blackberry”. Complainant is not the first to use this term and will not be the last with exclusive rights to use this term. The term “blackberry” is commonly used by many parties. A search in “domaintools.com” of active domain names with the term “blackberry” incorporated produced more than 20,000 results. Looking at a sample of these names, Respondent found very few were owned by Complainant. Any rights of Complainant to the common English word, “blackberry” are narrow in scope, diluted, and non-exclusive.

Respondent states that it’s use of the <blackberryguru.com> is for the bona fide offering of goods or services directly related to the words “blackberry” and “guru” Respondent’s <blackberryguru.com> web site shows information and links relating to the blackberry fruit as well as other fruits and related topics.

Respondent states that Complainant acknowledged in their Complaint that “Respondent resolved the domain name to a homepage displaying various fruit and vegetable-related links”. Respondent does not link to products or sites that compete with Complainant. Respondent’s use of the <blackberryguru.com> website does not conflict with Complainant’s use of the term “blackberry”. Complainant provides no evidence that Complainant’s trademark(s) prevent others from using the term “blackberry” for a web site about berries and fruits and related topics. As there is no overlap in Respondent and Complainant’s use of the term “blackberry”, there is no likelihood of confusion between Respondent’s website and Complainant’s mark

B.3 Registered and Used in Bad Faith

Respondent submits that it has acted in good faith and has not profited from Complainant’s mark. Respondent has legitimate rights to use the domain name in dispute for the bona fide offering of goods and services directly related to the subject of this domain name. Respondent’s use of <blackberryguru.com> does not conflict with any marks registered by Complainant. Respondent does not profit from Complainant’s mark, as there is no confusion between Respondent’s website and Complainant’s mark. It is not reasonable to expect that Respondent’s web site about fruits and related topics would attract any users interested in Complainant’s products. Complainant did not present any evidence showing Respondent made any profits from this domain name, in parking revenue or otherwise.

Respondent denies Complainant’s allegation that the home page associated with the domain name in dispute displayed links to competitors of Complainant. Respondent states that Complainant specifically and intentionally caused these links to appear by entering terms relating to competitor keywords directly into the “Search the web” feature on the website, as evidenced in the attachments Appendix 17 of the Complaint. Complainant provided no evidence that any user other than Complainant has seen or caused such links to appear. There is no evidence and it is not reasonable to expect that any visitor has used this website in such a manner.

Respondent states that it has not tried to sell, rent, or otherwise transfer the domain name registration to Complainant or to a competitor of Complainant, for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name. Complainant provided no evidence of any communication between Respondent and Complainant that indicated such action by Respondent.

Respondent states that the domain name in dispute does not prevent Complainant from reflecting the mark in a corresponding domain name. Respondent notes that Complainant already has the <blackberry.com> domain name which reflects Complainant’s trademark in a corresponding domain name.

Respondent states that it does not engage in a pattern of abusive domain name registrations. Complainant made claims without providing any evidence showing that any domain names were previously found to have been registered in bad faith by Respondent or that Respondent does not have legitimate interest or has not taken steps to use any domain names in a bona fide offering of goods or services.

B.4 Reverse Domain Name Hijacking

Respondent submits that Complainant knew that Respondent’s use of <blackberryguru.com> does not conflict with Complainant’s rights to their trademarks. Complainant knew or should have known that blackberry is a common generic English dictionary word, and Respondent’s use of <blackberryguru.com> as a website for information regarding blackberries, fruits, and related topics is legitimate and a bona fide offering of goods or services directly related to the domain name, and Respondent has legitimate interests in this domain name. Complainant acknowledged in its Complaint that Respondent is using this domain name to resolve to content regarding fruit and related subject, which do not conflict with Complainant’s trademark. Respondent respectfully submits to the Panel that the Complainant acted in bad faith and requests the Panel to find this Complaint to be an attempt at reverse domain name hijacking.

B.5 Supplemental Response

Respondent states that as shown in the WhoIs record for <blackberryguru.com>, Zag Media Corp. appears in the registrant field of the domain name, without concealment. Zag Media Corp. offers WhoIs privacy services and Complainant erroneously suggested Zag Media Corp.“has finally identified itself as the owner of the domain name in its final response”. The WhoIs record has not changed since Complainant submitted their Complaint. Zag Media Corp. and clients/licensees are separate entities controlled by different people. The Response clearly stated that Zag Media Corp. is the domain name registrant (as shown in the public WhoIs record) and “Respondent” refers to Zag Media Corp. or the licensee of the domain name, as may be applicable in the response. It is common practice for domain name owners to use WhoIs privacy services. Panels have also stated that “there can be wholly legitimate reasons for a person wishing to protect privacy by means of a proxy service. Many reputable registration services now offer a proxy registration service.” (WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, WIPO Case No. D2006-0975).

Respondent states that there are definitely errors in Complainant’s submissions. For example, Complainant claimed Respondent is the registrant of <blockbudter.com>. Reviewing the WhoIs record for this domain shows the following information: Registrant: ZAG Media Corp., 902 Water St, Brandon, Florida 33511, United States of America.

This “Zag Media Corp.” is a company located in Florida in the United States of America and has no relations to Respondent. Because Complainant has listed domain names with unknown owners or owners who have no relation to the licensee of <blackberryguru.com>, Respondent requests the Panel to treat this case on its own merits. On the other hand, each case must be judged on its own merits, and UDRP panels have found in favor of Respondent when it registered domain names based on generic words or short strings of letters. See, e.g., HSM Argentina S.A. v. Vertical Axis, Inc., WIPO Case No. D2007-0017; Jet Marques v. Vertical Axis, Inc, WIPO Case No. D2006-0250.

Respondent submits that Complainant on the one hand claims that any information displayed when they intentionally enter in specific competitor keywords into the search bar is valid web content. While in the same submission, Complainant claims the web site has nothing to do with the blackberry fruit. Using Complainant’s argument, if they don’t easily find the specific information they are looking for, they can always use the search bar once again which will get them any information that can be searched on the web. In addition to the blackberry information already on the website, entering “blackberry fruit” into the search bar produces many more results.

Respondent states that Complainant claims trademark rights to the <berryhome.com> domain name in their latest submission. Complainant claims that Respondent’s domain name <berryhome.com> infringes on their <blackberry> trademark, TMA638068. Complainant argued that “berryhome.com”and <blackberryguru.com> “constitutes a pattern of internally obstructive registrations.” Complainant does not have a trademark for the term “berry”. Berry is a generic dictionary term. Complainant has not shown any evidence of any rights to the berry term. Berry is used as a first name (“http://www.thinkbabynames.com/meaning/1/Berry”) and is also a common surname (for example, Halle Berry). Respondent is extremely disturbed by Complainant’s claim of trademark rights to a domain that has nothing to do with their trademark. Respondent submits to the Panel that Complainant is showing a pattern of making claims that accuse Respondent of violating weak or non-existent trademarks related to domain names. According to the Respondent, this is clearly an example of reverse domain hijacking, as defined in wikipedia: “Reverse domain hijacking is the practice of inequitably unseating domain name registrants by accusing them of violating weak or non-existent trademarks related to the domain name.” (“http://en.wikipedia.org/wiki/Reverse_domain_hijacking”)

6. Discussion and Findings

A. Procedural Issues

Respondent continues to question the procedural correctness of this case. Respondent submits that the Amended Complaint was not filed within the 5 days provided for amending deficiencies in the original Complaint and that the Provider has no jurisdiction to further consider the Amended Complaint. Alternatively Respondent submits that this case has procedural deficiencies that must be rectified by Complainant and the Center before a Formal Requirements Compliance Review of the Amended Complaint can be properly completed.

In order to appreciate this procedural defense a review of the case history is necessary.

Complainant filed the original Complaint with the Center on June 3, 2008. After conducting registrar verification and compliance review, a Notification of Complaint and Commencement of Administrative Proceeding was forwarded to Respondent on June 9, 2008. Respondent was advised in the latter Notice that the last day for filing its Response was June 29, 2008. On June 25, 2008, Respondent sent an e-mail to the Center submitting that the Complaint was invalid as the Complaint failed to comply with rule 10(a) under the “Word Limits” section of the Supplemental Rules. Paragraph 3(b)(ix) provides that the Complaint shall not be over 5,000 words.

The Center after considering Respondent’s objection and concluding that the Complaint did in fact exceed the stipulated 5,000 word limit forwarded an e-mail to Complainant on July 26, 2008 requesting Complainant to file an Amended Complaint with a view to renotifying the Complaint with a corresponding extension in the due date for Response.

In the Deficiency Notification of July 26 the Center advised Complainant that any electronic submission by you to the Center should be made by July, 1, 2008. On July 26, 2008 counsel for Complainant requested the Center for an extension of time until July 2, 2008 advising the Center that July 1 is a holiday in Canada. The Center advised the parties that the requested date of July 2, 2008 is acceptable.

On July 4, 2008 Complainant electronically filed an Amended Complaint with the Center with a copy to Respondent.

On the same day Respondent forwarded an e-mail to the Center submitting that the Amended Complaint was not valid because the Complaint is deemed withdrawn since it has been more than five (5) calendar days since Complainant was notified of deficiencies in their Complaint. “We ask the Center to close the Complaint, (msm) D2008-0848.”

Respondent relied on Section 5(b) of the Supplemental Rules:

“5(b)Withdrawal. If the Complainant fails to remedy any deficiencies identified by the Center within the period provided for in Paragraph 4 of the Rules ( i.e., five (5) calendar days), the Center shall notify the Complainant, the Respondent and the concerned Registrar(s) of the deemed withdrawal of the Complaint.”

And Section 4(b) of the Rules:

“4(b) If the Provider finds the complaint to be administratively deficient, it shall promptly notify the Complainant and the Respondent of the nature of the deficiencies identified. The Complainant shall have five (5) calendar days within which to correct any such deficiencies, after which the administrative proceeding will be deemed withdrawn without prejudice to submission of a different complaint by Complainant.

On July 8, 2008 the Center acknowledged receipt of Respondent’s submission that the Amended Complaint was not valid because it has been more than five (5) days since the Complainant was notified of the deficiencies with their Complaint. The Center advised the Parties that Respondent’s procedural objection would be forwarded to the Panel (to be appointed). On July 8, 2008 Respondent forwarded a further e-mail to the Center restating its submission of July 4, 2008 and requesting an explanation how a Complaint can proceed when it fails to comply with the Rules and Supplementary Rules.

On July 9, 2008 the Center invited Complainant to submit any comments it may have on the issue of filing of the Amended Complaint on July 4, 2008 (two days after the agreed extension to July 2, 2008). On July 11, 2008, the Center advised Complainant that it had not received a reply to its invitation to respond to Respondents submission and informed Complainant “we may need at that point to proceed to issue a notification of deemed withdrawal without prejudice to the filing of a new Complaint by you.”

On July 11, 2008 Complainant forwarded a submission to the Center in response to Respondent’s submission that Complainant’s late filed Amended Complaint cannot be considered having been filed two days after the due date for amending deficiencies.

Complainant submitted that the Amended Complaint was indeed intended to be transmitted on July 2, 2008. However due to an internal administrative error, the Complaint was not sent as it should have been. The error was discovered on July 4, and the Complaint was promptly forwarded. Complainant states that the error was not reasonably foreseeable and that it could not have been avoided. Complainant submitted that the Amended Complaint was filed very shortly after the July 2 date, and submits that the delay caused no prejudice to Respondent, nor has it significantly delayed these proceedings.

Complainant submits that the case law supports the position that a delay of two (2) days is considered so minor so as not to be grounds for refusal of the Amended Complaint. Such a minor delay has been held not to prejudice either party or delay a decision. Complainant submits that in keeping with administrative law principles, Panels have been of the view that to refuse submissions based upon an inconsequential delay would not be in keeping with fundamental principles of justice.

Complainant relied on the decision in Arthur Guiness Son & Co. (Dublin) Limited v. Feeney O’Donnel and John O’Donnel, WIPO Case No. D2000-1710 where the panel held that a delay of one (1) day was inconsequential and accepted the late response despite a Notice of Default having been issued. The panel stated that: “the delay was de minimus and this Administrative Panel has admitted and considered the submissions set out in the Response.” Complainant also relied on the panel decision in J. P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035 in which the panel accepted a response filed two days after Notification of Respondent’s Default following an earlier decision in Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 where the panel accepted an e-mail filed by respondent two days after the deadline for a response because it was received before any substantive review had begun.

Complainant also relied on the reasoning of the panel in AT&T Corp. v. Randy Thompson, WIPO Case No. D2001-0830. The response in this case was due on July 18, 2001. On July 20, 2001, the Center transmitted a Notification of Respondent Default. On or about July 25, 2001 respondent submitted a response. Although the panel declined to find “exceptional circumstances” pursuant to Rule 14(a), the panel nevertheless considered respondent’s response “pursuant to the general powers and responsibilities set out in Rule 10. Denial of an opportunity for response would be a rather drastic step which, should be undertaken with great care in view of the exhortation of Rule10(b) that each party be given “a fair opportunity to present its case.”

Respondent forwarded a rebuttal to Complainant’s submission on July 11, 2008. Respondent submitted that the cases relied on by the Complainant related to Respondents being late in filing a Response and do not relate to any Complainant being late and the Complaint proceeding. Respondent further submitted to the Center that Complainant was not only 2 days late, but was in fact 3 days late from the July 1 deadline and 2 days late from the Complainant’s requested extension date. Respondent reiterated its submission that the proceeding should not continue in light of the Complaint being non-compliant with the Rules and Supplemental Rules.

Respondent submitted an informal communication on July 31, 2008 indicating that it will defer providing a Response since it considered the Complaint and proceedings to have deficiencies that are material and that if the Panel decides a Response is necessary, Respondent will show that the Complaint is without merit. Such a position is usually taken where the jurisdiction of the tribunal to consider the matter is in question.

The Panel considered the procedural objection raised by Respondent that the Center had no jurisdiction to accept the revised Complaint which corrected the deficiency in the original Complaint, after the “deemed withdrawal” of the original Complaint under paragraph 4(b) of the Rules. The Panel issued Administrative Order No.1 finding that a “deemed withdrawal” was not a dismissal of a Complaint as such but a step which permitted a Complainant to proceed with a Complaint provided Complainant followed procedures permitted by the Policy and Rules. The Panel found that the Center had implicit authority to accept the Amended Complaint which was filed 2 or 3 days after the authorized 5 day time for correcting deficiencies in the original Complaint. In Administrative Order No.2 the Panel pursuant to the general powers of the Panel, paragraph 10(b) of the Rules, which states that the Panel shall insure that each Party is given a fair opportunity to present its case also extended the time for Respondent to file its Response for 20 days to September 24, 2008.

Respondent filed its Response on September 24, 2008. In the Response, Respondent withdrew its original position that the Provider had no jurisdiction to consider the Amended Complaint after the 5 days for amending deficiencies in the original Complaint had expired. Respondent agreed that the Complainant has a right to resubmit a new complaint after a “deemed withdrawal.” Respondent then set out its alternative position outlining the steps that Complainant and the Provider were required to take before the Provider could accept the Amended Complaint.

Paragraph 10 of the Rules is entitled “General Powers of the Panel” more Paragraph 10(c) of the Rules instructs the Panel to proceed expeditiously and permits the Panel in exceptional cases to extend a period of time fixed by the Rules. Paragraph 10(c) of the Rules states: “The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a party or on its own motion, extend in exceptional cases, a period of time fixed by these rules or by the Panel.”

The Panel notes that Complainant had obtained an extension of time from the Center to July 2, 2008 to file a Complaint which overcame the deficiencies in the original Complaint. July 1 is a “dies non” being a national holiday in Canada. The Amended Complaint was filed with the center on July 4, 2008. Counsel for Complainant advised the Center that the Amended Complaint was intended to be transmitted on July 2, 2008. However due to an internal administrative error the Complaint was not sent as it should have been. The error was discovered on July 4 and the Amended Complaint absent the deficiencies was forwarded to the Center on July 4, 2008. The Panel notes that previous panels have held that a short delay of 1 day was inconsequential and accepted a late response despite a Notice of Default having issued. Arthur Guiness Son & Co. (Dublin) Limited v. Feeney O’Donnell and John O’Donnell, WIPO Case No. D2000-1710; the panel in J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035 accepted submissions that were 2 days late; in the case Collegetown Relocation, L.L.C. V. John Mamminga, NAF Claim No. FA95003, submissions that were over 4 days late were still considered so as to avoid a “gross miscarriage of Justice”.

As noted above a “deemed withdrawal” is not dispositive of the case but may open up procedural extensions to a Complainant as may reasonably be stipulated by a provider which when followed and upheld by the appointed Panel may extend the time of the administrative proceeding. In this case, the panel accepts the filing of the Amended Complaint as the delay of several days in filing the Complaint was inconsequential and did not affect the rights of the Parties to a fair hearing. The Panel is mandated to ensure that the administrative proceeding takes place with due expedition and following the procedural steps advanced by Respondent would likely serve only to further extend the length of the dispute between the parties under the Policy. The Panel will therefore proceed to issue its Decision on the merits, as set out below.

B. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy Complainant must establish rights in a trademark and secondly that the domain name in dispute is identical to or confusingly similar to the trademark in which Complainant has rights.

Complainant is the owner of over fifteen hundred (1500) trademark registrations and/or applications throughout the world for trademarks for or including the word BLACKBERRY used in association with the goods: electronic handheld units for the wireless reception 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 e-mail, 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 and in association with the services: e-mail services; wireless data messaging services, namely, services that enable a user to send and/or receive messages through a wireless data network using a handheld, portable electronic device; one-way and two-way paging services.

Complainant’s registered trademarks for or including Blackberry in Canada include TMA554207 for the trademark BLACKBERRY, registered November 21, 2001; TMA554206 for the trademark BLACKBERRY and colour design, registered November 21, 2001; TMA555231 for the trademark BLACKBERRY and design, registered December 11, 2001; TMA 624894 for the trademark BLACKBERRY CONNECTION, registered November 8, 2004; TMA659946 for the trademark BLACKBERRY and BBBB design, registered March 1, 2006; TMA659954 for the trademark BLACKBERRY and BBBB design registered March 1, 2006 and TMA638068 for the trademark BLACKBERRY registered on April 21, 2005.

Complainant is as well the owner of a greater number of registered trademarks for or including BLACKBERRY registered in the United States of America between the years 2000 and 2006.

Founded in 1984, Complainant has developed and marketed a highly successful line of products, accessories and services in connection with the BLACKBERRY trademark, including the well-known Blackberry smartphone. The Blackberry smartphone is available on over 300 networks in over 100 countries worldwide.

As reported in Complainant’s Annual Report for the fiscal year ending March 2008, Complainant generated revenues in excess of USD6 billion dollars with a subscriber account base of over 14 million. These revenues were generated in association with Complainant’s goods and services sold and advertised in association with its trademarks for or including BLACKBERRY.

The Brand Finance of Canada’s MostValuable Brands 2007 report ranks the BLACKBERRY brand as the eighteenth most valuable brand in Canada, ahead of such well-known brands as Petro-Canada, Molson and Tim Hortons.

In 2008, the BrandZ ranking of leading brands prepared by a leading global research and marketing firm rated the BLACKBERRY brand at number 51 in the Top 100 Global Brands ranking, with a brand value of USD13,734 million. The BrandZ report showed the BLACKBERRY brand having a brand value change of 390% over the previous year, the most substantial improvement among the worlds leading brands.

Complainant has been 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.

The domain name in dispute is comprised of Complainant’s registered trademark BLACKBERRY in combination with the word “guru” and the TLD designation “.com”. The word “guru” means someone having expertise. Used in combination with “blackberry” the domain name suggests a person having expertise with “blackberry”. The distinctive portion of the domain name in dispute is Complainant’s trademark BLACKBERRY while the word “guru” is descriptive. The Panel agrees with the reasoning of the panel in Research in Motion v. WG/Shabaz Khan, WIPO Case No. D2008-0165 where the panel, in ordering the domain name <blackberryaccessories.com> transferred to complainant, held that the addition of “accessories” did nothing to diminish confusion stating: “The Panel is satisfied that the Domain Name is confusingly similar to this mark. The addition of the generic term “accessories” and the top level domain suffix do not dispel confusion. Many Internet users would suppose that the Domain Name refers to a website of the

Complainant selling smart phone accessories.”

The Panel has considered Respondents submission that the domain name in dispute would lead an average Internet user to expect a website with information links about the blackberry fruit and related topics. The homepage associated with the domain name in dispute does not contain any link to blackberry fruit or bushes although the home page does contain links to other berries, fruit nut, etc. This Panel agrees in any event with the consensus view expressed in “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” para. 1.2 that the content of a web site is irrelevant in determining confusing similarity. “The test for confusing similarity should be a comparison between the trademark and the domain name to determine the likelihood of confusion.”

The Panel concurs with Respondent’s submission that Complainant has not presented evidence that it owns trademark rights in the trademark “blackberryguru”. Complainant is relying on its registered trademark rights in the trademark BLACKBERRY.

The Panel has considered Respondent’s evidence that persons other than Complainant own trademark registrations in the United States of America for the trademark BLACKBERRY and that the USPTO continues to allow registrations for BLACKBERRY. Complainant has established that it is the owner of many trademark registrations in Canada and the United States of America for the trademark BLACKBERRY in respect to the wares and services set out in Section 4 above which satisfies the requirements under paragraph 4(a)(i) of the Policy. The Panel finds that Complainant has established trademark rights in the registered trademark BLACKBERRY. The Panel finds that the domain name <blackberryguru.com> is confusingly similar to Complainant’s trademarks for or including BLACKBERRY.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy Complainant must prove that Respondent has no rights or legitimate interests in respect of the domain name in dispute.

Having regard to the summary nature of UDRP proceedings some facts relevant to the issue may be in the control of Respondent and not available to Complainant. If Complainant is able to establish a prima facie showing of absence of rights or legitimate interests of Respondent in the domain name in dispute the evidentiary burden shifts to Respondent to show by plausible evidence that it does have rights or legitimate interests in the domain name in dispute.

Prior to considering UDRP decisions and the evidence of the parties relating to Complainant’s allegation of Respondent’s alleged targeting of Complainant’s trademark or Respondent’s alleged legitimate use of the domain name as a generic use of “blackberry” and “guru” in relation to blackberry fruit and related topics, it is useful to consider the parties and the businesses which the parties carry on.

Complainant’s business, trademarks and its goods and services are discussed in Section 4 above. Complainant is a leading innovator and manufacturer of multitasking wireless devices in the world with revenues in excess of 600 billion US dollars in the fiscal year ending March 2008. Complainant’s smartphones are advertised and sold throughout the world in association with its trademark BLACKBERRY.

Respondent’s advertised business is offering advanced web management services. A search under “http://zagmedia.com” shows the home page for Zag Media. The home page describes the services offered by Zag Media as Advanced Web Management Services. More particularly Respondent states that: “Zag Media provides complete domain and web management services. We assist our clients with domain management, whois privacy, parking optimization, dispute resolution, and sales and marketing. As well we work with our clients and our partners on web development and web hosting.” A search of DomainTools WhoIs Record for <blackberryguru.com> conducted on August 7, 2008 states that “Zag Media Corp.” owns about 23,499 other domain names.

Complainant has stated and Respondent has not denied that Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s registered trademark.

Complainant submits that Respondent has never used or prepared to use the domain name in dispute in association with a bona fide offering of goods or services. Respondent has not submitted any evidence that it offers for sale or ever planned to commence a business of selling blackberries. Respondent has used the domain name in dispute to link to an advertising web page with reference to berries but no reference or links to blackberry or blackberries.

Considering the above facts the Panel finds that Complainant has established that its trademark BLACKBERRY is a well-known trademark in relation to multitasking handheld wireless communication devices. Complainant’s BLACKBERRY brand ranks as 18 in the most valuable brands in Canada and 51 globally. The Google entry for <blackberryguru.com> does not include any reference to blackberries or blackberry fruit. Complainant has made out a prima facie case that Internet users familiar with Complainants goods and services sold or advertised in association with the trademark BLACKBERRY on seeing the Google entry for <blackberryguru.com> will visit the website presuming that the website is operated by Complainant or some expert licensed by Complainant.

Pursuant to paragraph 4(c)(i), (ii) and (iii) of the Policy, Respondent may demonstrate its rights and legitimate interests in the domain name in dispute for the purposes of paragraph 4(a)(ii) of the Policy in responding to the Complaint. Respondent is not limited to the circumstances set out in paragraph 4(c) of the Policy.

Paragraph 4(c)(i) of the Policy provides that rights or legitimate interests in the domain name in dispute if Respondent demonstrates that: “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;…”

Respondent submits that it has a legitimate interest in the domain name in dispute as the domain name is comprised of two generic, non-distinct common English words: “blackberry” being a fruit, and “guru” loosely meaning an expert. Respondent submits that the combination of the two words would leave an average Internet user to expect a website with information and links about the blackberry fruit and related topics. Respondent claims common law trademark rights to the term “BlackberryGuru” for use as an online web portal showing relevant information about blackberries, berries and other fruit.

A Google search for <blackberryguru.com> disclosed a link entitled “Welcome to <blackberryguru.com> followed by the invitation: “Click here for more information about <blackberryguru.com> and the domain name <blackberryguru.com>. Clicking on the link produced a web page associated with the domain name in dispute.

The web page associated with the domain name in dispute displays a series of links to Berries, Fruit Nut, Monavie, Jam, Grapes, Dried fruit and Strawberry. Although the heading of the home page is <blackberryguru.com> there is no link on the home page to blackberry or blackberries. There are links to Strawberry and Blueberry under Berries and a link to Raspberry under Jam, but no link to Blackberry or blackberries. In the Response Respondent states that its website associated with the domain name <blackberryguru.com> shows information and links relating to the blackberry fruit. The Panel does not see any such information or links on Respondent’s home page.

Internet visitors to the website associated with the domain name in dispute in which “blackberry” is the most distinctive element may well be confused to find no reference to blackberry or blackberries on the web page.

The web page associated with the domain name <blackberryguru.com> does contain a “Search the Web” box. In the absence of any links to “blackberry” on the home page Internet visitors familiar with Complainant’s trademark BLACKBERRY may enter “blackberry” in the Search the Box. Entering “blackberry” in the Search the Box brings up a home page generated by searchnut.com with links to the products of Complainant and its competitors. The web page includes links to related searches such as Blackberry Accessories, Pda, Wireless and Pocket Pc.

The <blackberryguru.com> domain name resolves to a pay per click web site. The print out of the home page associated with the <blackberryguru.com> domain name disclosed the domain name at the bottom of the page. (http://www.searchnut.com/?domain=blackberryguru.com).

The domain name <searchnut.com> is owned and hosted by Parked.com. Parked.com operates a revenue program whereby domain name holders that park their domain names at its sites become eligible for a referral fee. Parked.com describes its domain monetization services at its web site as follows: “Just owning a domain name can earn you money with Parked.com. All you have to do is send us your visitors. We’ll pay you industry-leading commissions”.

Respondent takes three positions with Complainant’s allegation that Respondent is receiving pay-per-click revenue from Parked.com from use of the <blackberry.guru.com>. Respondent’s first position is that Respondent has legitimate rights to use the domain name in dispute for the bona fide offering of goods and services directly related to the subject of the domain name. The Panel rejects the first position, noting among other things that Respondent does not appear to be in the business of offering blackberries for sale, and in any event there are no links on the webpage to “blackberry” or “guru”. Respondent’s second position is that Respondent’s use of <blackberryguru.com> does not conflict with any trademarks registered by Complainant. The Panel rejects Respondent’s second position for the reasons expressed above where the Panel found that the domain name in dispute is confusingly similar to Complainant’s registered trademark BLACKBERRY. Respondent’s third position is that Complainant did not present any evidence showing Respondent made any profits from this domain name, in parking revenue or otherwise. The Panel rejects Respondent’s third position. Complainant has shown that the domain name in dispute resolves to a website operated by Parked.com which provides pay-per-click services for parked domain names, a showing which is sufficient to switch the burden of evidence to Respondent. As the amount of payment received by Respondent from Parked.com is not available to Complainant, it cannot be expected to produce such evidence.

Based on the above facts the Panel concludes that Respondent has entered into an arrangement with Parked.com and is receiving pay-per-click revenue from Parked.com. from the homepage associated with the domain name in dispute.

A Google search for <blackberryguru.com> also disclosed a link to Domain Tools WhoIs Record for <blackberryguru.com> at or near the top of the Google search page. The DomainTools WhoIs Record for <blackberryguru.com> resolves to “http://whois. Domaintools.com/blackberryguru.com”. Respondent is familiar with and refers in paragraph 12 of the Response to a search in domaintools.com of active domain names with the term “blackberry.com” incorporated in the domain name. The web pages associated with DomainTools WhoIs Record for <blackberryguru.com> include a series of advertisements and links to Complainant’s products and services as well as links to products of Complainant’s competitors such as Palm PDA, Sony PDA, Motorola PDA, PDA Software, and GPS Handheld PDA. One of the advertisements is entitled “Richmond BC Real Estate”. Richmond BC is the city in which Respondent is located. The DomainTools WhoIs Record for <blackberryguru.com> also states that a Registrant Search discloses that “Zag Media Corp.” owns about 25,646 other domains.

As one of Respondent’s specialties is optimization of domain name income, the Panel infers on a balance of probabilities that Respondent is receiving pay–per-click income from use of the links associated with the DomainTools WhoIs Record for <blackberryguru.com>.

Resolving a domain name in dispute to a pay-per-click website may undermine a claim for legitimate use. See, Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430 where the panel held that: “As described above, it is evident to the Panel that the Respondent uses the disputed domain name for the purpose of redirecting visitors to “http://dp.information.com”, a search engine operated by <domainsponsors.com>. The use of the domain in such a way does not constitute a bona fide offering of goods or services giving rise to any right or legitimate interests. This conclusion is supported by several WIPO Administrative Panel Decisions.”

Respondent has not established that it is using the domain name in dispute as a generic term referring to blackberry fruit. The Google search for <blackberryguru.com> includes an entry for and a link to Respondent’s website. Neither the Google entry for Respondent’s website or Respondent’s website itself at <blackberryguru.com> make reference to blackberries, blackberry jam, blackberry plants, or any such generic use of the word blackberry. The webpage associated with the domain name in dispute does not include the word blackberry, the distinctive portion of the domain name in dispute. When the word “blackberry” is associated with the domain name in dispute by entering the domain name in the Search the Web box on Respondent’s homepage or as seen in advertisements and links on DomainTools Whois Record for <blackberryguru.com>, the word “blackberry” is associated with the goods or services of Complainant or its competitors which does not support a finding of rights or legitimate interests of Respondent in the domain name in dispute.

Numerous UDRP decisions support Respondent’s position that the use of a domain name containing a descriptive expression for genuinely descriptive purposes may be permitted under the Policy. See, General Machine Products Company, Inc. v. Prime Domains a/k/a Telepathy, Inc., NAF Case No. FA92531 where the panel noted: “As long as the domain names have been registered because of their attraction as dictionary words and not because of their value as trademarks, this is a business model that is permitted under the Policy.” Numerous UDRP decisions support Complainants position that use of a domain name to target a registered trademark is not permissible under the Policy. See, Starwood Hotels and Resorts Worldwide, Inc., Sheraton LLC and Sheraton International Inc., v. Jake Porter, WIPO Case No. D2007-1254, where the Panel noted: “There is no evidence in the record that the advertising links displayed on the parking websites to which the Domain Names formerly resolved had anything to do with any of those uses of “St. Regis” [i.e., the uses the respondent claimed to have intended], however, belying the Respondent’s claimed interest in the domain names for their “generic” value.”

The Panel finds that Respondent in this case is more likely than not targeting Complainant’s BLACKBERRY mark (as discussed below under Section 6 D), and accordingly has failed to demonstrate its rights and legitimate interests in the domain name in dispute pursuant to paragraph 4(c)(i) of the Policy.

Paragraph 4(c)(ii) of the Policy states “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;” Respondent submits in its Response that it claims common law trademark rights to the term “BlackberryGuru” for use as an online web portal showing relevant information about blackberries, berries, and other fruit. Respondent did not file any evidence of any advertising of the portal, the number of Internet visitors to the portal or any survey or other evidence supporting the allegation that that Respondent was commonly known by the domain name <blackberryguru.com> or the trademark “BlackBerry” for use as an online portal showing relevant information about blackberries, berries or other fruit. As noted above neither the Google entry for the domain name in dispute or the homepage associated with the domain name in dispute make reference or include links to blackberry, blackberries or fruit. Respondent has failed to demonstrate its rights or legitimate interests in the domain name in dispute under paragraph 4(c)(ii) of the Policy.

Having regard to paragraph 4(c)(iii) of the Policy, Respondent submits that it has acted in good faith and has not profited from Complainant’s trademark. Respondent states that the home page associated with the domain name in dispute displays various fruit and vegetable-related links and states that Respondent’s homepage does not include links to products or sites that compete with Complainant. Although the heading of the home page is <blackberryguru.com> there is no reference or link on the home page to blackberry or blackberries.

Respondent’s home page associated with the domain name <blackberryguru.com> does contain a “Search the Web” box. Complainant’s customers or potential customers familiar with Complainant’s trademark BLACKBERRY may type “blackberry” into the “Search the Web” box on Respondent’s home page. The entry of “blackberry” in the “Search the Web” box resolves to a home page generated by searchnut.com with links to the products of Complainant and its competitors. The generated homepage includes links to related searches such as Blackberry Accessories, Pda, Wireless and Pocket Pc. The Panel infers from the fact that the domain name in dispute resolves to Parked.com that Respondent receives pay-per-click income for clicks made on the home pages generated through an entry of “blackberry” in the “Search the Web” box on Respondent’s homepage. Respondent has advertised itself as having expertise in many aspects of web management has selected a domain name which will attract the many Internet users familiar with Complainant’s trademark BLACKBERRY into visiting the website associated with the domain name in dispute to obtain pay-per-click income.

Respondent has alleged that Complainant has failed to prove that Respondent has received pay-per-click income from Parked.com. Complainant has established that the domain name in dispute resolves to searchnut.com a pay-per-click website hosted by Parked.com. Respondent has not denied that the domain name in dispute resolves to a pay-per-click website. Having regard to the summary nature of UDRP procedure there is no discovery of documents or oral discovery, Complainant cannot prove matters which are exclusively within Respondent’s power. Respondent carries on business in relation to Web Management Services. One of Respondent’s specialties is to advise clients on parking optimization. The Panel concludes on a balance of probabilities that Respondent parked the domain name in dispute with one or more entities providing parking services and is receiving pay-per-click income from those providing the parking services. Such use does not qualify as fair use of the domain name in dispute without intent for commercial gain under paragraph 4(c)(iii) of the Policy.

The Panel finds that Complainant has proven that Respondent does not have any rights or legitimate interests in the domain name in dispute.

D. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the domain name in dispute has been registered and used in bad faith.

D.1 Domain Name Registered in Bad Faith

By reason of Complainant’s trademark registrations and substantial use of its trade mark BLACKBERRY in relation to smart phones and services for smart phones for many years in Canada and abroad Complainant’s trademark was one of the most prominent brand names in Canada and the United States of America prior to registration of the domain name in dispute by Respondent on August 14, 2006.

Complainant is the owner of registered trademarks for or including BLACKBERRY in Canada including TMA554207 for the trademark BLACKBERRY, registered November 21, 2001; TMA554206 for the trademark BLACKBERRY and colour design, registered on November 21, 2001; TMA555231 for the trademark BLACKBERRY and design, registered December 11, 2001; TMA 624894 for the trademark BLACKBERRY CONNECTION registered on November 8, 2004; TMA659946 for the trademark BLACKBERRY and BBBB design registered March 1, 2006; TMA659954 for the trademark BLACKBERRY and BBBB design registered March 1, 2006 and TMA638068 for the trademark BLACKBERRY registered on April 21, 2005. Complainant is the owner of a greater number of registered trademarks for or including BLACKBERRY registered in the United States of America between the years 2000 and 2006. Complainant is the owner of over 1,500 trademark registrations and applications worldwide for trademarks for or including BLACKBERRY.

Complainant has established an Internet presence. It has registered and uses <blackberry.com>, <discoverblackberry.com>, <blackberrypearl.com> and <blackberrycurve.com>. These sites offer, in part, information and support services for the Blackberry products. As well, the Complainant operates a website at “www.shopblackberry.com”, where it sells Blackberry products and related accessories.

Founded in 1984, Complainant is a 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’s shares are among the widely followed and traded shares on the Toronto Stock Exchange, Canada’s leading stock exchange. 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 well known Blackberry smartphone. The Blackberry smartphone is available on over 300 networks in over 100 countries worldwide.

As reported in Complainant’s latest Annual Report, Complainant generated revenues in excess of US $6 billion dollars for the fiscal year ending March 2008 with a subscriber account base of over 14 million. These revenues were generated in association with Complainant’s goods and services sold and advertised in association with its trademarks for or including BLACKBERRY.

The Brand Finance of Canada’s Most Valuable Brands 2007 report ranks the BLACKBERRY brand as the eighteenth most valuable brand in Canada, ahead of such well known Canadian brands as Petro-Canada, Molson and Tim Hortons.

In 2008, the BrandZ ranking of leading brands prepared by a leading global research and marketing firm rated the BLACKBERRY brand at number 51 in the Top 100 Global Brands ranking, with a brand value of USD13,734 million. The BrandZ report showed the BLACKBERRY brand having a brand value change of 390% over the previous year, the most substantial improvement among the worlds leading brands.

Having regard to the extent of promotion, newspaper reports, business commentary and use of Complainant’s Blackberry smart phones throughout Canada prior to registration of the domain name in dispute on August 14, 2006 it is not possible to conceive that Respondent who is in the Internet management business in Canada was not aware of Complainant’s goods and services advertised, offered for sale, sold and serviced in association with the trademark BLACKBERRY at the time of registration of the domain name in dispute. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Respondent maintains that it had a legitimate right to use the domain name in dispute as it used the domain name in dispute generically to refer to a website relating to blackberry fruit. The evidence does not demonstrate use of the domain name in dispute in a descriptive or generic manner. Neither Respondent’s entry for the <blackberryguru.com> generated in response to a Google search for <blackberryguru.com> nor the content of the website associated with <blackberryguru.com> show descriptive or generic use of the word blackberry referring to a type of berry.

The Google search for <blackberryguru.com> also generated a link to DomainTools Whois Record for <blackberryguru.com>. The home page associated with the link to DomainTools Whois Record for <blackberryguru.com> shows advertisements appearing on the homepage which relate to the goods and services of Complainant’s and its competitors as well as to real estate in Respondent’s home city of Richmond, BC. Respondent has failed to support its alleged descriptive or generic use of the word “blackberry”.

These findings lead the Panel to infer that Respondent registered the domain name in dispute in bad faith.

D.2. Domain Name Used in Bad Faith

Paragraph 4(b) of the Policy sets forth four subparagraphs of circumstances which if proved by Complainant shall be evidence of the registration and use of the domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy. The circumstances referred to in the four subparagraphs are without limitation, other circumstances may if proved by a complainant constitute evidence of use of the domain name by a respondent in bad faith.

Paragraph 4(b)(iv) of the Policy sets forth one of the circumstances which if proved by Complainant shall be evidence of use by a respondent in bad faith: “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship’ affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

A Google search for <blackberryguru.com> shows an entry for and a link to the website associated with the domain name in dispute. Neither the Google entry for the website associated with the domain name in dispute or the home page associated with the website make reference to blackberries, blackberry jam, blackberry plants, or any such generic use of the word blackberry. The webpage associated with the domain name in dispute does not include the word blackberry, the distinctive portion of the domain name in dispute. The home page associated with <blackberryguru.com> includes a Search the Web box for use by Internet visitors to the website. When the word “blackberry” is entered in the Search the Web box on the home page associated with the domain name in dispute and clicked on it resolves to a page including advertisements of the goods or services of Complainant and its competitors

The <blackberryguru.com> domain name resolves to a pay-per-click advertising page. The print out of the home page associated with the<blackberryguru.com> domain name disclosed the domain name at the bottom of the page. (http://www.searchnut.com/?domain=blackberryguru.com). The domain name <searchnut.com> is owned and hosted by Parked.com. Parked.com operates a revenue program whereby domain name holders that park their domain names at its sites become eligible for a referral fee. As Parked.com describes its domain monetization services at its web site: “Just owning a domain name can earn you money with Parked.com. All you have to do is send us your visitors. We’ll pay you industry-leading commissions”.

Based on the summary of the facts in the two proceeding paragraphs, which facts are described in greater detail in Section 6 C above, the Panel finds that Complainant has established that Respondent has intentionally used the domain name in dispute to attract Internet users to the website associated with the domain name in dispute for the purpose of commercial profit by creating a likelihood of confusion with Complainant’s trademark BLACKBERRY as to the source, sponsorship, affiliation, or endorsement of the web site associated with the domain name in dispute.

The Panel further finds on a balance of probabilities that Respondent is obtaining pay-per-click income from the advertisements relating to the goods and services of Complainant and its competitors appearing on the Domain Tools WhoIs Record for <blackberryguru.com>. The web pages associated with DomainTools WhoIs Record for <blackberryguru.com> include a series of advertisements and links to Complainant’s products and services as well as links to products of Complainant’s competitors such as Palm PDA, Sony PDA, Motorola PDA, PDA Software, and GPS Handheld PDA. One of the advertisements is entitled “Richmond BC Real Estate”. Richmond BC is the city in which Respondent is located.

Complainant has also alleged that Respondent has registered the domain name in dispute in bad faith for the purposes set forth in paragraph 4(b)(i),(ii) and (iii) of the Policy. As noted above the 4 subparagraphs of paragraph 4(b) of the Policy are without limitation.

The DomainTools WhoIs Record for <blackberryguru.com> dated September 9, 2008 includes an entry stating that “Zag Media Corp, owns about 25,646 other domains”. Many UDRP decisions have addressed the responsibilities of professional domainers who register domain names for the purpose of sale or pay-per-click advertising income. See, Mobile Communication Services Inc. v. WebReg, RN, WIPO Case No. D2005-1304; Media General Communications Inc v. RareNames WebReg, WIPO Case No. D2006-0964; Gigglesworld Corporation v. Mrs. Jello, WIPO Case No. D2007-1189; Shangri-la International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Starwood Hotels and Resorts Worldwide, Inc., Sheraton, LLC, and Sheraton International Inc. v. Jake Porter, WIPO Case No. D2007-1254; and Grundfos A/s v. Texas International Property Associates, WIPO Case No. D2007-1448.

Registrants of domain names have a responsibility to determine if the domain name they are registering infringes or violates someone else’s rights. Paragraph 2 of the Policy states: “It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.” As the panel stated in Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448:

“A number of Panel decisions have now addressed the application of Paragraph 2 in the context of professional domainers registering large numbers of domain names for the purpose of sale or pay-per-click advertising. It seems to the Panel that the developing consensus is that the domainer must make reasonable good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others. In Mobile Communications Services Inc v. WebReg, RN, WIPO Case No. D2005-1304, the Panel was dealing with a case where the Respondent registered large numbers of domain names for resale, using automated programs which snapped up domain names as they became available. The Panel found that the Respondent was not able to shield its conduct by “closing its eyes” to whether the domain names it was registering were identical or confusingly similar to a third party’s trade marks. If such a domainer paid no attention whatsoever to whether its registrations might be identical to third party trade marks, the domainer’s practice might well support a finding that it has not engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.”

The evidence submitted in this case indicates that Respondent is registered as the owner of numerous domain names previously registered in the name of Leading Edge Online which contain as a distinctive element registered trademarks of third parties. Following are examples of such domain names, followed by the trademark registration number and the name of the third party registrant of the registered trademark selected from a more extensive list of domain names and third party registrations submitted by Complainant: <appleradio.com>, Canadian trademark registration No.TMA263265 for the trademark APPLE registered in the name of Apple Inc.; <ipod-video.com>, Canadian trademark registration No TMA600721 for the trademark IPOD registered in the name of Apple Inc.; <disney-villa.com>, Canadian trademark registration No. TMA699068 for the trademark DISNEY registered in the name of Disney Enterprises, Inc.; <ford-fiesta.com>, Canadian trademark registration No. TMA482232 for the trademark FORD and Canadian trademark registration No TMA213680 for the trademark FIESTA both registered in the name of Ford Motor Company of Canada, Limited; and <yamahasales.com>; Canadian trademark registration No.TMA273373 for the trademark YAMAHA registered in the name of Yamaha Corporation. The domain names as well as the domain name in dispute are listed for sale for $500.00 at Sedo and Afternic. The sale price of $500.00 is well in excess of the eNom price list of registration of a �dot.com’ which is approximately $10 for one year. Respondent’s position is that Complainant has not provided any proof that Respondent has registered any domain names in bad faith. Previous panels have held that a pattern of registering domain names corresponding to the trademarks of other third parties with the apparent reason of selling them for a price in excess of registration costs results in a presumption of registration and use in bad faith. Reasearch in Motion Limited v. Pacific Rim System, WIPO Case No. D2001-0408; Valeant Pharmaceuticals International and Valeant Canada Limited v. Johnny Carpela, WIPO Case No. D2005-0786.

Respondent submits that it is using the domain name in dispute in a descriptive or generic manner which could not infringe or violate any one’s rights. However for the reasons expressed in Section 6 C above the Panel found that Respondent was not using the domain name in dispute to describe a website relating to “blackberries”. Respondent also submitted that Complainant was not the owner of a trademark registration for the trademark “blackberryguru” based on results of a search of trademark registrations maintained in the USPTO conducted by Respondent. Complainant has not alleged that it owns any registrations for “blackberryguru”. Complainant has established that it is the owner of numerous trademark registrations for or including BLACKBERRY in Canada, the United States of America and many other countries throughout the world. (See, Section 4 above). For the reasons expressed in Section 6 B above the Panel decided that the domain name in dispute is confusing similar to Complainant’s registered trademarks for or including BLACKBERRY.

The DomainTools Whois Record for <blackberryguru.com> referred to above which appears as the first or second item in a Google search also includes under the headings Thumbnail and Historical Thumbnails copies of the homepages associated with the domain name <blackberryguru.com> as of December 8, 2004; June 24, 2006 and January 29, 2008. A copy of the home page associated with the domain name <blackberryguru.com> on November 2, 2004 is also available on The Internet Archive Wayback Machine. This webpage is headed “BlackBerryGuru, BlackBerry system design, implementation and enhanced services”. The home page featured a long list of professional services available for Blackberry system owners. The Internet Archive Wayback Machine also reproduced a home page associated with the domain name <blackberryguru.com>on December 16, 2004. This home page contained the following announcement: “Black BerryGuru regrets that this site is no longer available due to questions from Research in Motion over trademarks and rights to use the term Blackberry in the name of the business. The company is still very much active and trading, though not as Blackberry Guru. Please call us if you have any queries while we sort out our name and our website Thanks. The company formally known as Blackberry Guru”. The Panel infers from the evidence above that the domain name in <blackberryguru.com> was first coined and registered by an entity named BlackBerry Guru which advertised expert professional services for Complainant’s BLACKBERRY goods and services. The trademark BLACKBERRY was chosen by the former BlackBerryGuru entity because it was Complainant’s trademark for its goods and services and “guru’ was chosen to promote BlackBerry Guru’s expertise with Complainant’s goods and services.

Respondent is an entity which carries on business in web management services including domain management, WhoIs privacy, and parking optimization and owns over 25,000 domain names. Respondent is a sophisticated party in the pay-per-click landing page business. Having regard to the fact that Complainant’s trademark is and was at all material times well-known in Canada and the fact that the domain name in dispute was first created and used to refer to Complainant’s goods and services the Panel infers from the evidence that Respondent knowingly or with willful blindness registered and used the domain name in dispute in bad faith to benefit from the goodwill associated with Complainant’s registered trademark BLACKBERRY.

Reverse Domain Name Hijacking

Respondent submits in its Response and Supplemental Response that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking. Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as: “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”

Respondent bases its claim of Reverse Domain Name Hijacking on several grounds. Respondent submits that Complainant knew that Respondent’s use of <blackberryguru.com> does not conflict with Complainant’s rights to their trademarks. Respondent also claims that Complainant knew or should have known that “blackberry” is a common generic English dictionary word, and Respondent’s use of <blackberryguru.com> as a website for information regarding blackberries, fruits, and related topics is legitimate and a bona fide offering of goods or services directly related to the domain name, and Respondent has legitimate interests in the domain name in dispute. Respondent further claimed that Complainant acknowledged that Respondent is using the domain name in dispute to resolve to content regarding fruit and related subject, which do not conflict with Complainant’s trademark. In Complainant’s Supplemental Submission Complainant states that the web page associated with the domain name in dispute does not contain any information or links to “blackerries’. Complainant further denies that the web page associated with the domain name in dispute contains any “information” whatsoever, it is simply a pay-per-click website comprised exclusively of sponsored link advertisements with no original content.

The grounds on which Respondent bases its claim for Reverse Domain Name Hijacking have all been considered above and decided in favor of Complainant. The Panel finds that the Complaint is justified and Complainant is not using the Policy in a bad faith attempt to deprive Respondent of the domain name in dispute.

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 <blackberryguru.com> be transferred to Complainant.

---

Ross Carson
Sole Panelist

Dated: October 22, 2008