Complainant is Research In Motion Limited of Waterloo, Ontario, Canada represented by Gowling Lafleur Henderson, LLP, Canada.
Respondent is MumbaiDomains of Mumbai, Maharashtra, India.
The disputed domain names <blackbberry.com>, <blckberry.com>, and <bllackberry.com> are registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2009. On March 11, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On March 11, 2009, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2009. The Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 9, 2009.
The Center appointed Eduardo Machado as the sole panelist in this matter on April 21, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant is one of the leaders in the field of mobile communications, and the owner of the BLACKBERRY trademark.
Founded in 1984, the Complainant is one of the leading designers and manufacturers of innovative wireless solutions for the worldwide mobile communications market. Listed on the Toronto Stock Exchange since 1997 and the NASDAQ Index since 1999, Complainant is a global company with offices in North America, Europe and in the Asia Pacific region.
Complainant has developed and marketed a highly successful line of products, accessories and services in connection with the BLACKBERRY trademark, including the famous Blackberry smartphone. The Blackberry smartphone is available on over 300 networks in over 100 countries worldwide.
For the fiscal year ending March 2008, the Complainant generated revenues in excess of USD 6 billion with a subscriber account base of over 21 million in 2009.
Complainant has expended significant resources in the promotion and advertisement of the BLACKBERRY trademarks. Since 2001, Complainant has incurred hundreds of millions of USD dollars in promotional expenses.
Complainant has established a significant Internet presence. It has registered and uses <blackberry.com>. This site offers, in part, information and support services for the BLACKBERRY products. As well, the Complainant operates a website at “www.shopblackberry.com”, where it sells Blackberry products and related accessories.
The BLACKBERRY trademark is one of the Complainant's most valuable assets. In 2008, the BrandZ study rated the BLACKBERRY brand at number 51 in the Top 100 Global Brands ranking.
Interbrand's Best Global Brands 2008, ranked the BLACKBERRY brand as the 73rd most valuable brand in the world.
As per Interbrand's report Best Canadian Brands 2008, the BLACKBERRY brand was ranked as number 1 in Canada.
According to Brand Finance Canada's report, The Brand Finance of Canada's Most Valuable Brands 2007, the BLACKBERRY brand was ranked as the eighteenth most valuable brand in Canada, and is ahead of such well known brands as Petro-Canada, Molson and Tim Hortons.
Landor's 2007 report entitled “Using brands to drive business results: The third annual Breakaway Brands valuation study”, ranked the BLACKBERRY brand as third on its list of Top Ten Breakaway Brands for 2007. The BLACKBERRY brand was ahead of brands such as MICROSOFT, COSTCO, GE and SAMSUNG. The report refers to the “brand's rapid rise to ubiquity”, and adds as follows:
Today, virtually the world over, it is becoming increasingly difficult among the business community to imagine life “BB” (Before BlackBerry).
The Complainant is ranked second in the Barron's 500 report, which ranks the 500 largest publicly traded companies in the United States and Canada. The report noted that the BLACKBERRY device has “become the standard in handheld devices, delivering e-mail, Internet connectivity, music and video”.
The Complainant's BLACKBERRY devices have received significant recognition and have been the recipient of numerous awards. Exhibit 10 of the Complaint contains a sample list of these awards.
Complainant is the owner of over 1,500 trademark registrations and applications worldwide containing, or comprised of, the word “blackberry”.
Complainant asserts that the disputed domain names <blackbberry.com>, <blckberry.com>, and <bllackberry.com> were registered, respectively, on May 6, 2004, August 28, 2004 and August 28, 2004, without the permission of Complainant.
Complainant asserts that the disputed domain names were made to resolve to a pay-per-click website displaying sponsored links to competitors of Complainant, including Motorola, Nokia, Samsung and LG, as well as links to sites selling the goods of these same competitors. The website also provided a means by which end users could search for links to competitor sites of Complainant.
Complainant informs that, as it was extremely concerned over the misleading registration and use of the disputed domain names, the Complainant issued a cease and desist letter to Respondent, dated October 8, 2008, requiring the transfer of the disputed domain names, but that Respondent did not provide a reply.
Complainant alleges that it is a well-established principle that typosquatting constitutes prima facie evidence of confusion (DaimlerChrysler Corporation and DaimlerChrysler Services North America LLC v. Peter Carrington and Party Night Inc., WIPO Case No. D2002-0756; Citigroup, Inc v. Party Night Inc. and Peter Carrington, WIPO Case No. D2003-0480; ESPN, Inc. v. XC2, WIPO Case No. D2005-0444; Dow Jones & Company, Inc. and Dow Jones, L.P. v. Powerclick, Inc., WIPO Case No. D2000-1259).
Complainant asserts that it is a well-established principle that the addition of a generic top level domain, such as “.com”, and the elimination of spaces, are without legal significance in determining the issue of similarity (Research In Motion Limited v. International Domain Names Inc./Moniker Privacy Services, WIPO Case No. D2008-0780).
Complainant alleges that the disputed domain names constitute an intentional misspelling of the famous BLACKBERRY trademark as Respondent has added the extra letter “b” in <blackbberry.com>, has deleted the letter “a” in <blckberry.com> and added the extra letter “l” in <bllackberry.com>.
Complainant asserts that Respondent's typosquatting constitutes prima facie evidence of confusion and is direct evidence of an intent on the part of Respondent to deceive the public.
Complainant further contends that save for the addition/deletion of a single letter, the disputed domain names are visually and phonetically identical to the famous BLACKBERRY trademark, which also supports a finding of confusion.
Complainant asserts that it is a well-established principle that an unauthorized party cannot claim a legitimate interest in a domain name that contains, or is confusing with, a complainant's mark, as the activities of such a party cannot be said to constitute a bona fide offering of goods or services (Research In Motion Limited v. Blackberry World, supra; Dr. Ing. h.c. F. Porsche AG v. ANC Online Avrasya Bilisim Tekn San ve Dis Tic A S, WIPO Case No. D2006-0912).
Complainant further contends that use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services, and to conclude otherwise would mean that a respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the Policy (Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809; Pfizer Inc. v. Enamecorp.com, WIPO Case No. D2001-0791).
Complainant also claims that it is well settled that diverting Internet traffic, by way of typosquatting, to a website offering sponsored links to competitors of a complainant is prima facie evidence of no rights (ESPN, Inc. v. XC2, supra; MouseSavers, Inc. v. Tsung d/b/a www.wwwmousessavers.com, WIPO Case No. D2004-1034; Marriott International, Inc. v. Seocho, FA149187).
Also, Complainant states that it is a well-established principle that directing a domain name that is confusing with a third party trademark to a pay-per-click site does not constitute bona fide use of the domain name by a respondent (Research In Motion Limited v. International Domain Names Inc./Moniker Privacy Services, supra; B and J García, S.L., Arnedo, Spain v. Gorila, WIPO Case No. D2004-1071; Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430).
Complainant asserts that there is no evidence to suggest Respondent has ever used, or demonstrated preparations to use, the disputed domain names, or a name corresponding to same, in connection with a bona fide offering of goods or services, and that there has never been any relationship between Complainant and Respondent. Further, Complainant informs that Respondent is not licensed, or otherwise authorized, be it directly or indirectly, to register or use, the BLACKBERRY trademarks in any manner whatsoever, including in, or as part of, a domain name.
Complainant alleges that the disputed domain names are an intentional misspelling of the BLACKBERRY trademark and are being used to divert Internet traffic to pay-per-click websites that display sponsored links to competitors of Complainant and that this use of the disputed domain names puts Respondent in a position to reap a financial benefit. Complainant concludes that this constitutes prima facie evidence of no rights and that, under the circumstances, Respondent cannot claim the benefit of paragraph 4(c)(i).
Complainant contends that there is no evidence to suggest that Respondent has been commonly known by the disputed domain names, or that Respondent is making, or intends to make, a legitimate non-commercial or fair use of the disputed domain names.
Complainant further contends that it is well-settled that the practice of typosquatting is by itself evidence of the bad faith registration (ESPN, Inc. v. XC2, supra; Longs Drug Stores Cal., Inc. v. Shep Dog, WIPO Case No. D2004-1069; Lexar Media, Inc. v. Michael Huang, WIPO Case No. D2004-1039; Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816).
Complainant asserts that the pointing of an intentionally misspelt domain name to a pay-per-click website also supports a finding of bad faith (ESPN, Inc. v. XC2, supra).
In this case, Respondent has engaged in typosquatting, which is prima facie evidence of bad faith. Further supporting a finding of bad faith is the pointing of the disputed domain names to pay-per-click websites. Complainant concludes that Respondent's typosquatting activities therefore support a finding of bad faith.
Complainant asserts that numerous panels have held that directing a domain name that is confusing with a third party trade-mark to a pay-per-click website constitutes bad faith as per paragraph 4(b)(iv) (Research In Motion Limited v. International Domain Names Inc./Moniker Privacy Services, supra; Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, supra; Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584).
A respondent's attempt to derive a financial benefit from typosquatting also constitutes evidence of bad faith (Expedia, Inc. v. Collazo, WIPO Case No. D2003-0716).
Complainant alleges that the disputed domain names are nearly identical to the famous BLACKBERRY trademark.
Complainant concludes that, under the circumstances, the disputed domain names are likely to confuse potential consumers into believing that Respondent is somehow affiliated with, or endorsed by, Complainant.
Complainant contends that the disputed domain names are being used in an attempt to intentionally attract, for commercial gain, Internet users to Respondent's websites by creating a likelihood of confusion with Complainant's mark as to source, sponsorship, affiliation, or endorsement.
Also, Complainant contends that fact that the disputed domain names are an intentional misspelling further supports a finding of bad faith.
Complainant asserts that it is a well-established principle that the pointing of a domain name to a pay-per-click website that displays links to websites of businesses that offer goods and services that compete with, or rival, those good and services offered by a complainant constitutes evidence of bad faith as per paragraph 4(b)(iii). A respondent need not be a direct competitor of a complainant; it is sufficient if it provides a means for Internet users to access links to businesses that compete with, or rival, the complainant (PepsiCo, Inc. v. LaPorte Holdings, Inc. and Pepsiemployment.com a/k/a Henry Chan, WIPO Case No. D2005-0087).
In this case, Complainant asserts that, the pointing of the disputed domain names to pay-per-click websites that display links to competitors of Complainant qualifies the Respondent as a competitor of Complainant. Respondent's websites display sponsored links to businesses that offer goods and services that compete with, or rival, those goods and services offered by Complainant, including Motorola, Nokia, Samsung and LG.
Further, Complainant asserts that the use of the disputed domain names is disruptive to Complainant, as potential consumers are likely to be confused into believing that Respondent's website is somehow affiliated with, or sponsored by, Complainant. As well, the misdirection of potential consumers to Respondent's websites constitutes a disruption to Complainant and its business.
Complainant alleges that the purpose behind the registration of the disputed domain names was to piggyback on the goodwill associated with the BLACKBERRY trademarks by capitalizing on a typographical error, in an attempt to exploit, for commercial gain, Internet traffic properly destined for Complainant. Under the circumstances, it is reasonable to infer that Respondent not only knew this diversion would be disruptive, but also intended it to be so.
Complainant also addresses to the surrounding circumstances, which further support a finding of bad faith (Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Complainant contends that: a respondent's actual or constructive knowledge of a complainant's rights in a domain name at the time of registration has been found to reinforce a finding of bad faith (Document Technologies v. International Electronic Communications, Inc., WIPO Case No. D2000-0270); trademark registration provides constructive knowledge to third parties of a complainant's rights (The Sportsman's Guide, Inc. v. Modern Limited, Cayman Islands, WIPO Case No. D2003-0305).
Complainant asserts that, given the fame of the BLACKBERRY trade-mark, Respondent's websites and the intentional misspelling of the famous BLACKBERRY trademark, 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. Respondent also had constructive knowledge of the BLACKBERRY trademark by virtue of the Indian registrations.
Respondent did not reply to Complainant's contentions.
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith, Policy, paragraph 4(a).
The Panel finds that the disputed domain names are confusingly similar to the BLACKBERRY marks since a misspelling of Complainant's registered marks is reproduced in all of them. The domain name differs from Complainant's registered BLACKBERRY marks only in that it has the extra letter “b” in <blackbberry.com>, lacks the letter “a” in <blckberry.com> and has the extra letter “l” in <bllackberry.com>, which is not enough to characterize them as distinct from Complainant's trademarks.
The Panel finds that adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of Complainant.
The Panel finds that Complainant has established the first element of the Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the domain names.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain names and has not used the domain names, or a name corresponding to them, in connection with a bona fide offering of goods or services. At the time the UDRP complaint was filed the domain names provided links to websites that were in direct competition with Complainant. This is not a bona fide use. TM Acquisition Corp. v. Sign Guards, FA132439 (National Arbitration Forum, December 31, 2002) (finding that the Respondent's use of complainant's marks to divert Internet users to a web site which displayed a series of links, some of which were links to sites of complainant's competitors, was not a bona fide offering of goods or services).
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Morgan Freeman v. Mighty LLC, WIPO Case No. D2005-0263; Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
The Panel finds that Complainant has established the second element of the Policy.
Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to respondent's website or other online location by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation or endorsement of respondent's site or of a product or service offered on respondent's site. Policy paragraph 4(b)(iv).
The Panel finds that Respondent registered the domain names in bad faith.
Complainant's allegations of bad faith are not contested. The trademark registrations of record confirm Complainant's allegations that it had long been using its BLACKBERRY marks when the domain names that are the subject of this Complaint were registered. The Panel finds persuasive Complainant's allegation that Respondent must have been aware of Complainant's rights in the mark and, further, that Respondent knowingly targeted Complainant's trademark when it registered the subject domain names.
Under the Policy, it is evidence of bad faith that, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”, Policy paragraph 4(b)(iv). Respondent used Complainant's known trademark to attract users to Respondents' websites where they are offered links to Complainant's competitors. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondents' website or of a product or service on Respondent's websites.
At the time the Complaint was filed the domain names resolved to pages that offer visitors links to sites of other companies, including Complainant's competitors. Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537 (“the Panel is persuaded that Respondent's registration and use of the disputed domain name for re-directing Internet users, particularly customers and potential customers of Complainants, from Complainants' website to the website of OfficeMax, a company which directly competes with Complainants, constitutes bad faith and use. Prior WIPO UDRP decisions also support this conclusion.”) See also Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319 (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”).
Moreover, the Panel finds that the practice of typosquatting may by itself be evidence of the bad faith registration.
Accordingly the Panel finds that Complainant has made out bad faith registration and use of the domain name by Respondent.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <blackbberry.com>, <blckberry.com>, and <bllackberry.com> be transferred to the Complainant.
Eduardo Machado
Sole Panelist
Dated: May 05, 2009