The Complainant is BlackBerry Limited of Waterloo, Ontario, Canada, represented by Davis Wright Tremaine LLP, United States of America (“United States”).
The Respondent is Ali Bizhani of Shiraz, Fars, Islamic Republic of Iran.
The disputed domain names <bessecure.com>, <bes247.com>, <blackberryamerican.com>, <blackberrybritish.com>, <blackberrycanada.com>, <blackberrycollection.com>, <blackberryiran.com>, <blackberryiran.net> and <iranblackberry.com> are registered with Realtime Register B.V. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2016. On November 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names, except for <blackberryiran.net>. On November 17, 2016, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2016.
On November 23, 2016, the Complainant requested the addition of the domain name <blackberryiran.net> to the present proceeding.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2016.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on December 20, 2016. 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.
The Panel accepted the addition of the domain name <blackberryiran.net> for reasons outlined below. The Panel directed the Center to request Registrar Lock and obtain confirmation of the registrant details for the disputed domain name <blackberryiran.net>. On December 21, 2016, the Center transmitted by email a request for registrar verification in connection with the disputed domain name <blackberryiran.net>. On December 22, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Consequently, on December 23, 2016 the Respondent was granted until December 30, 2016, to indicate if it wished to take part in the proceeding. Again, the Respondent did not submit any response.
The Complainant, BlackBerry Limited, is a Canadian corporation that designs, manufacturers and markets wireless solutions for the worldwide mobile communications market. The Complainant has submitted evidence that it is the owner of numerous trademark registrations for BLACKBERRY and BES. Examples of such trademark registrations are:
United States trademark BLACKBERRY with registration No. 2,672,464 and registration date January 7, 2003, used in commerce since January 19, 1999.
United States trademark BES with registration No. 4,491,273 and registration date March 4, 2014, used in commerce since September 6, 2013.
The disputed domain name <bes247.com> was registered on February 24, 2016.
The disputed domain names <blackberryamerican.com>, <blackberrybritish.com>, <blackberrycanada.com> and <blackberrycollection.com> were registered on May 4, 2016.
The disputed domain name <bessecure.com> was registered on July 19, 2016.
The disputed domain names <blackberryiran.com> and <iranblackberry.com> were registered on July 29, 2016.
The disputed domain name <blackberryiran.net> was registered on November 20, 2016.
The Complainant is a leading designer, manufacturer and marketer of innovative wireless solutions for the worldwide mobile communications market, best known for its high-quality wireless BLACKBERRY handheld device product line and related software, accessories, and services. The Complainant operates a website featuring information about its goods and activities throughout the world at “www.blackberry.com”.
The Complainant has obtained numerous trademark registrations for BLACKBERRY in the United States and throughout the world. The Complainant also has registrations and/or applications for BLACKBERRY trademarks in these other jurisdictions: Argentina, Australia, Bahrain, Brazil, Canada, Chile, China, Colombia, European Union, Dominican Republic, Ecuador, Egypt, El Salvador, Guatemala, Hong Kong China, India, Indonesia, Israel, Jamaica, Japan, Kenya, Kuwait, Lebanon, Malaysia, Mexico, Morocco, New Zealand, Nigeria, Pakistan, Panama, Paraguay, Peru, Philippines, Qatar, Russian Federation, Saudi Arabia, Singapore, South Africa, Republic of Korea, Switzerland, Taiwan Province of China, Thailand, Turkey, United Arab Emirates, Uruguay, Venezuela and Viet Nam.
For over 16 years the Complainant has continuously and extensively used the BLACKBERRY trademarks in connection with the Complainant’s products. In addition, the Complainant has spent millions of dollars in advertising containing BLACKBERRY trademarks and promoting the Complainant’s products. The Complainant’s marketing efforts, combined with its attention to the quality, design and construction of its products, generate hundreds of millions of dollars in sales each year. By virtue of the Complainant’s long history of use throughout the world and in the United States, as well as the Complainant’s sales and promotional activities, the BLACKBERRY trademarks have generated valuable goodwill.
The Respondent registered the disputed domain names more than 10 years after the registration of one of the BLACKBERRY trademarks in the United States and more than 15 years after the Complainant’s first use of the BLACKBERRY trademarks in commerce.
The disputed domain names simply combine the Complainant’s BLACKBERRY and BES trademarks with other generic, descriptive terms such as “secure,” “collection”, “canada”, and “british” and the generic
Top-level Domains. The disputed domain names are identical or confusingly similar to the Complainant’s registered BLACKBERRY and BES trademarks. The Respondent has no rights or legitimate interests in the disputed domain names.
It is a well-established principle that a domain name that wholly incorporates a trademark, particularly one that is as famous as the BLACKBERRY and BES trademarks, would likely be found to be confusingly similar for the purposes of the Policy. The addition of generic and descriptive terms does not diminish and in fact only strengthens the confusing similarity between the disputed domain names and the trademarks.
The Respondent operates websites connected to a number of the disputed domain names, which offer the Complainant’s products and appear to be created by the Complainant itself. The active websites are designed to appear to be the official websites belonging to or authorized by the Complainant. The BLACKBERRY trademarks appear throughout the active websites, clearly in an attempt to mislead viewers as to the source of the websites. In fact, one of the Respondent’s active websites provides confidential information of a device not yet launched by the Complainant as well as the specifications of the device.
The Complainant’s trademark registrations are prima facie evidence of the validity of the BLACKBERRY trademarks, which creates a rebuttable presumption that the Complainant’s trademarks are inherently distinctive. Because the Complainant has made a prima facie showing of its rights in the trademarks, the Respondent must come forward with evidence demonstrating that it has rights in the disputed domain names. Registration of a domain name incorporating another’s famous mark does not confer any rights or legitimate interests in the domain name, but rather constitutes bad faith under paragraph 4(b) of the Policy. Where, as here, the Complainant’s trademarks and name are so well-known and so widely recognized, there can be no legitimate use by the Respondent.
The Complainant’s BLACKBERRY trademark has been the subject of a significant number of prior proceedings under the Policy, in which other panels have found that the Complainant’s trademark is distinctive, famous and indeed at the stronger end of the spectrum.
The Respondent had knowledge of the Complainant’s trademarks when the Respondent registered the disputed domain names. The Respondent’s registration and use of the disputed domain names is nothing but a misappropriation of the Complainant’s trademarks. The collateral use of the trademark in connection with the resale of the Complainant’s products on the Respondent’s website does not confer any proprietary rights in the Complainant’s trademark on the Respondent.
The fact that the Respondent’s websites display the Complainant’s trademarks in a commercial manner suggests, contrary to fact, that the Respondent is an authorized reseller of the Complainants products. In addition, the Respondent’s failure to disclose its lack of authorization by the Complainant leads to the conclusion that the Respondent is seeking to create an impression of association with the Complainant, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
There exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use disputed domain names that incorporate the Complainant’s trademarks. The Respondent is not commonly known by the disputed domain names and is not making a legitimate noncommercial or fair use of Complainant’s trademarks. Accordingly, the Respondent lacks any rights or legitimate interests in the disputed domain names.
The Respondent registered and is using the disputed domain names in bad faith. The registration of a domain name obviously connected with well-known trademarks by someone without any connection to these trademarks suggests opportunistic bad faith. Furthermore, the Respondent’s use of the trademarks in the disputed domain names and the Respondent’s use of the trademarks throughout the Respondent’s active websites to sell the Complainant’s products show that the Respondent is using the disputed domain names in bad faith.
The unauthorized use of the Complainant’s trademarks on the websites and the disputed domain names will undoubtedly create a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites and products.
The Respondent’s unauthorized use of the disputed domain names in connection with the inactive websites evidences its bad faith registration and use of the disputed domain names because in violation to Policy, paragraph 4(b)(ii), the Respondent has engaged in a pattern of registering the disputed domain names to prevent the Complainant from reflecting the BLACKBERRY and BES trademarks in corresponding domain names.
The Respondent is using the active websites intentionally to attract, for commercial gain, Internet users to his websites or other online locations, by creating a likelihood of confusion with the complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of a website or location or of a product or service on a web site or location in violation of Policy, paragraph 4(b)(iv). As even more evidence of bad faith, the Respondent has inappropriately disseminated confidential information regarding a device not yet launched by the Complainant.
Based on all of the above, it is evident that the Complainant has met the requirements of the Policy by demonstrating not only its own legitimate interest in its trademarks, as evidenced by its use of those trademarks, but also that the Respondent registered and has used the disputed domain names in bad faith, and that Respondent’s interest is to unlawfully profit from the use of the Complainant’s trademarks and prevent the Complainant from registering the domain names.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
The consensus view discussed at paragraph 4.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that provided a Complainant has relevant trademark rights and all relevant domain names are registered by the same domain name holder, additional domain names may in certain circumstances be added to a complaint after filing but prior to formal commencement of UDRP proceeding. However, if the request if received after the commencement of the proceeding, it would be at the Panel’s discretion, typically allowing a proper response opportunity in relation to the added domain name where the Complainant’s request was granted. Considering that the disputed domain names are registered to the same holder, and given that the disputed domain name <blackberryiran.net> was registered after the filing of the Complaint, the Panel grants the Complainant’s request and allows the domain name <blackberryiran.net> to be added to the present proceeding. As indicated above, the Respondent was granted additional time to indicate whether it wished to partake in the proceeding, but failed to reply.
The Complainant is, according to the submitted evidence, the owner of the registered trademarks BLACKBERRY and BES.
The disputed domain names <blackberryamerican.com>, <blackberrybritish.com>, <blackberrycanada.com>, <blackberrycollection.com>, <blackberryiran.com>, <iranblackberry.com> and <blackberryiran.net> incorporate the Complainant’s trademark BLACKBERRY in its entirety with the addition of various geographic, generic and descriptive terms such as “collection”, “american”, “british”, “canada” and “iran”. The disputed domain names <bessecure.com> and <bes247.com> incorporate the Complainant’s trademark BES in its entirety with the addition of the generic and descriptive terms “secure” and “247”. The mere addition of the geographic, generic and descriptive terms to the BLACKBERRY or BES trademarks do not eliminate the confusing similarity between the Complainant’s trademarks and the disputed domain names. It is likely that Internet users would perceive the combination of the Complainant’s trademarks and “collection”, “american”, “british”, “canada”, “iran”, “secure” and “247” in the disputed domain names as referring to the Complainant or to a product by the Complainant. The mere addition of these terms to the trademarks does little, if anything, to eliminate the confusing similarity between the Complainant’s trademarks and the disputed domain names.
Having the above in mind, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain names. The Respondent may establish a right or legitimate interest in the disputed domain names by demonstrating any of the following non-exhaustive circumstances listed in paragraph 4(c) of the Policy:
(a) that it has made preparations to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services prior to any notice of the dispute; or
(b) that it is commonly known by the disputed domain names, even if it has not acquired any trademark rights; or
(c) that it is making a legitimate, noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Complainant’s trademark registrations for BLACKBERRY and BES predate the Respondent’s registration of the disputed domain names. The Complainant has not licensed or otherwise consented to the Respondent’s use of the trademarks BLACKBERRY or BES in connection with the disputed domain names that are confusingly similar to the Complainant’s trademarks.
From the evidence in the case, it is clear <blackberryiran.com> and <iranblackberry.com> resolve to commercial websites that contain direct references to the Complainant’s trademarks and products. The evidence indicates that the Respondent is using a number of the disputed domain names to offer goods for sale that are identical to those offered by the Complainant. Paragraph 2.3 of the WIPO Overview 2.0 describes the consensus view as to the requirements which would provide a respondent with a right or legitimate interest for purposes of the Policy. Among these is the requirement that the websites accurately and prominently disclose the registrant’s relationship with the trademark owner. From the record, this requirement has not been met by the Respondent. In addition, the Complainant has argued that the Respondent is using the disputed domain names to make available confidential information regarding a product not yet launched by the Complainant.
There is no evidence in the case indicating that the Respondent is making a legitimate, noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark. Although given the opportunity, the Respondent has not submitted any evidence in this case to demonstrate that the Respondent is the owner of any trademark rights similar to the disputed domain names or that the Respondent is or has been commonly known by the disputed domain names.
Given the above, the Respondent has failed to invoke any circumstances which could demonstrate, for example pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain names. There is no evidence in the case file that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the disputed domain names were registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain names; or
(ii) circumstances indicating that the disputed domain names were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided there is a pattern of such conduct; or
(iii) circumstances indicating that the disputed domain names were registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the disputed domain names have intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.
The Complainant has submitted evidence indicating that the Respondent is offering products for sale via the Respondent’s website, to which a number of the disputed domain names resolve. The evidence also indicates that the Respondent is reproducing the Complainant’s trademarks on the Respondent’s website without permission. By using the disputed domain names in combination with the Complainant’s trademarks, there is a risk of confusion as Internet users may be confused or misled into believing that the disputed domain names and websites belong to or are in some way associated with the Complainant. The evidence indicates that the Respondent sought to take advantage of the goodwill associated with the Complainant’s trademarks.
Considering that the Respondent is reproducing the Complainant’s trademarks without permission and that the disputed domain names <blackberryiran.com> and <iranblackberry.com> are used for the same type of products for which the trademarks are registered, the Panel finds that the Respondent must have had knowledge of the Complainant’s trademarks when registering the disputed domain names. Thus, the evidence in the case before the Panel indicates that the Respondent has engaged in a pattern of registering domain names in order to prevent the Complainant from reflecting its trademarks in corresponding domain names.
Furthermore, the evidence in the case indicates that the disputed domain names have intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the websites or of a product or service on the website.
To the extent to which the remaining disputed domain names are not being actively used, the Panel finds that, under the circumstances, they are used in bad faith for purposes of the Policy in accordance with the consensus view at paragraph 3.2 of the WIPO Overview 2.0.
There is no evidence in the case file that refutes the Complainant’s submissions.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain names have been registered and used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <bessecure.com>, <bes247.com>, <blackberryamerican.com>, <blackberrybritish.com>, <blackberrycanada.com>, <blackberrycollection.com>, <blackberryiran.com>, <iranblackberry.com> and <blackberryiran.net> be transferred to the Complainant.
Johan Sjöbeck
Sole Panelist
Date: January 12, 2017