WIPO Domain Name Decision: D2008-1065

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Research in Motion Limited v. Thomas J Buck/CSMJBS Entrprises - Private Registration

Case No. D2008-1065

1. The Parties

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

The Respondent is Thomas J Buck /CSMJBS Enterprises - Private Registration, Anchorage, Alaska, United States of America.

2. The Domain Name and Registrar

The disputed domain name <blackberryporn.net> is registered with The Name IT Corporation DBA Name Services.net.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2008 by e-mail and on July 18, 2008 in hardcopy. On July 14, 2008, the Center transmitted by e-mail a request to The Name IT Corporation DBA Name Services.net for registrar verification in connection with the domain name at issue. On the same date The Name IT Corporation DBA Name Services.net. transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.

The Center sent an e-mail communication to the Complainant on July 28, 2008 providing the registrant and contact information disclosed by the registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 28, 2008 by e-mail and on July 30, 2008 in hardcopy. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 4, 2008. On various dates, during the course of this proceeding, the Respondent indicated its willingness to transfer the domain name to the Complainant. However, on August 5, 2008 the Complainant informed the Center that it did “not wish to suspend the proceedings and wished to continue with the UDRP proceedings”.

In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent of its default on August 25, 2008.

The Center appointed the undersigned as the sole panelist in this matter on September 1, 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.

4. Factual Background

The Complainant is Research in Motion Limited, a designer and manufacturer of wireless solutions for the mobile communications market. The Complainant was founded in 1984 and is listed on the Toronto Stock Exchange since 1997 and the NASDAQ Index since 1999. The Complainant has offices in North America, Europe and the Asia Pacific region.

The Complainant is the owner of – amongst others – the following trademark registrations (hereafter, collectively referred to as the “trademarks”):

- BLACKBERRY (word and device), registered with the United States Patent and Trademark Office on November 7, 2000, under registration number 2402763.

- BLACKBERRY, registered with the United States Patent and Trademark Office on January 7, 2003, under registration number 2672464.

- BLACKBERRY (word and device) registered with the United States Patent and Trademark Office on January 7, 2003, under registration number 2672472.

- BLACKBERRY (word and device), registered with the United States Patent and Trademark Office on January 21, 2003, under registration number 2678454.

- BLACKBERRY, registered with the United States Patent and Trademark Office on March 25, 2003, under registration number 2700671.

- BLACKBERRY (word and device), registered with the United States Patent and Trademark Office on March 25, 2003, under registration number 2700678.

- BLACKBERRY (word and device), registered with the United States Patent and Trademark Office on May 25, 2004, under registration number 2844339

- BLACKBERRY, registered with the United States Patent and Trademark Office on May 25, 2004, under registration number 2844340.

- BLACKBERRY ENTERPRISE EDITION, registered with the United States Patent and Trademark Office on May 18, 2004, under registration number 2842571.

- BLACKBERRY CONNECTION, registered with the United States Patent and Trademark Office on May 30, 2006, under registration number 3098588.

- BLACKBERRY (word and device), registered with the United States Patent and Trademark Office on June 13, 2006, under registration number 3102687.

The Respondent registered the disputed domain name on February 10, 2008. The disputed domain name was connected to a website displaying adult content, i.e. pornographic pictures. The website recently became inactive. The Complainant issued a cease and desist letter to the Respondent, dated April 23, 2008, requiring the transfer of the disputed domain name. The cease and desist letter was issued to the administrative contact e-mail address listed in the WhoIs Registrant information for the disputed domain name. The e-mail was returned undeliverable, as the e-mail address was not active.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it is a leading company in the worldwide mobile communications market and, referring to evidence, that it generated revenues of over US$6 billion in the fiscal year ending March 2008. The Complainant states that it has developed a highly successful line of products, accessories and services in connection with the BLACKBERRY trademarks and that it has expended significant resources in the promotion and advertisement of the trademarks.

The Complainant states that it is the owner of over 1500 trademark registrations and applications world-wide containing, or comprised of, the element “Blackberry”. The Complainant asserts that the BLACKBERRY trademarks enjoy widespread recognition and have generated significant goodwill. As a result of the extensive use and publicity, the BLACKBERRY trademarks have become famous, thus the Complainant. The Complainant refers to the following evidence: the BrandZ study 2008; Interbrand’s report Best Canadian Brands 2008; the Brand Finance Canada’s report The Brand Finance of Canada’s Most Valuable Brands 2007; Landor’s 2007 report Using brands to drive business results: The third annual Breakaway Brands valuation study; Barron’s 500 report and a sample list of awards won by BLACKBERRY devices. From the report Best Canadian Brands 2008 it follows that BLACKBERRY ranks as the number 1 brand in Canada.

Identical or confusingly similar

Referring to WIPO case law, the Complainant contends that the incorporation of the entire BLACKBERRY trademark in a domain name leads to confusion and that the addition of the term “porn” does nothing to diminish this confusion. Furthermore it asserts, with reference to WIPO case law, that it is a well-established principle that the addition of a generic top level domain, is without legal significance in determining the issue of similarity.

Rights or Legitimate interests

The Complainant infers from cited WIPO case law that it is a well established principle that the use of a domain name that incorporates a third-party trademark and which links to a pornographic website, does not constitute a bona fide offering of goods and services. Furthermore, it states that there has never been any relationship between the Complainant and the Respondent, and that the Respondent is not licensed, or otherwise authorized to register or use the BLACKBERRY trademarks as part of the domain name. According to the Complainant, there is also no evidence to suggest that the Respondent has been commonly known by the domain name, or that the Respondent is making, or intends to make, a legitimate noncommercial or fair use of the domain name.

Used and registered in bad faith

The Complainant submits that the connection of the disputed domain name to a pornographic website constitutes prima facie evidence of bad faith. It refers to UDRP case law in which the panels held that the connection (or redirection) to a pornographic website of a domain name incorporating a well-known trademark is, by itself, evidence of bad faith. On this basis alone, the Complainant asserts that the domain name was registered and used in bad faith.

In addition to this, the Complainant states that the Respondent registered and has used the domain name to disrupt the Complainant’s business. According to the Complainant, the website is disruptive to the Complainant since it results in potential consumers being confused or misled into believing that the Respondent’s website is somehow affiliated with, or sponsored by, the Complainant. By using the BLACKBERRY trademarks in association with a pornographic website, the valuable goodwill subsisting in the trademarks is harmed, argues the Complainant.

Furthermore, the Complainant contends that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website.

The Complainant also points out certain surrounding circumstances which, according to cited case law, would support a further finding of bad faith. Given the fame of the registered BLACKBERRY trademarks, the Respondent’s incorporation of the entire trademark in the disputed domain name and the offering of adult content that has been tailored for viewing on a Blackberry device, the only plausible conclusion according to the Complainant is that the Respondent had actual knowledge of the BLACKBERRY trademarks at the time of registration.

The second surrounding circumstance the Complainant puts forward is the alleged provision of false contact information by the Respondent. The Complainant refers to Big 5 Corp. v. Peter Carrington and Party Night Inc., WIPO Case No. D2002-0897, in which the panel decided that the Respondent’s provision of false contact information supported a finding of bad faith.

B. Respondent

The Respondent did not substantially reply to the Complainant’s contentions. However, in e-mail correspondence with the Center dated August 4, 2008, the Respondent indicated that it is willing to transfer the disputed domain name to the Complainant.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is the owner of several trademark registrations in the United States of America containing, or comprised of the element “Blackberry”. Since the entire trademark BLACKBERRY is incorporated in the disputed domain name, the domain name is confusingly similar to the trademarks. The addition of the generic phrase “porn” to the trademark BLACKBERRY in the domain name does not change this (see Polaroid Corporation v. Jay Strommen, WIPO Case No. D2005-1005, regarding the domain name <polaroidporn.com>).

B. Rights or Legitimate Interests

The Panel is of the opinion that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorized the Respondent to register or use its trademarks as part of the domain name, nor is there evidence that the Respondent has been commonly known by the domain name. The use of the domain name for a pornographic website cannot be considered to constitute a legitimate noncommercial use of the domain name or a use connected with a bona fide offering of goods or services either.

In addition to this, the Respondent itself indicated during the procedure that it did not have any interest in the disputed domain name. In an e-mail to the Center dated August 4, 2008, the Respondent wrote: “I do not care about this domain name. It can be removed from my ownership or transferred”. This adds to the conclusion of the Panel that the Respondent has no legitimate interest in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant put forward sufficient uncontested arguments, supported by case law, to establish that the Respondent registered and uses the disputed domain name in bad faith. Given the evidence the Complainant provided, the Panel is convinced that the BLACKBERRY trademark is a well-known trademark, which predicates the domain name registration by almost eight years. Therefore, it may be assumed that the Respondent was aware of the trademark when registering the domain name.

Since the disputed domain name incorporates the entire trademark and is connected to a website where pornographic material was offered in such manner that it could be viewed on a Blackberry device, the Panel is satisfied that the disputed domain name was registered and is being used in bad faith (see Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022; Oxygen Media, LLC. v. Primary Source, WIPO Case No. D2000-0362; Ceasars World, Inc. v. Alaiksei Yahorau, WIPO Case No. D2004-0513).

The fact that the website is currently no longer active does nothing to change this (see Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003). Taking into account the strong reputation of the BLACKBERRY trademarks and the combination of the BLACKBERRY trademark with the word “porn” in the domain name, it is impossible to conceive of any good faith use of the domain name.

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 <blackberryporn.net> be transferred to the Complainant.

Wolter Wefers Bettink
Sole Panelist

Dated: September 15, 2008