The Complainant is Research In Motion Limited, of Ontario, Canada, represented by Novak Druce & Quigg LLP, of United States of America.
The Respondent is One Star Global LLC, of Texas, United States of America.
The disputed domain name <blackberrystore.com> (the “Disputed Domain Name”) is registered with Wild West Domains, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2008. On November 13, 2008, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On November 14, 2008, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and also confirming that Wild West Domains, Inc. is the Registrar of the disputed domain name which differed from the Registrar listed in the Complaint. The Center sent an email communication to the Complainant on November 19, 2008 providing the current Registrar name and requesting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 20, 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” 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 November 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2008. The Response was filed with the Center on December 11, 2008.
On December 15, 2008, the Center received a supplemental filing from the Complainant.
On December 18, 2008, the Center notified the Parties extending the decision deadline 11 days to January 12, 2009.
On December 19, 2008, the Center received a supplemental filing from the Respondent.
The Center appointed Alistair Payne as the sole panelist in this matter on December 18, 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.
The Complainant designs, manufactures and markets wireless communication products, including smartphones and accessories which it has supplied under the mark BLACKBERRY since 1999.
The Complainant is the owner of numerous United States of America (“U.S.”) trade mark registrations for or incorporating its BLACKBERRY mark.
The Complainant has further stated in its complaint that it owns more than 1000 pending trademark applications and subsisting registrations in over 120 countries for the BLACKBERRY mark and other trademarks incorporating the BLACKBERRY mark.
The Complainant's BLACKBERRY smartphones are available on over 300 wireless networks in approximately 130 countries. In its latest fiscal year ending March 4, 2008 the Complainant's revenues were in excess of USD 6 billion and the Complainant has over 14 million subscribers to its BLACKBERRY devices.
The Disputed Domain Name was registered by the Respondent on May 6, 2003 and resolves to a website offering for sale BLACKBERRY devices and links to accessories such as covers, holsters, chargers, headsets, cases and other accessories including batteries, desktop stands, handsfree kits, screen protectors and USB cables. This website also offers for sale competitors' products. The Respondent is not affiliated with the Complainant nor is it in any way endorsed by the Complainant as an authorized distributor of BLACKBERRY devices and accessories.
The Complainant sent the Respondent a cease and desist letter on October 8, 2008. The Respondent did not respond to said letter.
The Complainant contends that the Respondent is neither a member of the Complainant's authorized network of distributors nor otherwise affiliated with the Complainant. The Complainant asserts that it has not licensed the Respondent to use the BLACKBERRY mark or to register domain names incorporating the BLACKBERRY mark.
The Complainant contends that the Respondent's registered the Disputed Domain Name without the Complainant's consent and subsequently used the Disputed Domain Name for a site which offers for sale BLACKBERRY devices and links to accessories such as covers, holsters, charges, headsets, cases and other accessories including batteries, desktop stands, handsfree kits, screen protectors and USB cables.
The Complainant contends that the Respondent's website attempts to convey the impression of affiliation with or sponsorship by the Complainant.
The Complainant contends that the Respondent's website offers BLACKBERRY smartphones and accessories which could result in Internet users seeking authentic BLACKBERRY accessories being confused by the overall look and feel of the Respondent's website leading them to believe that the “www.blackberrystore.com” website is affiliated with, sponsored or endorsed by the Complainant. The Complainant contends that the Disputed Domain Name in and of itself conveys this false impression.
The Complainant contends that the Disputed Domain Name is confusingly similar to the Complainant's BLACKBERRY mark within the meaning of 4(a)(i) of the Policy as the Disputed Domain Name incorporates the Complainant's BLACKBERRY mark in its entirety.
The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.
The Complainant contends that the Disputed Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
The Respondent denies the allegations put forward by the Complainant.
The Respondent contends that it has never made any claim or attempt used or to infer that it had any rights other than “fair use” for comparison purposes of the Complainant's mark.
The Respondent contends that it is not a “Cyber-Squatter” and has made no attempt to sell the domain name to the Complainant nor has it ever made any attempt to sell any domain name to any trademark holder.
The Respondent contends the registration of the Disputed Domain Name in 2003 occurred long before the Complainant's marks became famous in relation to the smart-phone market, and the Complainant had less than 5 unique smart phone models for sale available only through wireless carriers.
The Respondent concedes that the BLACKBERRY mark has attained “iconic status”. In this regard the Respondent relies on Kellogg Co. v National Biscuit Co. 305 U.S. 111 (1938) as being the source of the so-called “genericide” doctrine whereby trademarks lose their source-identifying function once people use the term to generically describe the class of product. Once a trademarked term has become generic the Respondent contends that that the trademark-holder may no longer enforce trademark laws against those who use the term in its generic sense.
The Respondent contends that it registered the Disputed Domain Name on its belief and view of the then known common law (good faith and fair use). The Respondent contends that the Disputed Domain Name could be used for product comparison purposes without violating or diluting the Complainant's BLACKBERRY mark.
The Respondent contends that upon registration of the Disputed Domain Name it began doing business as a retail comparison site for the Complainant's line of products with fulfillment through the Respondent's brand and fulfillment partner “www.inphonic.com” and through “www.1800mobiles.com”. The Respondent contends that it used the BLACKBERRY mark to describe goods for retail, comparison and advertising purposes but not as a mark.
The Respondent contends that it was not buying and reselling the Complainant's products rather it was providing a side-by-side comparison of such products with hyperlinks to the Complainant's licensed agents or sub-agents.
In the Respondent's supplemental response the Respondent contends that the Complainant was aware of the Respondent's use of the Disputed Domain Name since 2003 and as such the Complainant has acquiesced its rights by not filing this matter until 2008.
The Respondent seeks a finding by the Panel of reverse domain name hijacking to be made against the Complaint in accordance with paragraph 15(e) of the Rules. The Respondent bases this request on the totality of the Complainant's actions prior to the filing of this case and on the complete facts of the Respondent's response.
If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
Further the Panel will address whether if the Complainant has discharged its burden of proof in relation to issues 4(a)(i)-(iii) of the Policy is the doctrine of laches applicable so as to deny the Complainant relief to which it would otherwise be entitled.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.
The Complainant has provided sufficient evidence of its ownership of both registered rights and unregistered usage rights in the mark BLACKBERRY. The Panel is satisfied that the Disputed Domain Name is confusingly similar to the BLACKBERRY mark. Previous panels have decided that a domain name which wholly incorporates a complainant's registered mark may be sufficient to establish confusing similarity for the purposes of the Policy. See Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888. The addition of the generic term “store” and the top level domain suffix do not dispel confusion. In the Panel's view many Internet users would suppose that the Disputed Domain Name refers to a website of the Complainant. Research in Motion Limited v. WG/Shahbaz Khan, WIPO Case No. D2008-0165.
Therefore the Panel considers that the Disputed Domain Name is identical to the Complainant's mark for the purposes of paragraph 4(a)(i) of the Policy.
The complainant must make out at least a prima facie case that the respondent lacks rights or a legitimate interests. Document Technologies, Inc. v. International Electronic Communications. Inc., WIPO Case No. D2000-0270. Once a prima facie case is shown, the burden of proof then shifts to the respondent who must demonstrate its rights or legitimate interests to the panel.
Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that can be brought forward by the respondent, which if found by the panel to be proved based on its evaluation of all evidence presented, shall be demonstrative of the respondent's legitimate rights or legitimate interests to the disputed domain name for the purposes of paragraph 4(a)(ii):
(i) that before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services;
(ii) that the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark rights or service mark right; or
(iii) that the respondent is making a legitimate non-commercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark or service mark at issue.
The Complainant contends that the Respondent is not authorised to use the Disputed Domain Name and has no other affiliation with it. The Respondent appears to be an un-authorised re-seller of the Complainant's products.
In order for a respondent to show that it used the domain name in connection with a bona fide offering of goods or services prior to the dispute it is helpful to refer to the criteria set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The Oki Data panel observed that the following circumstances must be present in order for an offering of goods or services to be bona fide for purposes of paragraph 4(c)(i):
(i) the respondent must actually be offering the Complainant's goods or services at issue. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306.
(ii) the respondent must use the site to sell only the trademarked goods: otherwise it could be using the trademark to bait other Internet users and then switch them to other goods. Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774. (Use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use);
(iii) The site must accurately disclose the registrant's relationship with the trademark owner. See R.T. Quaife Engineering, Ltd. And Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton, WIPO Case No. D2000-1201 (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official U.S. website for Quaife.)
(iv) the respondent must not be allowed to corner the market in domain names that reflect the trade mark.
In the present case it is evident from reviewing the content of the Respondent's site that the second of the above conditions is not met as the Respondent's site is used to sell competing third-party products as well as those products of the Complainant. The third condition of the above conditions is also not met as the Disputed Domain Name <blackberrystore.com> improperly suggests that the reflected site is an official website by being either authorised to sell or affiliated to Complaint's BLACKBERRY smart phone products.
Turning to consider whether there is an indication that the registrant has been commonly known by the domain name, even if it has acquired no trademark rights, the Respondent contends that it has been commonly known by the Disputed Domain Name since 2003. The Respondent does not however provide supporting evidence to substantiate this contention. Even if it has become so known as a result of its use of the Disputed Domain Name, this does not give rise or legitimate interests where the use has not complied with the conditions stated above. Research in Motion Limited v. WG/Shahbaz Khan, WIPO Case No. D2008-0165. Further although the Respondent has used the Disputed Domain Name since May 6, 2003, it was put on notice of the Complainant's rights by letter in October 2003 and the Respondent was well aware of the Complainant's rights from the date of register of the Disputed Domain Name.
Accordingly the Panel considers that the Respondent does not have any rights or legitimate interests in respect of the Disputed Domain Name and as such the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
In order to demonstrate bad faith, the policy requires a complainant to prove both registration and use in bad faith.
Paragraph 4(b)(iv) of the Policy sets out certain circumstances otherwise known as deeming provisions which, in particular but without limitation, if found to be present, shall be evidence of the registration and use of the domain name in bad faith:
Under paragraph 4b (iv) of the Policy, the following if found to be present, shall be evidence of the registration and use of a domain name in bad faith:
by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other on-line location, by creating a likelihood of confusion with the complainants mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] website or location.
The Complainant contends that the Respondent registered and used the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to the Respondent's site, by creating a likelihood of confusion with the Complainant's BLACKBERRY mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's site. The Respondent contends that the Disputed Domain Name was registered in good faith for comparison purposes and fair use only.
The Panel notes that the Respondent's home page linked to the Disputed Domain Name contains the following text:
Founded in 2003 the BlackBerry Store represents all Major US Wireless carriers though its brand and fulfillment partners you can Compare BlackBerry Phones and buy your BlackBerry and take your current cell phone number with you (local number portability). Order your BlackBerry cell phone from us and save money - BlackBerry prices are typically $100-$250 cheaper than buying a cell phone from a local cellular dealer or mall! We offer BlackBerry phones, BlackBerry PDA's including Verizon BlackBerry, AT&T BlackBerry, T-Mobile BlackBerry, Sprint Blackberry and Nextel Blackberry. Just to round things out, we also offer a full line of cell phones and Widows Mobile Devices here at the BlackBerry Store.com.
Clearly the Respondent has sought to attract Internet users to the site for commercial gain by creating a likelihood of confusion in terms of paragraph 4(b)(iv) and the Panel infers that the Respondent's conduct was intentional.
Additional evidence of bad faith on the part of the Respondent can be evinced from the fact that the Complainant sent the Respondent cease and desist letters on October 15, 2003 and October 8, 2008. From the evidence provided the Panel is satisfied that the Respondents did not reply to these letters nor did they take the requested remedial action to, inter alia; cease all infringing or dilutive use of the BLACKBERRY mark and to cease all use of the Disputed Domain Name.
The inclusion of a disclaimer on the Respondent's site stating that the Disputed Domain Name is not associated with the Complainant in any way and that the use of any trademark term or image on the Respondent's site is used solely in good faith under “fair use provisions” and for comparison purposes as held by the United States Supreme Court in KP Permanent Make-Up, Inc. v. Lasting Impression, Inc., No. 03-409, 2004 U.S. Lexis 8170 (December 8, 2004) does not negate bad faith. A disclaimer, in the absence of other relevant circumstances, does not prevent in any way Internet users being diverted to the Respondent's website by confusion with the Complainant's BLACKBERRY mark. Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698.
The Panel considers that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
The Panel refers to The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616 where the panel noted that the defense of laches was developed by the courts of equity and that “[t]he remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application”. However, for purpose of completeness, the Panel will address the issue in full. Laches is generally established by the fulfillment of two conditions. Firstly there must be unreasonable delay in the commencement of the proceedings and secondly in all circumstances the consequences of delay must render the grant of relief unjust.
As stated in The Hebrew University of Jerusalem, supra, “In respect to the first [condition], the point of time as from when the reasonableness of delay is determined is, prima facie, the time at which the plaintiff came to know of the facts that had given rise to the ground of equitable intervention in question[...] In respect of the second [condition] it is necessary that the Defendant be prejudiced by the delay”.
The Respondent contends in its supplemental submission that the Complainant was aware of the Respondent's use of the Disputed Domain Name since 2003 and as such the Complainant has acquiesced in its rights by not filing this matter until 2008. The Panel cannot accept this assertion as evidence adduced in the Complainant's supplemental submission shows that counsel for the Complainant had sent a cease and desist letter to the Respondent on October 15, 2003 regarding the unauthorized use of the BLACKBERRY mark in connection with the Disputed Domain Name and the site to which it resolved. A further cease and desist letter was sent to the Respondent on October 8, 2008.
The Respondent has not produced evidence of how it has altered its behavior as a result of the alleged delay nor has the Respondent provided evidence of how it suffered or changed its position because of the alleged delay. Therefore the Panel considers that the Respondent has failed to satisfy either limb of the test for laches.
In any case, the Panel considers that the Policy is part of the domain name registration agreement and that generally national law doctrines should not be applied. These proceedings brought by the Complainant are brought pursuant to that agreement. The issue to be determined by the Panel is whether the grounds set out in the Policy for transfer or cancellation of the Disputed Domain Name have been established and the Policy does not include a limitation period. The remedy under the Policy is not an equitable remedy although general principles of fairness should apply. In the Panel's view there is nothing to suggest that the Respondent was prejudiced by any delay on behalf of the Complainant in this case. See also, Tax Analysts v. eCorp WIPO Case No. D2007-0040.
The Complaint having been upheld, the Respondent cannot succeed in its claim of Reverse Domain Name Hijacking.
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 <blackberrystore.com> be transferred to the Complainant.
Alistair Payne
Sole Panelist
Dated: January 12, 2009