The Complainant is Research In Motion Limited of Canada, represented by Novak Druce & Quigg LLP, United States of America.
The Respondent is PrivacyProtect.org / berry store, hery santosa of Indonesia.
The disputed domain name <berry-store.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2009. On April 14, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On April 16, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email 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 email communication to the Complainant on April 20, 2009 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 April 24, 2009. The Center verified that the Complaint together with the amended 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 April 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 20, 2009.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on May 26, 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.
The facts about the Complainant are for the most part taken from the Complaint. Research In Motion Limited (RIM) makes and sells sophisticated wireless mobile communications systems with computer facilities, often called smartphones or personal digital assistants (PDA), notably one known as the BlackBerry. The BlackBerry range of products is well-known internationally and the Complainant owns more than 1000 pending trademark applications and subsisting registrations in over 120 countries. Company revenue in the year ending March 2008 was over USD 6.0 billion.
The Complainant holds trademarks in the relevant classes including the following, with or without device or style:
BLACKBERRY, United States Patent and Trademark Office (“USPTO”), Registration No. 3102687, June 13, 2006
BLACKBERRY, USPTO, Registration No. 2844339, May 25, 2004
BLACKBERRY, USPTO, Registration No. 2844340, May 25, 2004
BLACKBERRY, USPTO, Registration No. 2678454, January 21, 2003
BLACKBERRY, USPTO, Registration No. 2762464, January 7, 2003
BLACKBERRY, USPTO, Registration No. 2672472, January 7, 2003
BLACKBERRY ENTERPRISE EDITION, USPTO, Registration No. 2842571, May 18, 2004
BLACKBERRY CONNCTION, USPTO, Registration No. 3098588, May 30, 2006
BLACKBERRY, USPTO, Registration No. 2700671, March 25, 2003
BLACKBERRY, USPTO, Registration No. 2700678, March 25, 2003
BLACKBERRY, USPTO, Registration No. 2402763, November 7, 2000
BERRY, Trade Marks Registry, Hong Kong Special Administrative Region, Registration No. 300808984, February 2, 2007
The Complainant also provided an untranslated document which refers to BERRY, registered in Taiwan, with Registration No. 01288822.
Nothing of substance is known about the Respondent except for the registration information provided. From information submitted in the Complaint, it would appear that the Respondent operates an Internet presence that supplies smartphones and accessories. The disputed domain name appears to have been registered on June 23, 2008 under the contact details first obtained by the Complainant, and as confirmed by the Registrar.
The Complainant's contentions are supported with documentary evidence and include the following.
Evidence of the Complainant's ownership of the trademarks listed in section 4 above is submitted in the form of copies of the registration documents.
The Complainant contends that its trademark is famous internationally. The Complainant was recognized on May 12, 2008 as ranking second in the prestigious Barron's 500, an annual ranking of the 500 largest (by sales) publicly traded companies in the United States of America and Canada. The brand has received high rankings in other reviews.
The Complainant says that it has its own Internet presence, including the websites “www.blackberry.com”, “www.discoverblackberry.com”, “www.blackberrypearl.com”, “www.blackberrycurve.com”, “blackberrystore.com” and “www.shopblackberry.com”, for the sale of its own authentic products, and has an authorized distributor network, of which the Respondent is not a member.
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights. The disputed domain name incorporates the BERRY portion of the Complainant's registered trademark BLACKBERRY. The Complainant has trademarks for the word BERRY alone, which is a nickname for its products, and has advertised its products under the name “Berry”. It is submitted that previous UDRP panels have held that an abbreviation of a registered mark incorporated into a domain name may constitute confusing similarity.
The Complainant says, with citations submitted as being in support, that given the Respondent's use of the disputed domain name for a website that offers goods or services in direct competition with the Complainant, the use of a generic or descriptive term heightens the confusing similarity.
The Complainant further contends that the respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant and is not using it in connection with a bona fide offering of goods or services. Even if the Respondent is a reseller of the Complainant's products, under the Policy that does not constitute a right or legitimate interest in the disputed domain name. Furthermore the Respondent is offering for sale the goods of the Complainant's competitors.
It is contended that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names in the terms of paragraph 4(c)(iii) of the Policy.
The Respondent has not previously been commonly known by the disputed domain names in the terms of paragraph 4(c)(ii) of the Policy. It cannot establish that it had any rights prior to, and not merely following from, its use of the disputed domain name.
The Respondent's use of the disputed domain name is commercial for the sale of smartphones and accessories, exploits the Complainant's trademark, and cannot be a bona fide offering of goods or services in the terms of the Policy.
It is further contended by the Complainant that the disputed domain name was registered and is being used in bad faith. The Respondent has intentionally sought to divert Internet users to its own website by trading on the goodwill embodied in the Complainant's trademark by confusion and for commercial purposes. The Complainant says that when a domain name is obviously connected with a complainant and its products, its very use by a registrant with no connection to that Complainant suggests opportunistic bad faith, citing its own case Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, (in which the disputed domain name was in fact <researchinmotion.com>) and says the Respondent is a “repeat offender”, citing F. Hoffman-La Roche AG v. PrivacyProtect.org, Contact 1328832, Alexey Dronin, WIPO Case No. D2008-0417.
The Complainant has provided the Panel with numerous citations of previous UDRP decisions that it would like to be considered as precedent.
The Complainant requests the transfer to it of the disputed domain name <berry-store.com>.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant') asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Complainant related difficulties in identifying the Respondent. Before first submitting the Complaint the Complainant obtained the registrant's address by the normal and reasonable means, that is, through a search of the relevant WhoIs records. As defined in the Rules, “Respondent means the holder of a domain-name registration against which a complaint is initiated”. The contact details provided were clearly designed to obscure the contact details of the true Respondent. The Complainant cannot act on such contact details as are not provided and it proceeded correctly in accordance with the addresses provided.
The Complaint arrived at the Center overnight before the Easter stand-down period and was handled expeditiously thereafter. The registrar was contacted on April 14, 2009 and replied on April 16, 2009 with new contact details for the registrant and stating that the disputed domain name had been locked. Only April 17, 2009 elapsed before the details were forwarded to the Complainant the next business day, April 20, 2009.
The Complainant filed an amended Complaint on April 24, 2009, but noted that the new contact details were deleted from the WhoIs between checks on April 23 and 24, 2009. Since the disputed domain name had been locked on April 16, 2009 under the new contact details (hery santosa etc.), the Complainant could do no better that to nominate those details in addition to those originally located.
As stated by the Honorable Sir Ian Barker QC, “If the place of service does not happen to be the Respondent's address as advised to the Registrar, then the Respondent has only him or herself to blame in that circumstance. As a final precaution in favor of a Respondent, the WIPO Panel is under an independent duty, after perusing the file, to be satisfied that there was proper service.” (Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703).
The Panel is satisfied that the Center has done everything reasonably within its capacity to notify the Respondent of the proceeding, and it is noted that the words in paragraph 2 of the Rules, “calculated to achieve actual notice”, do not demand proof of actual receipt.
This Panel recently decided the dispute between the same Complainant and a different Respondent concerning (among others) the disputed domain name <berrystore.com>, from which the presently disputed domain name differs only by a hyphen (Research In Motion Limited v. Fred Potter / Berrystore / Mill River Labs, WIPO Case No. D2009-0370). Since the word “berry” is capable of innocent usage on the Internet, the question of confusing similarity in respect of <berrystore.com> required a protracted analysis that it is not necessary to repeat here except in summary, in so much that it may apply to the present case concerning <berry-store.com>.
The Complainant must prove that is has rights in a trademark, and that the disputed domain names are confusingly similar to that trademark.
Documentary evidence submitted by the Complainant confirms to the satisfaction of the Panel that it has owned and held rights in the trademark BLACKBERRY in the relevant classes since at least as early as 2000. Further evidence shows that the Complainant is the registrant of the trademark BERRY, registered in Hong Kong SAR in the relevant classes. The Taiwan registration is not accepted as proven since it is not presented in the language of the registration agreement, in contravention of paragraph 11 of the Rules, and the Panel therefore cannot determine whether the registration is on a supplemental register or subject to other limitations.
The disputed domain name is <berry-store.com>. The gTLD suffix “.com”, being a necessary technical part of the disputed domain name, is of no consequence in the determination of confusing similarity. What remain are the ordinary and easily read words “berry” and “store”. It might be argued that these are innocuous generic words. The Respondent has not done so, nor replied at all, but the decision is not made by default and the questions to be considered are whether the component “berry” is similar to BLACKBERRY or BERRY, and if so, whether confusingly so.
Generic though the words “black”, “berry” may be, they nevertheless comprise the registered and protectable trademark BLACKBERRY of the Complainant. Furthermore the Complainant has provided evidence that its trademark is widely used in an abbreviated or nickname form as BERRY and that is has promoted its product as long ago as 2000-2002 in a program of advertisements focusing on the word BERRY. Each advertisement exploits a pun in which BERRY doubles for “very”, thus: Berry Smart, Berry Different, etc. The advertisements carry an assortment of endorsements of the BlackBerry from publications such as Forbes, Information Week and PC World, and also display and make clear the trademark status of the BLACKBERRY trademark. A strong association between the trademark BLACKBERRY and the abbreviation “berry” has thereby been publicised.
The Complainant also provides evidence of usage of the word “Berry” to refer to the BlackBerry by independent commentators in technical news publications.
The Panel accepts that an abbreviated or nickname form of a trademark, even if publicly created, may in certain circumstances have trademark protection (McCarthy on Trademarks and Unfair Competition (4th ed.) at 7.18). The Panel is also mindful of the consensus from a number of UDRP decisions that has been summarised as follows: “The test for confusing similarity should be a comparison between the trademark and the domain name to determine the likelihood of confusion.” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.2).
Having regard to all the circumstances the Panel finds that the closeness of the disputed domain name, and particularly the element “berry”, to the trademark BLACKBERRY, as well as to the well-known abbreviation BERRY, constitutes confusing similarity. The disputed domain name is also found to be confusingly similar to the Complainant's trademark BERRY. Accordingly the Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.
The Complainant has to show that the Respondent does not have rights or legitimate interests in the disputed domain name. It is conventional for the Complainant to make out a prima facie case to this effect that the Respondent may refute in the terms of paragraph 4(c) of the Policy or otherwise.
The Complainant has set out a prima facie case by, inter alia, asserting that it has not in any way permitted the Respondent to use its trademark. The Complainant asserts that according to its enquiries the Respondent is not making a fair or noncommercial use of the disputed domain name, is not generally known by the disputed domain name, and that the use to which it is being put in the corresponding website is commercial and not a bona fide offering of goods or services since it trades unfairly on the Complainant's trademark.
The Panel accepts that a prima facie case has been made out to the effect that the Respondent does not have rights or legitimate interests in the disputed domain names. It is open to the Respondent to refute this in the terms of paragraph 4(c) of the Policy or otherwise but no reply has been received. On the facts, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name in the terms of paragraph 4(a)(ii) of the Policy.
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith, the fourth of which reads as follows:
(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 the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The screenprint submitted by the Complainant of the Respondent's website, to which the disputed domain name resolves, offers smartphones and accessories for sale, including the Complainant's products (for which the Complainant says that the Respondent is not an authorized distributor), and those of the Complainant's competitors. The website is clearly commercial and depends on the attraction of potential customers. By incorporating a well-known and confusingly similar abbreviation or nickname for the Complainant's trademark into the disputed domain name, the Respondent is likely to attract potential customers by initial interest confusion, causing at least some of them to think mistakenly that the website has the endorsement of the Complainant. The Panel finds bad faith registration and use proven in the terms of paragraph 4(b)(iv) of the Policy.
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 <berry-store.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Sole Panelist
Dated: June 9, 2009