The Complainant is Research in Motion Limited of Ontario, Canada, represented by Gowling Lafleur Henderson, LLP, United States of America.
The Respondent is Infinity Teknoloji, hosting@infinityteknoloji.com/customer no 27209, İlkay Öztürk, Kurumsal Müşteri of Istanbul.
The disputed domain names <blackberryelearning.com>, <blackberryelearning.net> and <blackberrylearning.com> are registered with Nics Telekomunikasyon Tic. Ltd. Sti.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2010. On November 3, 2010, the Center transmitted by email to Nics Telekomunikasyon Tic. Ltd. Sti a request for registrar verification in connection with the disputed domain names. On November 5, 2010, Nics Telekomunikasyon Tic. Ltd. Sti. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 12, 2010 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 November 15, 2010.
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 November 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2010. The Center notified the Respondent’s default on December 15, 2010.
The Response was filed with the Center on December 27, 2010.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on January 7, 2011. 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.
In accordance with paragraph 11 of the Rules, the Panel has determined the language of proceedings shall be English, taking account of the circumstances of the case, and noting specifically that the Respondent did not object to the Complainant’s language request. As such, the Panel does not find that any prejudice would occur if the language of proceedings were to be English and in light of the specifics of this case, such language selection, is indeed appropriate.
The Complainant is a leading designer and manufacturer of innovative wireless solutions for the worldwide mobile communications market. Listed on the Toronto Stock Exchange since 1997 and the NASDAQ Index since 1999, the Complainant is a global company with offices in North America, Europe, Asia Pacific and Latin America.
The Complainant has established a significant Internet presence. It has registered and uses “www.blackberry.com”, a global website. The site offers, in part, information, education 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 Complainant is the owner of over 1500 trade-mark registrations and applications worldwide containing, or comprised of, the element BLACKBERRY.
The disputed domain names were registered on May 25, 2009.
According to the Complainant, the Respondent registered the disputed domain names on May 25, 2009 without the permission of the Complainant. The disputed domain names are inactive.
Furthermore, the Respondent has engaged in a pattern of unauthorized domain name registrations having registered domain names it does not appear entitled to the knowledge of the Complainant, namely, <blackberrylearning.com>, <blackberryelearning.com>, <blackberryelearning.net>, <iphoneegitim.com>, <iphoneegitim.net>, <iphonelearning.net>, <blackberrylearning.net> and <blackberrymeeting.net>.
The Complainant sent a cease and desist letter to the Respondent. However; no response was received to it.
The Respondent has prevented the Complainant from registering the disputed domain names.
Further, the Respondent registered the disputed domain names for the purpose of disrupting the business of the Complainant, a competitor of the Respondent. As well, the Respondent registered the disputed domain names in an attempt to attract, for commercial gain, Internet users to her websites by creating likelihood of confusion with the Complainant as to source or sponsorship.
The Respondent submits it is the owner of the website “www.hizliegitim.com”, which is registered under their licensed company name. The content of this website is on the Blackberry phones such as time management, etc. Training is presented in accordance with Turkish Law Legislation.
The Respondent contends it has applied for a trademark application before the Turkish Patent Institute with the number 2010 / 79498.
Paragraph 15 (a) of the Rules requires the Panel to decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the domain names registered by the Respondent 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 respect of the domain names; and
(iii) that the domain names have been registered and are being used by the Respondent in bad faith.
The Complainant is the owner of over 1500 trade-mark registrations and applications worldwide containing, or comprised of, the element BLACKBERRY.
The trademark BLACKBERRY was registered long before the registration of the disputed domain names.
The Panel concurs with the opinion of several prior UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered mark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615. In this Panel’s view, the addition of the terms “learning or e-learning” does not sufficiently distinguish the disputed domain names from the Complainant’s trademark.
Additionally the Respondent has brought no argument in support of his contention that the disputed domain names are not identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain names. They brought to the Panel’s attention only a fresh trademark application which has been filed on December 15, 2010 before the Turkish Patent Institute for the service mark “www.blackberyye-learning.com”. The Panel notes that as it is necessary to demonstrate use or preparation to use the domain name or a similar name in connection with the relevant offering of services, before any notice of the dispute (Policy, paragraph 4(c)(i)), the Respondent cannot rely on this trademark application as evidence of a right or legitimate interest in the domain names.”
The Panel finds on the record that the Respondent has not demonstrated any bona fide offering of goods and services by its use of the disputed domain names. Nor has the Respondent shown that it has been commonly known by the disputed domain names. The Complainant submitted, inter alia¸ that the Respondent has neither a license nor any other permission to use the disputed domain names. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks right or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests. The Panel finds that given the use formerly made of the disputed domain names, when the Respondent registered the disputed domain names it knew that BLACKBERRY was the trademark of the Complainant, and that it registered the disputed domain names because they would be recognized as such.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain names.
Paragraph 4(b) of the Policy provides a list of indicative circumstances that suggest bad faith registration, however, such list is not exhaustive and a finding of bad faith depends on the circumstances of each case.
Based on the circumstances, in the Panel’s view, it is reasonable to infer that when the Respondent registered the disputed domain names, it likely knew that the domain names incorporated the trademark of the Complainant. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that this knowledge may be considered, in appropriate cases, also an indication of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
The Panel also finds that the registration of more than one domain name (in the present case there are 3 disputed domain names) incorporating the Complainant's trademarks is further evidence for the bad faith of the Respondent, as such registrations can be considered to have been made to harm the Complainant's reputation and to gain legally unjustified commercial benefit.
The Panel notes that the websites with the disputed domain names are currently inactive. As prior WIPO UDRP panels have held, the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; CBS Broadcasting, Inc. v. Dennis Toeppen, WIPO Case No. D2000-0400. In the Panel’s view the Respondent’s passive holding of the disputed domain names suggests that it registered the domain names for the purpose of selling them to Complainant for profit. Florists’ Transworld Delivery, Inc. v. DomainSource.com a/k/a Domain Source, Inc., NAF Case No. 105882 (May 1, 2005).
Thus it is obvious to this Panel that the Respondent has intentionally attempted to attract for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
In view of the above, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith, in accordance with paragraph 4(a)(iii) 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 names, <blackberryelearning.com>, <blackberryelearning.net> and <blackberrylearning.com> be transferred to the Complainant.
Dilek Ustun Ekdial
Sole Panelist
Dated: January 21, 2011