The Complainant is Research In Motion Limited of Ontario, Canada, represented by Gowling Lafleur Henderson, LLP, United States of America.
The Respondent is Bao Zheng of Nanjing, Jiangsu, China.
The disputed domain name <blackberry.com.co> is registered with Internetx GMBH (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2011. On April 8, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2011, 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 and confirming that the language of the registration agreement for the disputed domain name was English.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2011.
The Center appointed Adam Taylor as the sole panelist in this matter on May 19, 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.
On June 3, 2011, the Panel requested that the Complainant provide a copy of the relevant registration agreement. On June 4, 2011, the Complainant forwarded a registration agreement in German, stating that it applied to the disputed domain name. On June 8, 2011, the Panel sought clarification from the Complainant as to why, if the applicable registration agreement was in German, the filed Complaint had indicated that it was in English. The Complainant responded that this was due to administrative oversight.
On June 8, 2011, the Panel also sought clarification from the Registrar as regards the language of the registration agreement, and the Registrar replied in part as follows:
“thank you for bringing this to our attention - we asked our reseller about the language of the registration agreement and he told us the registrant signed a chinese registration agreement.”
On June 15, 2011, the Panel informed the parties that it been advised by the Registrar that Chinese was the language of the registration of the agreement and requested the Complainant to file submissions on why English should be the language of the proceedings. On the same date, the Complainant filed its submission. The Respondent was given until June 20, 2011 to file its comments as to the proper language of the proceeding but did not do so.
On June 15, 2011, Panel requested from the Registrar a copy of the registration agreement in Chinese. After several follow-up emails from the Center, the Registrar replied on June 24, 2011 as follows:
“we have got no feedback from our client so we can’t sent you the chinese agreement back. So, you must use the answer before that the agreement was acknowledge in english.”
On the same date, Panel sought clarification from the Registrar regarding inter alia, the latter’s email of June 24, 2011. The Registrar sent its reply on June 30, 2011.
The Complaint has been submitted in English.
Paragraph 11 (a) of the Rules provides that, unless otherwise agreed by the parties, or specified otherwise in the registration agreement for the disputed domain name, the language of the administrative proceeding shall be the language of the registration agreement. This is subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
As explained above, the applicable registration agreement has not been clearly identified and consequently there is some confusion as to the language of the registration agreement. Possibilities appear to include Chinese, German and English.
As mentioned, the Panel issued a procedural order inviting submissions from the parties as to the appropriate language of the proceedings. The Complainant filed a submission requesting that English be the language of the proceeding. The Respondent did not file a submission.
A number of decisions under the Policy have considered the principles which panels should take into account when determining the language of the proceedings.
For example, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration in that it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding. See, e.g., Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; HAZET-WERK Hermann Zerver GmbH & Co. KG v. wilhelm jacobus izak, WIPO Case No. D2011-0040.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs. See, e.g., Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432.
In this case, the Panel notes that the Respondent has communicated with the Complainant in English (see section 5 below), the disputed domain name uses English language spelling and the Respondent’s website is in English.
Taking all of these matters together, the Panel concludes that in the circumstances there is a reasonable likelihood that the Respondent is conversant in the English language, that the Respondent is unlikely to be prejudiced should English be adopted as the language of the proceedings and that to require translation of the Complaint would involve adding undue cost and delay to the proceedings.
Accordingly, in accordance with paragraph 11(a) of the Rules, the Panel determines that – even if English is not the language of the registration agreement - English should be the language of the proceeding.
Aside from the language issue, it is not ideal that the Panel has been unable to view the registration agreement to verify that it incorporates the UDRP. However, the Registrar maintains – based on information supplied by its reseller - that the UDRP does indeed apply to the dispute. Furthermore, the Respondent – which, as the registrant, is well-placed to establish the terms of the agreement pursuant to which it registered the disputed domain name - has not appeared in this proceeding to argue otherwise. In those circumstances, the Panel considers it reasonable to proceed on the basis that the UDRP does properly apply to this dispute.
The Complainant, a Canadian corporation founded in 1984, is a leading designer and manufacturer of wireless solutions for the worldwide mobile communications market. The Complainant has been listed on the Toronto Stock Exchange since 1997 and the NASDAQ Index since 1999. It has offices in North America, Europe, Asia Pacific and Latin America.
Amongst other things, the Complainant produces the well-known Blackberry smartphone.
In the financial year ending February 27, 2010, the Complainant generated revenues in excess of USD 14 billion.
Since 2001, the Complainant has spent hundreds of millions of US dollars on marketing and advertising.
The Complainant’s main website at “www.blackberry.com” offers information, education and support services for the Complainant’s products.
The Complainant owns numerous worldwide trade marks for BLACKBERRY including United States trade marks no. 2672464 and 2700671 in international classes 9 and 38 respectively, both filed on December 28, 1998.
The disputed domain name was registered on February 7, 2010.
The disputed domain name resolved to a website headed “Blackberry.com.co – Blackberry and blackberry app world”, including sponsored links to the Complainant’s products and those of its competitors.
The Complainant sent a cease and desist letter to the Respondent on October 19, 2010, followed by a chaser on October 30, 2010.
On November 9, 2010, the Respondent replied by email stating that “the word blackberry is a generic term” and including a hyperlink to a Google search for definitions of the term “blackberry”.
The Complainant’s trade mark enjoys widespread recognition and has generated significant goodwill. As a result of extensive use and publicity, the trade mark has become famous.
The Complainant is the registered owner of trade marks for the term BLACKBERRY.
The disputed domain name is identical to the Complainant’s trade mark.
There is no evidence to suggest that the Respondent has ever used, or demonstrated preparations to use, the disputed domain name, or a name corresponding to same, in connection with a bona fide offering of goods or services.
There has never been any relationship between the Complainant and the Respondent. The Respondent is not licensed, or otherwise authorized, be it directly or indirectly, to register or use, the trade marks in any manner whatsoever, including in, or as part of, a domain name.
The disputed domain name is being used to divert Internet traffic to a pay-per-click website that displays sponsored links to competitors of the Complainant. This use of the disputed domain name puts the Respondent in a position to reap a financial benefit. This constitutes prima facie evidence of a lack of rights.
The Respondent’s suggestion that the disputed domain name is legitimate on the basis that “blackberry” is a type of fruit is an ill-conceived and transparent attempt to legitimize what is clearly an abusive domain name registration.
There is no evidence to suggest that the Respondent has been commonly known by the disputed domain name, or that the Respondent is making, or intends to make, a legitimate non-commercial or fair use of the disputed domain name.
The Respondent registered the disputed domain name for the purpose of disrupting the business of the Complainant, a competitor of the Respondent.
It is a well-established principle that the pointing of a domain name to a pay-per-click website that displays links to websites of businesses that offer goods and services that compete with those goods and services offered by a complainant constitutes evidence of bad faith under paragraph 4(b)(iii) of the Policy. A respondent need not be a direct competitor of a complainant; it is sufficient if it provides a means for Internet users to access links to businesses that compete with the complainant.
The use of the disputed domain name is disruptive to the Complainant, as potential consumers are likely to be confused into believing that the Respondent’s website is somehow affiliated with, or sponsored by, the Complainant. As well, the misdirection of potential consumers to the Respondent’s website, and to websites operated by competitors of the Complainant, constitutes a disruption to the Complainant and its business. The valuable goodwill subsisting in the Complainant’s famous trade mark is harmed, thereby constituting a further disruption to the Complainant.
Under the circumstances, it is reasonable to infer that the Respondent not only knew this diversion would be disruptive, but also intended it to be so.
Further, numerous panels have held that directing a domain name that is confusing with a third party trade mark to a pay-per-click website constitutes bad faith under paragraph 4(b)(iv) of the Policy.
The disputed domain name is identical to the Complainant’s famous trade mark. Under the circumstances, the disputed domain name is likely to confuse potential consumers into believing that the Respondent is somehow affiliated with, or endorsed by, the Complainant.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has rights in the mark BLACKBERRY arising from its registered trade marks as well as common law rights derived from the extensive, worldwide use of that name.
The disputed domain name is identical to the Complainant’s trade mark, disregarding the domain name suffix.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP … If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Here, the Complainant has not licensed or otherwise authorized the Respondent to use its trade marks.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain names could not be said to be bona fide.
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
In the Panel’s view, it is obvious that the Respondent registered the disputed domain name with the Complainant’s trade mark in mind.
While the Respondent has observed in his email to the Complainant that “the word blackberry is a generic term”, there is no evidence that the Respondent registered the disputed domain name for its generic qualities. On the contrary, the Respondent has used the disputed domain name for a website with sponsored links to the Complainant’s competitors.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <blackberry.com.co> be transferred to the Complainant.
Adam Taylor
Sole Panelist
Dated: July 1, 2011