The Complainant is Research in Motion Limited, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is Nicholas Stewart, United States of America.
2. The Domain Name and Registrar
The disputed domain name <blackberrytunes.com> (the “Domain Name”) is registered with Schlund + Partner AG (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on February 21, 2008, and in hard copy on February 26, 2008. The Center transmitted its request for registrar verification to the Registrar on February 21, 2008. The Registrar responded on February 22, 2008, confirming that it was the registrar and the Respondent was the registrant of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registration, that it was on lock status, and that the registration agreement was in English and contained a submission by the registrant to the jurisdictions at his residence and at the Registrar’s principal office. The Registrar also provided the contact details in respect of the registration on its database, stated that it could not confirm that it had received a copy of the Complaint, and noted that the Domain Name would expire on March 7, 2008. The Center asked the Registrar to confirm in accordance with paragraph 3.7.5.7 of ICANN’s Expired Domain Deletion Policy that the Domain Name would remain locked until this proceeding is concluded and whether any action by the parties was required to keep the Domain Name locked following the expiry date. The Registrar confirmed that the Domain Name would remain locked until this proceeding is concluded and that the parties did not need to take any further action.
The Center verified that the Complaint satisfied the formal requirements of 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 28, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 19, 2008. The Respondent sent a Response to the Center by email late on March 19, 2008, which arrived early in the morning on March 20, 2008. Since the delay was insignificant, the Panel admits the Response pursuant to paragraph 10(c) of the Rules.
The Center appointed Jonathan Turner as the sole panelist in this matter on March 28, 2008. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant designs, manufactures and markets wireless communication products, including smartphones, accessories and services supplied under the mark BLACKBERRY. The Complainant has expended over US $260 million in promoting the BLACKBERRY mark since 2001. The Complainant’s “Blackberry” smartphones are available on over 300 wireless networks in over 100 countries around the world. In the year ended March 3, 2007, the Complainant reported revenue in excess of US$3 billion and had about 8 million subscribers.
The Complainant provides information and support services for its “Blackberry” products through websites at “www.blackberry.com”, “www.discoverblackberry.com”, “www.blackberrypearl.com” and “www.blackberrycurve.com”; and it sells “Blackberry” products and related accessories through a website at “www.shopblackberry.com”.
The Complainant has registered BLACKBERRY as a trademark in the United States of America and many other countries.
The Respondent registered the Domain Name on March 7, 2005, and has used it for a website which sells a service of converting MP3 files provided by customers into ringtones for use on the Complainant’s “Blackberry” smartphones.
The Complainant sent the Respondent a cease and desist letter on September 5, 2007; the Respondent did not reply.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its BLACKBERRY mark, pointing out that the addition of the descriptive word “tunes” and the top level domain suffix do not dispel confusion.
The Complainant submits that the Respondent has no rights or legitimate interests in relation to the Domain Name or any corresponding name since the Respondent is not authorized to use the BLACKBERRY mark, is using it for a service which is not provided by the Complainant and is using it a manner which falsely suggests that the Respondent is affiliated with or sponsored by the Complainant.
The Complainant further alleges that the Domain Name was registered and is being used in bad faith, in order to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement, and to disrupt the Complainant’s business by misleading its customers.
The Complainant asks for a decision that the Domain Name be transferred to it.
B. Respondent
The Respondent states that his website is not designed to confuse anyone into believing that it has anything to do with the Complainant. He points out that he only coverts mp3 files into ringtones for Blackberry phones; he does not sell or service Blackberry phones. He says that the Domain Name is a play on Apple’s iTunes.
The Respondent contends that his two-page website, designed using FrontPage, can hardly be confused with the Complainant. He explains that he put photographs of Blackberry phones on the website so that customers could match the device shown with the phone they used. He says that he could take the photographs down or add copyright notices at the foot of the page.
The Respondent claims that he has been converting mp3s for mobile devices since 2001 and Blackberry tunes for over three years. He submits that his website does not interfere with anything that the Complainant is doing since the Complainant does not convert Apple iTunes files into ringtones. However, if any changes are required, he would do them.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. Each of these requirements will be considered in turn below.
A. Identical or Confusingly Similar to Mark in which Complainant has Rights
It is clear that the Complainant has registered and unregistered rights in the mark BLACKBERRY.
The Panel is satisfied that the Domain Name is confusingly similar to this mark. The addition of the descriptive term “tunes” and the top level domain suffix do not dispel confusion. Many Internet users would suppose that the Domain Name refers to a website of or authorized by the Complainant providing tunes for ringtones.
The first requirement of the Policy is satisfied.
B. Rights or Legitimate Interests of Respondent
In accordance with paragraph 4(c) of the Policy, a registrant may demonstrate that it has rights or legitimate interests in a domain name where (i) it used or made demonstrable preparations to use the domain name or a corresponding name in connection with a bona fide offering of goods or services before notice of the dispute; (ii) it has been commonly known by the domain name; or (iii) it is making a legitimate non-commercial or fair use of the domain name without intent to misleadingly divert consumers or tarnish the complainant’s mark. These examples are not exhaustive, but can be regarded as indicating the kinds of circumstances which may be regarded as giving rise to a right or legitimate interest of a registrant in a disputed domain name.
It has been generally accepted that the use of a domain name incorporating the complainant’s mark for a website selling accessories for the complainant’s goods can constitute a bona fide offering giving rise to a legitimate interest of the registrant in the domain name, even if the complainant has not consented to this use, if the following conditions are met:
(a) there is an actual offering of the goods or services by the registrant;
(b) the website at the domain name is used to sell only goods or services supplied by the complainant;
(c) the website accurately discloses the registrant’s relationship with the trademark owner; and
(d) the registrant has not sought to corner the market in domain names reflecting the complainant’s mark.
In this case, it is clear that the second of the above conditions is not met: the Respondent is not selling ringtones supplied by the Complainant. The Panel also considers that the third requirement is not met. Although the Respondent’s website is quite simple, it does not make it clear that it is not authorized by the Complainant. Although many Internet users would realise that it was not so authorized, in the Panel’s view there is a likelihood that a significant number of Internet users would suppose the contrary.
The Panel does not consider that the Respondent has been commonly known by the Domain Name. Even if it has become so known as a result of its use of the Domain Name, this does not give rise to a right or legitimate interest where the use has not complied with the conditions stated above. It is also clear that the Respondent is not making non-commercial use of the Domain Name, and the use cannot be regarded as fair for the reasons discussed.
In all the circumstances the Panel concludes that the Respondent does not have any right or legitimate interest in respect of the Domain Name. The second requirement of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel considers that the Respondent is using the Domain Name in order to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s BLACKBERRY mark as to the source, sponsorship, affiliation or endorsement of its website.
Even if many Internet users realize on arrival at the Respondent’s website that it is not authorized by the Complainant, this does not affect the possibility that they were attracted there by the expectation that a website at the address “www.blackberrytunes.com” offers ringtones provided by the manufacturer of the Blackberry products, i.e. the Complainant. Such use thereby takes unfair advantage of the BLACKBERRY mark to divert consumers from the Complainant’s own websites and to sell a service which is not provided by the Complainant.
The Panel also considers that the Respondent must have been aware when he registered the Domain Name that Internet users would be attracted to his website in the expectation of finding ringtones provided by the Complainant.
This constitutes evidence of registration and use in bad faith in accordance with paragraph 4(b)(iv) of the Policy.
The Panel accordingly concludes that the Domain Name was registered and is being used in bad faith. The third requirement of the Policy is satisfied.
7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name, <blackberrytunes.com> be transferred to the Complainant.
Jonathan Turner Sole Panelist
Dated: April 11, 2008
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