The Complainant is Research in Motion Limited, Canada, represented by Novak Druce & Quigg LLP, United States of America.
The Respondent is John, Bbry, Thunder, United States of America.
2. The Domain Name and Registrar
The disputed domain name <blackberrythunder.com> is registered with EstDomains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2008. On May 15, 2008, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the domain name at issue. On May 20, 2008, EstDomains, Inc. transmitted by email to the Center its verification response disclosing underlying registrant and contact information for the disputed domain name which differed from the to the named Respondent and contact information in the Complaint. The Center sent a Notice of Change in Registrant Information & Complaint Deficiency to the Complainant on May 29, 2008 providing the underlying registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complaint filed an amendment to the Complaint on June 3, 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”), 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 June 12, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2008.
The Center appointed Adam Samuel as the sole panelist in this matter on July 8, 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.
4. Factual Background
The Complainant owns registered trademarks in the United States of America for the name, “Blackberry”, notably 2402763, 2672464, 2672472, 2678454, 2700671, 2700678, 2844339, 2844340, 2852571, 3098588 and 3102687 dating from between 2000 and 2006.
5. Parties’ Contentions
A. Complainant
The Complainant owns the “Blackberry” trademark. The disputed domain name incorporates the Complainant’s famous and distinctive “Blackberry” mark in its entirety and is consequently confusingly similar to the Complainant’s mark. The addition of the word “thunder” and the inclusion of the “.com” generic top-level domain do not dispel the confusing similarity of the disputed domain name with the Complainant’s mark. If anything, given the unauthorized leak on the Boy Genius Report website referring to the Complainant’s alleged new smartphone as the Blackberry Thunder – the likelihood of confusion has been compounded.
The Respondent has not established rights or legitimate interests in the disputed domain name. The Respondent was aware of the Complainant’s rights in its mark when it registered the disputed domain name. The Respondent has good reason to believe that the Complainant would object to the use of its famous mark and the Complainant has quickly made its objection known.
The Respondent without authorization deliberately appropriated the Complainant’s trademark even though the Respondent has no affiliation with the Complainant and has not been authorized or licensed by the Complainant to use the “Blackberry” mark. There are no indications that the Respondent is using the disputed domain name for any legitimate purpose or that the Respondent has undertaken any demonstrable preparations to make any good faith use of the disputed domain name.
The Respondent is using the disputed domain name which incorporates the Complainant’s “Blackberry” mark in its entirety with a parking website providing links to other websites that are wholly unrelated to the Complainant but which undoubtedly generate pay-per-click revenue for the Respondent. There are no indications that the Respondent is making any legitimate non-commercial or fair use of the disputed domain name.
The Respondent’s registration of the disputed domain name was in bad faith. The circumstantial evidence supports the inference that the Respondent was well aware of the Complainant’s famous mark at the time of the registration of the disputed domain name and that the Respondent registered the disputed domain name with the bad faith intention of profiting and exploiting the Complainant’s mark. The Respondent is using the disputed domain name intentionally to attract internet users to the Respondent’s website in order to generate click-through advertising revenue, thus profiting from and exploiting the Complainant’s mark for commercial gain.
The Respondent is a repeat offender, having at least once before been a Respondent in a case in which the Policy was violated by the registration of a domain name incorporating a well-known mark in order to generate advertising revenue. The bad faith of the Respondent is also clearly evidenced by the provision of inaccurate, unreliable and fictitious contact information.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant’s trademark and the word “thunder”. If the trademark had been a word without independent meaning, one would have concluded without hesitation that the domain name was confusingly similar to the trademark. The addition of generic words to a trademark in that situation would not prevent “confusing similarity”.
In a number of cases, including two decided by this Panelist, the addition of a generic word that brings to mind some aspect of the products or services of the Complainant results in confusing similarity between the domain name and the trademark referred to in it. For example, in Research in Motion Limited v. Nicholas Stewart,WIPO Case No. D2008-0262, the Panel said:
“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.”
Another approach which is related to this is to find the domain name confusingly similar if the generic word added to does not relate directly to the ordinary meaning of the trade-marked word. In both these situations, the reasonable Internet user seeing the domain name is more likely to associate it with the trademark than the ordinary meaning of the two words.
The Panel notes from the file that “thunder” is referred to as a future product of the Complainant of various Internet websites. Otherwise “thunder” does not refer in itself to any particular product or service that the Complainant currently markets prominently or at all. It is, though, a common phenomenon among mobile telephones offering e-mail and Internet connections and including some “blackberries” (typically when they are networked) to emit a signal which resembles lightning when re-charging or “powering-up”. The connection between lightning and thunder is extremely close for obvious reasons.
This may appear to be a tenuous connection. However, there is no particular connection between “thunder” and the ordinary meaning as a fruit of “blackberry”. The real test is whether objectively, the domain name pulls the average Internet user into thinking of the Complainant’s trademark or something designated by the two generic words attached to each other here. The mark is widely known and the addition of an apparently irrelevant generic word leaves the Internet user still thinking of the trademark name.
For all these reasons, the Panel concludes on balance that the domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent is apparently not called “Blackbery” and/or “Thunder” and does not appear to trade under that or any related name. The Respondent’s registration information suggests that his name and address are made up and in any event his name does not correspond to these names. There is no evidence that the Complainant has authorized the Respondent to use its trademark. The Respondent has not asserted any rights or legitimate interests in that name.
For these reasons, on the basis of the available evidence, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The domain name resolves to a parking website that markets mobile phones or technology related to them. On this occasion, it does not appear to be a parking website put up by the registrar because it contains apparent links to “blackberry thunder”, a product that does not actually exist. This strongly suggests that the Respondent was well aware of the Complainant’s trademark rights when registering the domain name.
The rumours of the product launch seem to have led the Respondent to register the domain name. There is no other reason apparent from the website for him to have done so. This constitutes bad faith in registration. The mere maintenance of the site on the Internet while knowing that it constitutes an infringement of someone else’s trademark is itself bad faith use.
7. Decision
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 <blackberrythunder.com> be transferred to the Complainant.
Adam Samuel Sole Panelist
Dated: August 4, 2008
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