The Complainant is BlackBerry Limited of Waterloo, Canada represented by Davis Wright Tremaine LLP, United States of America (“United States”).
The Respondent is Contact GoDaddy.com, LLC. Customer 2350907678 of Scottsdale, Arizona, United States / John Chen of Kharkiv, Ukraine.
The disputed domain name <qnxconnect.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2019. On March 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 2019, the Registrar 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 March 7, 2019, 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 March 14, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2019.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on April 15, 2019. 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 Complainant is a multi-national corporation in the mobile communications industry. QNX Software Systems Co is its wholly-owned subsidiary and a major vendor of operating systems, middleware, development tools, and professional services for connected embedded systems.
The Complainant controls a number of registered trademarks in the United States of America via its wholly owned subsidiary. These include US Registered Trademark No. 2,542,411 for the mark QNX registered on February 26, 2002 in relation to computer operating systems software in Class 9; printed books, guides and manuals related to software, computer programming and education in the field of computers and computer software, in Class 16; computer education training services, in Class 41; and computer software design and development for others as well as computer consultations, in Class 42. It also owns registered US Trademark No. 1,954,518 in relation to computer operating systems software, in Class 9 registered on February 6, 1996 and registered US Trademark No. 1,338,949 in relation to computer programs, in Class 9 registered on June 4, 1985.
All the QNX registered trademarks are now incontestable in terms of United States trademarks law.
The Complainant’s wholly owned subsidiary, QNX Software Systems Co., owns the domain name <qnx.com>, which redirects to “www.blackberry.qnx.com/en”, where it features information about QNX.
The disputed domain name was registered on January 9, 2019.
The Complainant and its predecessors in interest, have continuously and extensively used the QNX trademarks in connection with the goods and services identified in the registrations for over 30 years. The Complainant asserts that it has also expended millions of dollars in advertising containing QNX trademarks, and by virtue of sales and promotional activities, those are said to have generated valuable goodwill.
The Complainant states that it has information that the Respondent has been sending unsolicited e-mails from the domain <qnxconnect.com> pretending to be, the Executive Vice President of Human Resources at BlackBerry, and scamming candidates into participating in a phishing scheme. The Respondent is said to trick recipients into believing that they were dealing with the said person and, thus, perform requested payments and/or business tasks. Such use cannot be considered an offer of bonafide goods or services, nor a legitimate noncommercial or fair use.
The disputed domain name is identical to and confusingly similar to the Complainant’s QNX trademarks, or so the Complainant contends. The disputed domain name contains the QNX trademarks and adds the generic, descriptive term “connect.” The addition of this term does not detract from the confusing similarity between the disputed domain name and the QNX trademarks, according to the Complainant.
Registration of a domain name incorporating another’s famous mark does not confer any rights or legitimate interests in the domain name, but rather constitutes bad faith under paragraph 4(b) of the Policy, the Complainant asserts. According to the Complainant, the Respondent had knowledge of the Complainant’s QNX trademarks when it registered the disputed domain name, then to defraud potential job candidates as well as BlackBerry customers by claiming to be associated with the Complainant. The Respondent has thus clearly misappropriated the Complainant’s QNX trademarks to advance its financial interests.
The Complainant asserts that there is no relationship between it and the Respondent that would give rise to any license, permission, or authorization by which the Respondent could own or use the disputed domain name. The Respondent is not commonly known by the disputed domain name and is not making a legitimate noncommercial or fair use of the Complainant’s registered trademarks.
According to the Complainant, the Respondent’s registration and “John Chen” alias are constitutive of bad faith because they reflect an intentional and flagrant effort to deceive. The Respondent is using the disputed domain name intentionally to attract Internet users, for commercial gain, by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location in violation of paragraph 4(b)(iv). The Complainant concludes that the Respondent is not a legitimate noncommercial user of its domain name because of it has the intent to mislead.
The Respondent did not reply to the Complainant’s contentions.
The disputed domain name is not identical to the Complainant’s QNX trademark. However, it contains that distinctive trademark in its entirety and in an immediately recognizable manner. The addition of the generic terms “connect” makes no difference to the conclusion that the disputed domain name is confusingly similar to the Complainant’s QNX registered trademarks. In any case that term is evocative of the nature of the goods and services that the Complainant provides in association with the QNX trademarks.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s QNX trademarks.
The Respondent has no permission to use the QNX trademarks in any way from the Complainant. According to the Complainant’s information, the Respondent has used the disputed domain name to engage in a phishing scheme to obtain private information by impersonating personnel of the Complainant. This type of illegitimate conduct is not of a kind to vest rights or legitimate interests in the Respondent, who has in any case not responded to the Complainant’s contentions. The Respondent is not known by the disputed domain name and does not conduct legitimate business by reference to it.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
According to the information provided by the Complainant, the Respondent has engaged in a phishing scheme. The registration of the disputed domain name permits the Respondent to pretend to be an employee of the Complainant, and use that false impression to obtain private information for a purpose that is fraudulent.
It is also apparent that at the time of registration the Respondent must have been aware of the Complainant’s rights in the QNX trademarks. The Respondent has carefully combined that mark with the descriptive term “connection” which in any case evokes some of the Complainant’s services. This all makes it clear that the disputed domain name was deliberately registered in full cognizance of the Complainant’s rights and with the intension of taking fraudulent advantage of the reputation inherent in the QNX trademarks.
Therefore the Panel holds that the disputed domain name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <qnxconnect.com> be transferred to the Complainant.
William A. Van Caenegem
Date: April 29, 2019
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