WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BlackBerry Limited v. Smartphone Protection Pty Ltd
Case No. DAU2016-0045
1. The Parties
The Complainant is BlackBerry Limited of Waterloo, Canada, represented by Davis Wright Tremaine LLP, United States of America.
The Respondent is Smartphone Protection Pty Ltd of Hunters Hill, Australia.
2. The Domain Names and Registrar
The disputed domain names <bbstore.com.au> and <blackberristore.com.au> are registered with Web Address Registration Pty Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2016. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 7, 2016, the Registrar transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 9, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2016. The Center received a total of three email communications from the Respondent prior to the appointment of the Panel, on November 28, 2016 and on November 30, 2016 (twice). The Center also received a further email communication from the Respondent on December 8, 2016, after (but on the same day) the Panel was appointed.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on December 8, 2016. 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
A. Complainant
The Complainant is a company incorporated in Canada and the manufacturer of well-known BlackBerry smartphone devices and accessories. The Complainant is the owner of several registrations in Australia for or comprising its various well-known BLACKBERRY word and BB device trade marks, including registration No. 801194 for the word mark BLACKBERRY with a registration date of July 22, 1999; and registration No. 1561763 for the device mark BB with a registration date of June 7, 2013.
The Complainant also asserts common law trade mark rights in respect of the BB mark, by virtue of (1) its long-standing, continuous and extensive use of the BB mark for many years; (2) the use of the BB mark as the Complainant’s ticker symbol on the Toronto Stock Exchange; (3) its widespread use of the BB device mark; and (4) the fact consumers and other third parties such as mobile service operators routinely refer to the Complainant and its products as BB.
B. Respondent
The Respondent is a company incorporated in the State of New South Wales, Australia.
C. The Disputed Domain Names
The disputed domain name <bbstore.com.au> was registered on June 23, 2015. The disputed domain name <blackberristore.com.au> was registered on August 31, 2015.
D. The Use of the Disputed Domain Names
The disputed domain name <bbstore.com.au> has been resolved to a website (the “Website”) which is described as “still Australia’s One Stop BlackBerry Shop!” and “Dedicated to BlackBerry & Accessories Australia”, and which offers for sale and sells the Complainant’s BlackBerry smartphones and accessories, as well as smartphone cases for BlackBerry devices under the third-party trade mark OTTERBOX.
The Website is also directly linked:
1. Via the hyperlink “OtterBox Cases for iPad, iPhone and Samsung Galaxy” to a website at “www.otterboxsuperstore.com.au” which offers for sale and sells OtterBox cases and accessories for Apple and Samsung smartphone devices, as well as for the Complainant’s BlackBerry devices; and
2. Via the hyperlink “LifeProof Cases for iPhone and Samsung Galaxy” to a website at “www.lifeproofsuperstore.com.au” which offers for sale and sells cases and accessories for competing Apple and Samsung smartphone devices under the third-party trade mark LIFEPROOF.
The disputed domain name <blackberristore.com.au> has not been used.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s trade marks, the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names have been registered or subsequently used in bad faith.
B. Respondent
The Respondent contended in its email communications with the Center that it had changed its domain name from < blackberrystore.com.au> to <bbstore.com.au> at considerable cost, apparently following the decision issued by the Center dated November 16, 2015 in the previous proceedings under the Policy in BlackBerry Limited v. Computer Ezy Pty Ltd.,
WIPO Case No. DAU2015-0029; that the panelist in the previous proceedings did not “come back to us and let us know that the change of the Web address was not ok”; and that the Center “allowed us to go forward and change [the domain name]”.
6. Discussion and Findings
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in its BLACKBERRY and BB word and device marks (the “Trade Mark(s)”) acquired through use and registration.
Paragraph 4(a)(i) of the Policy requires the Complainant to establish that the disputed domain names are identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights.
The disputed domain name <blackberristore.com.au> comprises (in addition to the country code top-level and second-level domain suffix “.com.au”) the word “blackberri” together with the non-distinctive and generic word “store”. The “blackberri” component is almost identical to the Complainant’s BLACKBERRY Trade Mark, the only difference being the use of the letter “i” instead of the letter “y”. This is a clear-cut case of typosquatting. The Panel finds the addition of “store” to “blackberri” does not serve to distinguish the disputed domain name from the BLACKBERRY Trade Mark in any significant way.
The disputed domain name <bbstore.com.au> comprises (in addition to the country code top-level and second-level domain suffix “.com.au”) the letters “bb” together with the non-distinctive and generic word “store”. The “bb” component is identical to the Complainant’s BB Trade Mark and is the commonly-used abbreviation for the Complainant’s BLACKBERRY products marketed under the same mark. The Panel finds the addition of “store” to “bb” does not serve to distinguish the disputed domain name from the BB Trade Mark in any significant way.
Accordingly, the Complainant has fulfilled the first condition of paragraph 4(a) of the Policy in respect of both of the disputed domain names.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Marks. The Complainant has prior rights in the Trade Marks which precede the Respondent’s registration of the disputed domain names by many years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any genuine trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services.
The disputed domain name <blackberristore.com.au> has not been used.
The Panel considers the manner in which the disputed domain name <bbstore.com.au> has been used does not demonstrate rights or legitimate interests, for the following reasons:
1. The Respondent is not an authorised distributor or re-seller of the Complainant’s BlackBerry products and accessories;
2. The Website offers for sale not just the Complainant’s products, but third-party OtterBox and LifeProof cases and accessories for competing Apple and Samsung products;
3. Although the Website contains a disclaimer at the bottom of the site which notes that the Trade Marks are owned by the Complainant, and states that the Respondent is not endorsed, sponsored, affiliated with or otherwise authorized by the Complainant, the disclaimer is not effective as it is in faint grey type at the bottom of the page, it is below the place where a customer would click to order the Respondent’s products, and it is not perceptible immediately by the public.
(See paragraph 2.3 of the auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDRP Overview 1.0”)).
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish genuine rights or legitimate interests in the disputed domain names.
Accordingly, the Complainant has fulfilled the second condition of paragraph 4(a) of the Policy.
C. Registered or Used in Bad Faith
The Respondent is using the <bbstore.com.au> domain name to intentionally attempt to attract, for commercial gain, Internet users to the Website, by creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation or endorsement of its Website. The Website purports to offer the Complainant’s products using the Complainant’s Trade Marks. Consumers interested in purchasing the Complainant’s BlackBerry products may visit the Website and be confused into thinking that the Respondent is somehow connected to the Complainant; or purchase the products offered for sale on the Website and on the sites linked to the Website in the belief that they are purchasing the products on a site or sites that have been authorised by the Complainant.
The Panel therefore finds that the Respondent’s use of the <bbstore.com.au> domain name amounts to use in bad faith under paragraph 4(a)(iii) of the Policy.
The Panel finds that, in all the circumstances, and given in particular the repute of the BLACKBERRY Trade Mark, the Respondent’s passive use of the disputed domain name <blackberristore.com.au>, together with the factors outlined above (and also the facts outlined under Section 6.B. above), are sufficient to amount to bad faith registration for the purposes of the third limb under paragraph 4(a) of the Policy.
The Panel finds further support for its finding of bad faith by the fact the Respondent, in its email communications with the Center, is still using the domain name <blackberrystore.com.au> in its email signature, despite this domain name having been the subject of an order for transfer in BlackBerry Limited v. Computer Ezy Pty Ltd., supra.
For the foregoing reasons, the Panel concludes that the disputed domain names have been registered or used in bad faith. Accordingly, the Complainant has fulfilled the third condition of paragraph 4(a) of the Policy.
D. Complainant’s Eligibility
The Complainant has requested transfer of the disputed domain names. Given that the Complainant owns Australian registered trade marks that appear to be closely and substantially connected to the disputed domain names, the Complainant appears to satisfy the eligibility requirements for registration of the disputed domain names.
7. Decision
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 names <bbstore.com.au> and <blackberristore.com.au> be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: December 22, 2016
