WIPO-UDRP Decision D2009-0218

Case numberD2009-0218
ComplainantResearch In Motion Limited
RespondentGeorges Elias
PanelistBarker, James A.
Affected Domains 4gblackberry.com
alwaysbetonblackberry.com
alwaysblackberry.com
babablackberry.com
backinblackberry.com
basicblackberry.com
berrydelsol.com
berrymom.com
berrynegro.com
berryverde.com
betonblackberry.com
blackberriesonblondes.com
blackberrito.com
blackberryandcoke.com
blackberryandroll.com
blackberrybeauties.com
blackberrybeauty.com
blackberrybootcamp.com
blackberrycardreader.com
blackberrychic.com
blackberrycouture.com
blackberrycreditcardswipe.com
blackberrydad.com
blackberrydads.com
blackberrydiscount.com
blackberrydog.com
blackberrydummy.com
blackberryfighter.com
blackberrygreen.com
blackberryinside.com
blackberryisbeautiful.com
blackberryisthenewgreen.com
blackberrykid.com
blackberrykids.com
blackberrylabel.com
blackberrymind.com
blackberrymoms.com
blackberryonice.com
blackberryphd.com
blackberryplatinum.com
blackberrypreorder.com
blackberryrising.com
blackberryshot.com
blackberryshots.com
blackberrystory.com
blackberryswipe.com
blackberrytimes.com
blackberryup.com
blackberryvogue.com
blackberrywoman.com
blackberryxg.com
blackjackberry.com
bolderblackberry.com
busyblackberry.com
byblackberry.com
bzberry.com
bzblackberry.com
conblackberry.com
copberry.com
doyoublackberry.com
drinkblackberry.com
elblackberry.com
ezblackberry.com
foreverblackberry.com
fullcontactblackberry.com
happyblackberry.com
hechoenblackberry.com
hisberry.com
hookedonblackberries.com
hookedonblackberry.com
howdoyoublackberry.com
iamblackberry.com
idenblackberry.com
inablackberry.com
insideblackberry.com
intheblackberry.com
iqberry.com
isblackberry.com
jackblackberry.com
johnnywalkerblackberry.com
madeinblackberry.com
magicblackberry.com
mattblackberry.com
matteblackberry.com
meninblackberry.com
mommyberry.com
neverbackberry.com
nevergobackberry.com
newidenblackberry.com
newnextelblackberry.com
nextelberry.com
nextelblackberrydeals.com
nowblackberry.com
obamaberry.com
obamaberry.info
obamaberry.net
obamaberry.org
onceblackberry.com
onceyougoblackberryyouwillnevergobackberry.com
onceyouvehadblackberryyoullnevergobackberry.com
platinumblackberry.com
powerblackberry.com
poweredbyblackberry.com
professorblackberry.com
sheberry.com
smarterblackberry.com
sprintblackberrydeals.com
superblackberry.com
verdeberry.com
whatisblackberry.com
withblackberry.com
StatusClosed
DecisionTransfer, denied in part
Date of Decision27.04.2009

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Research In Motion Limited v. Georges Elias

Case No. D2009-0218

1. The Parties

The Complainant is Research In Motion Limited of Waterloo, Ontario, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.

The Respondent is Georges Elias of Los Angeles, California, United States of America.

2. The Domain Names and Registrar

The following 111 disputed domain names are registered with GoDaddy.com, Inc. (they are grouped in the order in which they are discussed below, under the heading “Identical or Confusingly Similar”):

1. <alwaysbetonblackberry.com>

2. <alwaysblackberry.com>

3. <babablackberry.com>

4. <backinblackberry.com>

5. <bolderblackberry.com>

6. <betonblackberry.com>

7. <intheblackberry.com>

8. <basicblackberry.com>

9. <blackberryandcoke.com>

10. <blackberryandroll.com>

11. <blackberrybeauties.com>

12. <blackberrybeauty.com>

13. <blackberrybootcamp.com>

14. <blackberrycardreader.com>

15. <blackberrychic.com>

16. <blackberrycouture.com>

17. <blackberrycreditcardswipe.com>

18. <blackberrydad.com>

19. <blackberrydads.com>

20. <blackberrydiscount.com>

21. <blackberrydog.com>

22. <blackberrydummy.com>

23. <blackberryfighter.com>

24. <blackberrygreen.com>

25. <blackberryinside.com>

26. <blackberryisbeautiful.com>

27. <blackberryisthenewgreen.com>

28. <blackberrykid.com>

29. <blackberrykids.com>

30. <blackberrylabel.com>

31. <blackberrymind.com>

32. <blackberrymoms.com>

33. <blackberryonice.com>

34. <blackberryphd.com>

35. <blackberryplatinum.com>

36. <blackberrypreorder.com>

37. <blackberryrising.com>

38. <blackberryshot.com>

39.<blackberryshots.com>

40. <blackberrystory.com>

41. <blackberryswipe.com>

42. <blackberrytimes.com>

43. <blackberryup.com>

44. <blackberryvogue.com>

45. <blackberrywoman.com>

46. <blackberryxg.com>

47. <busyblackberry.com>

48. <byblackberry.com>

49. <bzberry.com>

50. <bzblackberry.com>

51. <conblackberry.com>

52. <newidenblackberry.com>

53. <doyoublackberry.com>

54. <drinkblackberry.com>

55. <elblackberry.com>

56. <ezblackberry.com>

57. <foreverblackberry.com>

58. <fullcontactblackberry.com>

59. <happyblackberry.com>

60. <hechoenblackberry.com>

61. <hookedonblackberry.com>

62. <howdoyoublackberry.com>

63. <iamblackberry.com>

64. <idenblackberry.com>

65. <inablackberry.com>

66. <insideblackberry.com>

67. <isblackberry.com>

68. <jackblackberry.com>

69. <johnnywalkerblackberry.com>

70. <madeinblackberry.com>

71. <magicblackberry.com>

72. <mattblackberry.com>

73. <matteblackberry.com>

74. <meninblackberry.com>

75. <newnextelblackberry.com>

76. <professorblackberry.com>

77. <nextelblackberrydeals.com>

78. <nowblackberry.com>

79. <onceblackberry.com>

80.<onceyougoblackberryyouwillnevergobackberry.com>

81.<onceyouvehadblackberryyoullnevergobackberry.com>

82. <platinumblackberry.com>

83. <powerblackberry.com>

84. <poweredbyblackberry.com>

85. <smarterblackberry.com>

86. <sprintblackberrydeals.com>

87. <superblackberry.com>

88. <4gblackberry.com>

89. <whatisblackberry.com>

90. <withblackberry.com>

91. <blackberriesonblondes.com>

92. <hookedonblackberries.com>

93. <berrymom.com>

94. <berrynegro.com>

95. <berrydelsol.com>

96. <hisberry.com>

97. <iqberry.com>

98. <mommyberry.com>

99. <nextelberry.com>

100. <sheberry.com>

101. <verdeberry.com>

102. <copberry.com>

103. <berryverde.com>

104. <obamaberry.com>

105. <obamaberry.info>

106. <obamaberry.net>

107. <obamaberry.org>

108. <blackberrito.com>

109. <blackjackberry.com>

110. <neverbackberry.com>

111. <nevergobackberry.com>

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2009. On February 20, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On February 20, 2009 (with further clarification on February 23, 2009), GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 February 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2009. On March 15, 2009, the Center received an email request from the Respondent asking for an extension of time to file the Response. The Center solicited comments from the Complainant, and the parties agreed to an extended deadline of March 20, 2009. The Response was filed with the Center on March 21, 2009.

The Center appointed James A. Barker as the sole panelist in this matter on April 8, 2009. 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.

As the Response was submitted very shortly after the extended due date, the Panel decided to consider it.

On March 23, 2009, the Complainant made a request to file a supplemental submission, which the Panel denied. As it was mentioned to the parties, no explicit provision is made under the Rules for supplemental filings by either party, except in response to a deficiency notification or if requested by the Panel. The Policy is designed to provide an expeditious and procedurally uncomplicated avenue of dispute resolution. The Panel considers that such filings should not be admitted as a general rule, and there was no showing of good cause for accepting a supplemental submission in this case (especially given the substantial nature of the Complainant's initial submission). See, e.g., Dreamgirls, Inc. v. Dreamgirls Entertainment, WIPO Case No. D2006-0609. The Panel considered that the Complaint and Response contained sufficient argument and evidence for an informed decision.

4. Factual Background

The Complainant is a designer and manufacturer of wireless solutions for the worldwide mobile telecommunications market. The Complainant has been listed on the Toronto Stock Exchange since 1997 and the NASDAQ Index since 1999, and has offices in North America, Europe and the Asia-Pacific Region.

The Complainant provided evidence of being the owner of registered marks for BLACKBERRY in the United States and Canada. Those marks were registered as early as 2001. The Complainant is also the owner of registered marks for BERRY in Hong Kong, SAR of China (registered from February 2, 2007) and Taiwan, Province of China (registered from November 16, 2007).

The Complainant has developed and marketed accessories and services in connection with its trademarks including the famous Blackberry smartphone. That phone is available on over 300 networks in over 100 countries, and is a highly successful product.

The Complainant operates websites at “www.blackberry.com” and “shopblackberry.com”.

The Complainant provides evidence that, on December 17, 2009, 94 of the disputed domain names (e.g. <alwaysblackberry.com>) reverted to a website titled “Sprint ahead” with an associated logo, and including the statement “Welcome to the Credit Union Member Discount Program!”. The website then contains various links, including to “Phones”, via which various mobile phones are ostensibly offered for sale, including the Complainant's Blackberry products. Although referring to a credit union, the functioning links on those sites appear only to relate to the sale of mobile phones and associated phone plans. The remaining 17 disputed domain names (e.g. <magicblackberry.com>) reverted to the Registrar's ‘pay-per-click' websites, apparently displaying links to the Complainant's products and those of its competitors.

The disputed domain names were registered between December 2007 and July 2008 (as indicated by the “creation date” in the WhoIs record). The great majority of them were registered in June or July 2008.

5. Parties' Contentions

A. Complainant

The following is summarized from the Complaint.

The disputed domain names are confusingly similar to the Complainant's marks. The disputed domain names either contain the Complainant's BLACKBERRY marks or misspellings of those marks, as in the case of <blackberriesonblonds.com>, <blackberrito.com>, <hookedonblackberries.com>. The disputed domain names are also similar from a phonetic and visual standpoint. Further enhancing the confusion is that the term “berry” is a well known nickname for the Blackberry device.

The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent's registrations cannot be said to be bona fide, and the Respondent's actions completely undermine a claim of legitimate interest.

The Respondent registered and has used the disputed domain names in bad faith, within the meaning of paragraphs 4(b)(i)-(iv) of the Policy (inclusive). Clearly the Respondent's intent behind the registration and use of the disputed domain names was to exploit the tremendous goodwill associated with the BLACKBERRY marks for commercial gain. The Respondent had actual knowledge of the Complainant's trademark rights or, at least, constructive knowledge. The Complainant also states that the Respondent requested in excess of USD $80,000 for the transfer of one of the disputed domain names (<insideblackberry.com>).

Under each of these grounds, the Complainant refers to various precedents under the Policy, including cases previously involving the Complainant's marks. Those include, for example, Research in Motion Limited v. Louis Espinoza, WIPO Case No. D2008-0759; Research in Motion Limited v. Jumpline.com, WIPO Case No. D2008-0758; Research in Motion Limited v. Domains by Proxy, Inc. and Kafiint, WIPO Case No. D2008-0164; Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2008-1752.

B. Respondent

The following is summarized from the Response.

The Respondent denies the Complainant's allegations against him. He denies that the disputed domain names are identical or confusingly similar to the Complainant's “claimed common word marks”. The Complainant's claimed rights, the Respondent says, are broad and outside the scope of the Policy. The terms “blackberry” and “berry” are common terms, and have been successfully trademarked by countless others.

The Respondent claims to have rights or legitimate interests in the disputed domain names. This is because he claims to use them in connection with a bona fide offering of goods or services.

The Respondent claims not to have registered the disputed domain names for any of the purposes that illustrate bad faith set out in paragraph 4(b) of the Policy. The Respondent claims that he is not a competitor of the Complainant. The Respondent states that, using the Complainant's definition, all resellers of its products would also be competitors. Since the Complainant is the beneficiary of any sale of its products and services, it is disingenuous to claim that the Respondent's registration of the disputed domain names was done to disrupt the Complainant's business. The Respondent did not register the disputed domain names to attract Internet users for commercial gain, and the Respondent's website is not remotely similar to the Complainant's.

The Respondent asks the Panel to make a finding of reverse domain name hijacking, on the basis that the Complainant has engaged in a deliberate misapplication of general trademark policy.

The Response attaches two items of evidence, although neither are mentioned in the Response itself. The first is a declaration of the General Manager of “YummyNames”. According to the decaralation, YummyNames is a service from Tucows to help marketers use domain names more effectively. That General Manager declares that he was hired by the Complainant to purchase one of the disputed domain names, <insideblackberry.com>. He says that, in the course of doing so, he had “direct email and phone contact” with the Respondent. He says that, having looked at the Complaint, he noticed incorrect statements and instructed Tucows to send a letter to the Complainant's counsel. In relation to the Complainant's claims of the Respondent's request to sell this particular disputed domain name, the General Manager declares that the Respondent made no offer to him, or invited him to make an offer.

The second piece of evidence is a copy of a letter apparently from Tucows' counsel to the Complainant's counsel. The letter claims that the Complainant procured Yummy Names' services under false pretenses, because he was not informed that his services were being used by the Complainant to gather evidence against the Respondent. It also claims that the Complaint contains false statements, in particular statements made in paragraphs 12, 32 and 61 of the Complaint, in relation to the claims of the Respondent's offer to sell the disputed domain name to the Complainant.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must prove all of the following:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names were registered and are being used in bad faith.

These issues are discussed as follows. For the purpose of this discussion, and for more simple reference, the Panel has referred to the disputed domain names as they are numbered above (under the heading “The Domain Names and Registrar”).

A. Identical or Confusingly Similar

Rights in a Mark

The Complainant has rights in its trademarks. The Complainant provided evidence of having registered rights in both BLACKBERRY and BERRY.

For the purpose of paragraph 4(a)(i) of the Policy, none of the disputed domain names are identical to those marks. The issue, then, is whether they are confusingly similar.

Whether there is such confusing similarity in this case significantly turns on the extent to which the Complainant's marks are distinctive. It is self-evidently true, as the Respondent contends, that the terms “blackberry” and “berry” are common English words. Based on this, the Respondent would no doubt contend that the Complainant's marks are not distinctive.

But the simple fact is that the Complainant has registered trademark rights. Those rights include word marks registered on the principal register of the USPTO. As noted previously in a partly comparable circumstance, “This registration is prima facie evidence of the validity of Complainant's registration, and creates a rebuttable presumption that [the Complainant's] mark is inherently distinctive.” EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. In the same vein, see e.g., Owens Corning Fiberglas Technology, Inc v. Hammerstone, WIPO Case No. D2003-0903.

Here, the Complainant's marks are registered in relation to a variety of goods and services, including e.g. “Electronic handheld units for the wireless receipt and/or transmission of data […].” The Complainant's marks are distinctive in that connection. It is a common feature of trademark law that a mark may be registerable (and therefore distinctive) if it consists of a word which has no direct reference to the character or quality of goods or services for which it is registered. Here, the Complainant is not using the words “blackberry” or “berry” because of their common meaning as a type of fruit. Neither is the Complainant using them because they have any direct reference to its goods or services. Rather, the Complainant is using the terms to evoke a connection that is otherwise arbitrary, between those terms and its products and services. It is this connection that is the distinctive feature of the Complainant's marks.

Against this, the Respondent makes brief and unsupported assertions. Some of them are true. For example, the Panel accepts that the terms “blackberry” and “berry” are commonly used in other connections; and that the Complainant does not have rights to every instance of the use of those terms. The Panel can also imagine, as the Respondent states without evidence, that some (unidentified) third parties have also registered marks containing those terms. However, for the reasons set out above, none of these assertions are relevant to the issue at hand. These assertions do not displace the validity of the Complainant's registered marks and the rebuttable presumption of inherent distinctiveness that flows from the same.

This does not mean that the Complainant's marks are necessarily distinctive to the same extent. Relevantly, the Complaint supported its case with substantial evidence concerning the reputation and distinctiveness of its marks containing the term BLACKBERRY. The Complainant has a large number of registered marks which include that term, and websites at domains names incorporating that term. The Complainant also provided evidence of various marketing reports which rated its BLACKBERRY brand as being very well-known and valuable. The Complainant points to recent press coverage regarding President Barack Obama's desire to keep his Blackberry device. The Complainant's BLACKBERRY mark has been the subject of a significant number of prior proceedings under the Policy, in which other panels have found that the Complainant's mark is distinctive and famous. See e.g. Research In Motion Limited v. Alon Banay, WIPO Case No. D2009-0151, Research In Motion Limited v. Blackberry World, WIPO Case No. D2006-1099. On the basis of all this evidence, the Panel therefore concludes on the provided record that the Complainant's BLACKBERRY marks are famous and indeed at the stronger end of the spectrum.

The Complainant provided much less evidence of the reputation and distinctiveness of marks containing the term BERRY. That mark is registered in only two, relatively small jurisdictions. It was registered recently, in 2007. The only evidence which the Complainant presents of the reputation of this mark is four short web reviews. Those reviews use the abbreviation “berry” to refer to the Complainant's Blackberry device. The Complainant provided no evidence (other than copies of trademark registrations) of the reputation of its BERRY mark in the jurisdictions where they are registered. The Panel therefore concludes on the provided record that the Complainant's BERRY marks appear to be at the weaker end of the spectrum.

The different extent of the strength of these marks is relevant to the consideration of confusing similarity below.

In considering this question, the Panel has also considered whether the Respondent's intent in registering and using the disputed domain names should be treated as determinative. For example, in Schering-Plough Corporation, Schering Corporation v. Dan Myers, WIPO Case No. D2008-1641, the then-panel found context to be “helpful” in determining the issue of confusing similarity. The relevant context was the content of the then-respondent's website, which indicated that the respondent had intended to target the complainant's trademark. Similarly, in Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477 (referring to the decision of the U.S. Court of Appeals for the Ninth Circuit in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979)) the panel noted that a respondent's intent in targeting a trademark can be relevant, as part of a multifactored test, in determining confusing similarity. The panel referred to intent as one of eight relevant factors in determining confusing similarity between two marks, being (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant's intent in selecting the mark; and (8) likelihood of expansion of the product lines.

The Panel is in little doubt in this case that the Respondent intended to target the Complainant's marks. In addition to the Respondent's pattern of conduct, many of the Respondent's websites in this case include content relevant to the sale of mobile phones which is, by itself suggestive that the Respondent sought to target the Complainant's marks.

However, for determining confusing similarity, and from the cases cited above, it is clear that the Respondent's intent can be relevant but is not, by itself, determinative. In this case, the majority of the disputed domain names are confusingly similar to the Complainant's distinctive BLACKBERRY mark. For those domain names, it is the distinctiveness of the Complainant's mark and the objective degree of each domain name's similarity which is the principal factor in finding confusing similarity. The Respondent's intent may support that finding, but is not necessary for it.

For a minority of the disputed domain names (e.g. <copberry.com>), there is a more difficult issue of confusing similarity with the Complainant's weaker BERRY mark. In these cases, the Panel considers that it would only be possible to find confusing similarity if the Respondent's intent was determinative. For the reasons discussed further below, the Panel considers that the Complainant's BERRY mark is insufficiently distinctive in the context of the domain names, and the disputed domain names therefore insufficiently similar on an objective comparison, for the Respondent's intention to tip the balance. The Panel's approach in this respect is consistent with previous panel authority. In both the cases cited above, the then-panels considered the intention of the respondents in registering clearly distinctive trademarks, together with other relevant factors. These were not cases involving domain names incorporating relatively weak marks and generic terms.

Following the usual approach to this first element of the Policy, the test the Panel has applied is this: Is each disputed domain name likely to lead Internet users, including those who may be familiar with the Complainant, to believe or be confused about whether the domain name is connected with the Complainant?

Identical or confusingly similar

For the purpose of discussion, the Panel has divided the disputed domain names into five categories.

Firstly, disputed domain names 1 – 90 all include the Complainant's BLACKBERRY mark entirely. Most of them also add generic words, such as “always”, “bet”, “black”, “inside”, “magic”, etc. A smaller number also add short letter combinations such as “el” or “xg”. Taking into account the distinctiveness of the Complainant's mark, there is the potential for many to think that those words or letters merely relate to the Complainant's mark. As such, there is a real potential for confusion. In the Panel's view, the addition of none of those words or letters are sufficient to avoid that confusion. For this reason, the Panel finds that disputed domain names 1 – 90 are all confusingly similar to the Complainant's BLACKBERRY marks. Such a finding is supported by relevantly similar findings in prior cases involving the Complainant, supra, which all involved the addition of generic words to the Complainant's BLACKBERRY mark.

Secondly, disputed domain names 91-92 contain the plural form “blackberries”. The Panel considers that this plural form is virtually identical to the Complainant's mark. As stated by the panel in i2 Technologies Inc v. Richard Alexander Smith, WIPO Case No. D2001-0164, “it is trite law and basic common sense that the mere change from singular to plural or vice versa is not sufficient to avoid confusion for trade mark purposes or passing off purposes.” See similarly, Horn Abbot International Limited v. Ian McMillan, WIPO Case No. D2005-0198, which also found confusing similarity of a plural form of a well-known mark (which was a mark also incorporating generic terms). As such, for the same reasons as those set out for domain names 1 – 90, the Panel finds that these two disputed domain names are also confusingly similar to the Complainant's BLACKBERRY mark.

Thirdly, disputed domain names 93-103 combine the Complainant's BERRY mark and generic terms such as e.g. “mom”, “his”, “she”, and “verde” (Italian and Spanish for “green”). Disputed domain names 95 and 97 include the terms “iq” and “del sol”. With the exception of 103, the Panel is not convinced that these domains are confusingly similar to the Complainant's BERRY mark. The difficulty for these domain names is that the Complainant's BERRY mark is not highly distinctive therein and it does, of course, have a common meaning. That meaning appears no less common than the words with which it is combined. None of those words suggest any particular connection with the Complainant, its mark, or its products. The Complainant refers to the One Star Global case, supra, for the principle that the whole incorporation of a complainant's mark does not avoid confusion. But the panel in that case stated the principle differently: that the whole incorporation of a complainant's mark “may be sufficient to establish confusing similarity” (emphasis added). It may be sufficient where the generic term is evocative of the nature of the complainant's business. See e.g. Edmunds.com, Inc. v. Web Advertising, Corp./Keyword Marketing, Inc., WIPO Case No. D2006-1380. But for domains 93-102, as noted already, the generic terms are not so evocative.

In a somewhat comparable case to the issues raised by domain names 93-103, involving a 3-member Panel (including this Panelist), the Panel found, with “some hesitation”, that the domain name <seekbusiness.com.au> was confusingly similar to the Complainant's mark for SEEK; Seek Limited v. Arazac Nominees Pty Ltd., WIPO Case No. DAU2006-0010. That was because the then-panel found a risk that Internet users might see the term to be a subset of the then-complainant's mark. Notably, the complainant in that case had registered a number of marks combining generic terms, such as “Seek Education” and “Seek Finance”. There is no comparable evidence of similar trademark registrations in this case. Neither does it appear to the Panel that, when these disputed domain names and the Complainant's marks are compared objectively, Internet users would be likely to see the “non-berry” term as being a subset of the Complainant's mark.

An exception is disputed domain name 99. This domain combines the Complainant's BERRY mark with the term “nextel”. That term clearly relates to phones – the products of the Complainant. The addition of that term therefore suggests some connection with the Complainant's marks and products. As such, there is likely potential for Internet user confusion.

Fourthly, there are the disputed domain names 104 – 107. They combine the Complainant's BERRY mark with the surname “Obama”. In this connection, the Complainant points to relatively recent media reports relating to United States President Barack Obama's desire to retain his Blackberry device after being inaugurated. That episode was widely reported. The addition of the surname “Obama” is, as such, suggestive of that episode and therefore of the Complainant's BLACKBERRY mark. For this reason, the Panel finds that these domains are confusingly similar to the Complainant's BLACKBERRY mark.

Fifthly, disputed domain names 108 and 109 do not include the Complainant's BLACKBERRY mark as a whole. The Complainant suggests that domain name 108, <blackberrito.com>, is phonetically and visually, nearly identical to its BLACKBERRY mark. The Panel understands that “ito” is a diminutive often used in Spanish to connote “little”. In Spanish (or ‘Spanglish'), for example, a slang way of saying “little black berry” might be “blackberrito”. As such, in Spanish, the disputed domain name creates a potentially confusing association with the Complainant's BLACKBERRY mark, and the Panel finds that it is confusingly similar to that mark.

Disputed domain name 109, <blackjackberry.com>, divides the components of the Complainant's mark, and also creates a reference to the card game blackjack. But the insertion of the word “jack”, while it might create a combination with the word “black”, has no apparently relationship with the word “berry”. In that combination the term “berry” can only relate to the term “black”. As such, the overall impression remains one of similarity with the Complainant's BLACKBERRY mark. For this reason, and for somewhat similar reasons to those set out in relation to domains 1 – 90, the Panel finds that it is confusingly similar.

Finally, disputed domain names 110 – 111 do not include the Complainant's BLACKBERRY mark entirely. The Panel also considers that the Complainant's BERRY mark is not sufficiently distinctive in this combination to create confusing similarity, for similar reasons to those set out for domain names 93 – 102. It is also difficult to treat “back” as a mere misspelling of “black”. “Back” has its own separate meaning, and it is correctly spelled as such. Even so, the term “berry” is otherwise a meaningless addition to the phrase “nevergoback”. The term “backberry” is also visually and phonetically similar to the Complainant's BLACKBERRY mark. For these reasons, the Panel finds that these disputed domain names are confusingly similar with the Complainant's BLACKBERRY mark.

For these reasons, the Panel finds that disputed domain names 1 – 92, 99, 104 – 111 are confusingly similar to the Complainant's BLACKBERRY marks. The following discussion is therefore in relation to those marks.

B. Rights or Legitimate Interests

The Respondent gives no pursuasive evidence of having any rights or legitimate interests in the disputed domain names. In relation to this ground, the Response consists of two sentences, asserting that the Respondent is making a bona fide offering of goods or services. Elsewhere, the Respondent appears to suggest that he is a reseller of the Complainant's products.

The approach to whether a reseller has a right or legitimate interest in a domain name incorporating a complainant's mark is well settled. As noted at 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions:

Majority view: A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant's relationship with the trademark owner. […]”.

The Respondent gave no evidence of these requirements. From evidence in the Complaint, it appears that most of websites to which the disputed domain names refer offer goods of the Complainant's competitors. None of them disclose any relationship with the Complainant. As to whether there is an “actual” offering, the Respondent provides no evidence. The majority of the Respondent's websites (most of which appear to redirect to a site at “www.cusaver.com”) appear to offer mobile phones and related phone plans for sale. Of the disputed domain names which the Panel finds are confusingly similar, all of them other than 20, 36, 43, 46, 52, 64, 71, 75, 77, 86, 88, 99, and 104-107, refer to essentially the same website. The other domains all refer to portal or “pay-per-click” websites. For example, <blackberryxg.com> refers to a website containing a variety of links, some relating to the Complainant. At the time of writing this decision, this site included links titled, e.g., “Rim Blackberry Thunder”, “Mobile Email HA”, and “DBViewer for BlackBerry”.

The websites which make apparent offerings are not supported by evidence confirming their legitimacy. Usually, this Panel would be prepared to find that a website is what it says. But here, the content of those websites puts some doubt in the Panel's mind. For example, at the date of this decision and as evidenced in the Complaint, those websites refer to a “Credit Union Member Discount Program!”. Nothing else on the website however relates to a credit union. The only operative element of those websites appear to be links to “Phones” and “Plans”, via which corresponding products are offered. The links on the “Coverage Map” on the websites seem inoperative. While the featured map purports to show locations across the United States, the only physical addresses identified are in the Virgin Islands.

For the “pay-per-click” websites, the evidence in this case (discussed further below in relation to bad faith) clearly suggests that the Respondent selected the disputed domain names because of their association with the Complainant's BLACKBERRY products. This suggests that, and as the Complainant contends, the Respondent registered the disputed domain names hoping to attract Internet users that might be looking for the Complainant. The fact that links on the “pay-per-click” websites appear to refer to the Complainant's products, or associated goods, supports this finding. Where the links on a portal website are based on the trademark value of the domain name, rather than any descriptive value, the trend in decisions under the Policy is to recognize that such practices generally constitute abusive cybersquatting. (See, mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Ranbaxy Laboratories Ltd v. Jucco Holdings, WIPO Case No. D2007-1562 and the cases cited therein.) It is obvious that such a practice cannot form the basis for a right or legitimate interest.

For these reasons, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

The overall pattern of registrations in this case gives rise to a clear inference that the Respondent registered the disputed domain names to trade on the value of the Complainant's trademarks. As noted above, the Complainant's BLACKBERRY mark is distinctive and famous. The Respondent's websites all contain references to the Complainant's products or the products of its competitors. In these circumstances, it is inconceivable that the Respondent was unaware of the Complainant's mark when he registered and then used the disputed domain names. The Panel has no doubt that the Respondent did so with an intent to exploit the value of the Complainant's marks.

Paragraph 4(b) of the Policy sets out four illustrative circumstances of bad faith. It is sufficient for the Complainant to establish one of them. In this case, the registration of such a large number of domain names referable to the Complainant's marks, clearly establishes a pattern of bad faith conduct for the purpose of paragraph 4(b)(ii) of the Policy.

Having found bad faith of the kind mentioned in paragraph 4(b)(ii) of the Policy, it is not necessary for the Panel to make further findings. The Respondent gave some attention in its response to alleged inaccurate statements in the Complaint regarding an offer for sale of one of the disputed domain names. The Complainant did not provide direct evidence of that offer. As such, and because it is otherwise not necessary to do so, the Panel did not consider it further.

For these reasons, the Panel finds that the Complainant has established that the Respondent registered and used the disputed domain names in bad faith.

D. Reverse Domain Name Hijacking

The Respondent seeks a finding of reverse domain name hijacking against the Complainant. Such a request inevitably fails here, in large measure because of the Panel's findings above.

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 following domain names be transferred to the Complainant:

<alwaysbetonblackberry.com>

<alwaysblackberry.com>

<babablackberry.com>

<backinblackberry.com>

<bolderblackberry.com>

<betonblackberry.com>

<intheblackberry.com>

<basicblackberry.com>

<blackberryandcoke.com>

<blackberryandroll.com>

<blackberrybeauties.com>

<blackberrybeauty.com>

<blackberrybootcamp.com>

<blackberrycardreader.com>

<blackberrychic.com>

<blackberrycouture.com>

<blackberrycreditcardswipe.com>

<blackberrydad.com>

<blackberrydads.com>

<blackberrydiscount.com>

<blackberrydog.com>

<blackberrydummy.com>

<blackberryfighter.com>

<blackberrygreen.com>

<blackberryinside.com>

<blackberryisbeautiful.com>

<blackberryisthenewgreen.com>

<blackberrykid.com>

<blackberrykids.com>

<blackberrylabel.com>

<blackberrymind.com>

<blackberrymoms.com>

<blackberryonice.com>

<blackberryphd.com>

<blackberryplatinum.com>

<blackberrypreorder.com>

<blackberryrising.com>

<blackberryshot.com>

<blackberryshots.com>

<blackberrystory.com>

<blackberryswipe.com>

<blackberrytimes.com>

<blackberryup.com>

<blackberryvogue.com>

<blackberrywoman.com>

<blackberryxg.com>

<busyblackberry.com>

<byblackberry.com>

<bzberry.com>

<bzblackberry.com>

<conblackberry.com>

<newidenblackberry.com>

<doyoublackberry.com>

<drinkblackberry.com>

<elblackberry.com>

<ezblackberry.com>

<foreverblackberry.com>

<fullcontactblackberry.com>

<happyblackberry.com>

<hechoenblackberry.com>

<hookedonblackberry.com>

<howdoyoublackberry.com>

<iamblackberry.com>

<idenblackberry.com>

<inablackberry.com>

<insideblackberry.com>

<isblackberry.com>

<jackblackberry.com>

<johnnywalkerblackberry.com>

<madeinblackberry.com>

<magicblackberry.com>

<mattblackberry.com>

<matteblackberry.com>

<meninblackberry.com>

<newnextelblackberry.com>

<professorblackberry.com>

<nextelblackberrydeals.com>

<nowblackberry.com>

<onceblackberry.com>

<onceyougoblackberryyouwillnevergobackberry.com>

<onceyouvehadblackberryyoullnevergobackberry.com>

<platinumblackberry.com>

<powerblackberry.com>

<poweredbyblackberry.com>

<smarterblackberry.com>

<sprintblackberrydeals.com>

<superblackberry.com>

<4gblackberry.com>

<whatisblackberry.com>

<withblackberry.com>

<blackberriesonblondes.com>

<hookedonblackberries.com>

<obamaberry.com>

<obamaberry.info>

<obamaberry.net>

<obamaberry.org>

<neverbackberry.com>

<nevergobackberry.com>

<blackjackberry.com>

<nextelberry.com>

<blackberrito.com>

The Complaint is denied in relation to the following disputed domain names:

<berrymom.com>

<berrynegro.com>

<berrydelsol.com>

<hisberry.com>

<iqberry.com>

<mommyberry.com>

<berryverde.com>

<sheberry.com>

<verdeberry.com>

<copberry.com>

James A. Barker
Sole Panelist

Dated: April 27, 2009