FRIDAY, 15 MAY 2009
"unofficialblackberrystore.com" does not quite work
WIPO’s decision in domain name Case No. D2009-0227 (Research in Motion Limited v. One Star Global LLC) includes a surprisingly detailed analysis on a number of issues lying at the crossroads of trademark protection in the domain name empire and sole panelist Matthew Harris deserves the credit for this. The case is not very complex - The owner of the “blackberry” trademarks as well as of domain names consisting of or incorporating “blackberry” lodged a complaint against a trader of apparently genuine blackberry products who registered and used the domain name “unofficialblackberrystore.com”.
The Complaint was filed on February 20, 2009, less than a month after the domain name was registered. Apparently they were on the look-out since the respondent had previously registered (and lost to the complainant - decision here) the domain name “blackberrystore.com”. The “unofficialblackberrystore.com” website included prominent notices of non-affiliation and non-association with the complainant such as“Welcome to The Unofficial BlackBerry Store .com! We Absolutely Have No Relationship With Research In Motion!! Hell We Don’t Even Like ‘Em. That being said and despite their Numerous Lawsuits for Patent Infringement, they do make a good product....”
“Use of any trademark term or image on this site is used solely in “Good Faith” under “Fair Use Provisions” and for comparison purposes as held by The United States Supreme Court in : KP Permanent Make-Up, Inc. v. Lasting Impression, Inc., No. 03‑409, 2004 U.S. Lexis 8170 (December 8, 2004). Use of any registered trademarked term in the name of, or the content of this web site is used for SEO (search engine optimization) AND COMPARISON PURPOSES ONLY. SUCH USE OF SAID TRADE MARK OR TRADE NAME SHOULD NOT BE CONSTRUED AS APPROVAL OF SAID MARKS OWNER OF THE CONTENT OR BUSINESS PRACTICES OF THIS SITE”.
The complaint’s basis is not hard to imagine. The Complainant argued that the domain name in question is confusingly similar to its BLACKBERRY marks and that the use of the word “unofficial” in the Domain Name does not dispel such confusing similarity (citing the United States decision of Ty, Inc. v West Highland Publishing, Inc. and Highview Recording, LLC 1998 WL 698922 (N.D. Ill. 1998). Further, that the disputed domain name leads to web site that is merely a modified version of the website in the 'blackberrystore.com' case, thus there is a continuing bad faith pattern of registrations by the Respondent to attract for commercial gain Interent users to its website by creating a likelihood of confusion with the BLACKBERRY mark.
The sole panelist accepted the complaint, employing a detailed rationale. According to the decision:
6.5 The Panel accepts the Complainant’s contention that the use of term “unofficial” does not prevent the Domain Name from being confusingly similar to the Complainant’s BLACKBERRY mark.
6.6 It is necessary to recognise that the term of confusing similarity is a low threshold test the purpose of which is effectively to assess whether a complainant has sufficient rights so as to give it standing to bring a complaint (see, for example, Aubert International SAS and Aubert France SA v. Tucows.com Co., WIPO Case No. D2008‑1986). It involves a simple comparison of the mark relied upon with the domain name in issue. The geographical location of that mark is not important and normally neither is the degree of fame or reputation that a registered mark has achieved. Similarly, reference to local case law on confusing similarity or likelihood of confusion, is also unlikely to be that helpful.
6.7 It is against this “standing” requirement that the word “confusing” is to be understood. So for example, even in cases where the domain name in issue takes the form of a trade mark combined with the pejorative term such as “sucks”, there is still likely to be confusing similarity (see for example, Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008‑0647). There are cases where a domain name combining the term “sucks” with a mark has not been held to be confusingly similar to that mark where the domain name has been used for a criticism site (see the case listed in The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO Case No. D2003‑0166), but the Panel would suggest that the real rationale of those cases may rather be found in an assessment of whether the operation of a criticism site from such a domain name provides rights or legitimate interests and/or is in bad faith.6.8 This low threshold approach in cases where the pejorative or the alleged distinguishing term is incorporated in a Domain Name is sometimes said to be justified by the fact that the domain name might be seen by persons who are not familiar with the language from which the additional word is taken. It is claimed that such persons will be confused by the mark element of the domain name and that this confusion will not be dispelled by the additional word or words in the domain name. There may be some force in this argument, but regardless of its exact justification, the advantages of the low threshold approach are clear. Take for example, a company that registers the domain name <[name of competitor]sucks.com> for a website that does nothing more than sell its own goods. In the opinion of this Panel the question of whether or not such use should be allowed is best addressed in the context of an assessment of rights or legitimate interests and bad faith. To interpret paragraph 4(a)(i) as setting a low threshold test permits this to happen.
6.9 It is also an approach that means that in most cases where a domain name incorporates the entirety of a trade mark, then the domain name will for the purposes of the Policy be confusingly similar to the mark. The Complainant has cited a number of cases that are said to support that proposition. However, this Panel would prefer not to endorse this as a hard and fast rule. Are the domain names
Moving on to bad faith issues:...........................
6.12 The facts in this case are relatively clear. The Respondent is using a domain name that incorporates the Complainant’s BLACKBERRY mark predominantly to sell genuine Blackberry products and accessories but is also to fair degree promoting both competing and unrelated goods and services.
6.13 ..............., in the Panel’s view the outcome to this case depends upon the answer to a single question. That is, to what extent under the Policy can an entity that resells the genuine trade-marked goods of another register and use a domain name that incorporates an unauthorised use of such mark for that purpose. In such case the questions of rights and legitimate interests and bad faith will usually be just the opposite sides of the same coin. If the registrant is found to have a legitimate interest in the use of a domain name for such purpose, then it is not likely to have registered the domain name in bad faith. The converse is also the case.
6.14 This question is addressed in some detail in paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Overview”). It is worth setting this out in full:“Can a reseller have a right or a legitimate interest in the disputed domain name?
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 must also not try to corner the market in domain names that reflect the trademark.
Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903, Denied; Experian Information Solutions, Inc. v. Credit Research, Inc. WIPO Case No. D2002-0095 among others, Transfer
Minority view: Without the express permission of the trademark holder the right to resell the trademark holder’s products does not create a right to use the trademark as the basis for a domain name.
Motorola, Inc. v. NewGate Internet, Inc. WIPO Case No. D2000‑0079, Transfer with Dissenting Opinion
6.15 The WIPO Overview is now nearly 5 years old. As a consequence the argument has moved on somewhat from that set down in the Overview. For example, one of the issues that has been explored in greater detail in a number of more recent cases is whether a distinction should be drawn between cases where the domain name is being used by an authorised distributor and when it is being used by someone who has no contractual arrangement with the trade mark owner.....
6.16 However, it seems to be the case that the predominant view amongst panelists is now that the Oki Data criteria are capable of applying regardless of whether or not a respondent is an authorised distributor. Examples include, Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005‑0447; Daimler AG v. William Wood, WIPO Case No. D2008‑1712; IVECO S.p.A. v. Zeppelin Trading Company Limited, WIPO Case No. D2008‑1725; ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc., WIPO Case No. D2008‑0936; and Magma Products Inc. v. Herb Halling, WIPO Case No. D2007‑0995. In this Panel’s view this must be right. It is difficult to see why an official distributor who is not bound by any contractual provision as to the registration of domain names incorporating a mark should be treated any differently from an unauthorised distributor who engages in the same activity.
6.18 This Panel believes that in a case where the domain name used by a distributor is essentially identical to a trade mark (or a domain name that incorporates a trade mark without some distinguishing feature) then it is strongly arguable that there are no rights or legitimate interests (and there is also bad faith) even if the Oki Data requirements might be satisfied.
6.22 Therefore, in the opinion of the Panel the rules recorded as the majority position in the WIPO Overview and first set down in the case of Oki Data Americas, Inc., supra, still apply. Of these the two most significant are: (a) that the site operating from the disputed domain name must sell only goods bearing the trade mark; and (b) the site accurately disclosing the registrant’s relationship with the trade mark owner.
............... Whilst it seems clear that predominantly Blackberry products that have been advertised and offered for sale on the website, it is also clear that to a significant degree the Domain Name has been used for other purposes. There are, for example, references to Motorola RAZR Phones. There would also appear to be links to non-mobile phone and smart phone related products and services that are as diverse as satellite television products, information about electricity prices and cash transfer services.
6.26 The Panel also questions whether the requirement that the Respondent fully disclose its relationship with the trade mark owner has been satisfied in this case. The Respondent’s website contains a clear and prominent disclaimer. However, as this Panel held in Sanofi-aventis v. M72 Hosting, WIPO Case No. D2007‑1937, it is arguable that even where there is a disclaimer there is insufficient disclosure unless the respondent also positively identifies who it is. As far as the Panel can tell, the identity of the Respondent is not disclosed anywhere on the site. Nevertheless, it is unnecessary to, and the Panel declines to, decide the case on this basis.
6.27 In the circumstances the Complainant has made out the requirements of paragraph 4(a)(ii) and (iii) of the Policy [i.e. proved bad faith].
6.28 A comparison with the facts of, and the approach adopted in, Research in Motion Limited v. One Star Global v. One Star Global, supra, is in the opinion of the Panel also instructive. The Panel accepts that the timing of the registration of the Domain Name was not coincidental and that the Respondent wanted to continue and has continued its old activities under a new domain name that differed from its previous domain name solely by the addition of the word “unofficial”.
6.29 The Complainant contends that the “overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another” (citing Match.com LP, supra). The Panel accepts that this is generally correct, although this choice of wording is in danger of overstating things somewhat.
6.30 Anyone who sells genuine products that bear the trade mark of another is to some degree or other seeking to profit from and/or exploit another’s trade mark. In this Panel’s view, that activity is not from the point of view of the Policy per se abusive. However, there is likely to be abusive use where the mark is used in a domain name so as to either, firstly, impersonate the trade mark owner (so as to benefit from initial interest confusion created by the domain name itself) or, secondly, promote the sale of competing or unrelated products. It is these sorts of unfair exploitation of another’s trade mark that are precluded by the Policy.
6.31 It would appear that the panel in Research in Motion Limited v. One Star Global, supra, held that the Respondent had, in that case, essentially engaged in both sorts of abuse. In this case, the Respondent by reason of its adoption of this particular Domain Name may have succeeded in avoiding the first abuse, but has evidently persisted in the second. As a consequence the current case has also been decided in the Complainant’s favour.
It is always good to read a WIPO panel decision with clear and detailed reasoning, particularly if it is also sound. Blackberry and blackberries here. Blackberry sounds a lot like Black Betty too.
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