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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>
Research in Motion v. Georges Elias Case No. D2009-0218 2 of 13
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.
Research in Motion v. Georges Elias Case No. D2009-0218 4 of 13
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>).
Research in Motion v. Georges Elias Case No. D2009-0218 5 of 13
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:
Research in Motion v. Georges Elias Case No. D2009-0218 6 of 13
(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).
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
Research in Motion v. Georges Elias Case No. D2009-0218 7 of 13
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?
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
Research in Motion v. Georges Elias Case No. D2009-0218 10 of 13
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.
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.
<alwaysbetonblackberry.com> <alwaysblackberry.com>
<babablackberry.com> <backinblackberry.com>
Research in Motion v. Georges Elias Case No. D2009-0218 12 of 13
<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>
Research in Motion v. Georges Elias Case No. D2009-0218 13 of 13
<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>