Nominet UK Dispute Resolution Service

 
NOMINET UK DISPUTE RESOLUTION SERVICE DRS 3960

Research in Motion Limited v Ms Michelle Field

Decision of Independent Expert

1. Parties:

Complainant: Research in Motion Limited

Country: CA

Respondent: Ms Michelle Field

Email: sales@blackberryworld.co.uk

Disputed Domain Names

blackberryworld.co.uk ("the Domain Name")

2. Procedural Background:

The Complaint, Response and Reply were lodged with Nominet in full on 31 August, 20 September and 28 September 2006 respectively. On 25 October 2006 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy").

Cerryg Jones, the undersigned, ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.

3. Outstanding Formal/Procedural Issues (if any):

There are no other outstanding procedural issues that arise.

4. Background and the Complainant's Contentions:

The Complainant is Research in Motion Limited (RIM), the well known provider of wireless email, phone, SMS messaging and internet and intranet based applications supplied under the Blackberry trade mark. The Respondent's business sells accessories for Blackberry devices, and markets itself as the "UK's leading supplier of Blackberry Accessories & Training." The Domain Name resolves to the website www.blackberryworld.co.uk which the Respondent says was launched in October 2004. The Respondent also appears to have set up a Limited Liability Partnership known as Blackberry World LLP, though this was dissolved in 2006.

Correspondence between the parties' solicitors, which began in October 2005, failed to resolve the dispute over the Domain Name and use of the trade mark Blackberry. In substance, the Complainant alleged in correspondence that the Respondent's registration and use of the Domain Name constituted registered trade mark infringement and passing off.

The Complainant has exhibited a substantial amount of evidence in respect of its contention that the Domain Name is similar to its registered and unregistered rights in the mark Blackberry. So far as the rest of the Complaint is concerned, the Complainant alleges that the Domain Name in the hands of the Respondent is abusive because:

(a) It is submitted that the Respondent uses the website for the purpose of unfairly disrupting the business of the Complainant and has tarnished the Blackberry trade mark. In that respect, The Complainant refers to the fact that there is no disclaimer to indicate that the site is not approved, endorsed or otherwise connected to the Complainant.

(b) The Respondent allegedly registered the Domain Name fully cognisant of the Complainant's rights. The only reason the Respondent incorporated the trade mark Blackberry as the dominant element of the Domain Name was, it is alleged, to attract consumers and to sell products by virtue of the misleading association with the Complainant's mark. The Complainant says that the Respondent is using the website to unfairly disrupt the business of the Complainant by creating a likelihood of confusion with the Complainant's registered trade mark Blackberry.

(c) In relation at least one product sold by the Respondent, a case made by Krusell, the Complainant claims that it has received correspondence indicating that it is not in fact compatible with Blackberry devices and can damage them.

(d) The Complainant alleges that Blackberry World has misrepresented itself to retailers as an authorised Blackberry supplier and has run unauthorised Blackberry training courses, including one for GE Capital.

(e) The Complainant refers to the fact that the Respondent approached the President of Vodafone in Spain, a service provider partner to the Complainant, to obtain sponsorship for promoting Vodafone Blackberry at the Momentum 2006 Exhibition held in Barcelona at which Blackberry World would be running a two day 'Blackberry Surgery,' training event. The Complainant alleges that these activities indicate the Domain Name is being used for activities which take unfair advantage of, and are detrimental to, the Complainant's business.

(f) The Complainant alleges that the Respondent has failed to disclose the nature of the Respondent's relationship with the Complainant when offering goods and services. It is said that Vodafone Spain referred an email from the Respondent to the Complainant's UK company for clarification of the Respondent's relationship to the Complainant. (The email from the Respondent to Vodaphone Spain is exhibited to the evidence but not Vodaphone's email to the Complainant). The Complainant alleges that Vodafone wanted to establish whether the Respondent was affiliated or authorised by the Complainant to promote its products and provide the services reflected in the customer testimonials attached to that email. Vodaphone's alleged confusion is said to arise from the Respondent's failure to identify itself as being unconnected with Complainant.

(g) That the Respondent was aware of the significance of the Blackberry trade mark and recognised it was competing with the Complainant's website at www.shopblackberry.com which offers Blackberry accessories. In addition to the alleged evidence of confusion in respect of Vodaphone, the Complainant also exhibited to the Complaint a general letter from the Respondent to customers offering a list of Blackberry accessories. That letter is said to constitute evidence of the Respondent's failure to clarify the Respondent's independence from the Complainant, and that the Respondent has contacted entities implicitly indicating a relationship to the Complainant.

(h) The use of the mark Blackberry in the Domain Name is alleged to create a confusion of connection with the Complainant, and is said to confer an unfair advantage on the Respondent and to be detrimental to the Complainant's business, on the basis of the reasoning set out in the Appeal Panel in Seiko v Wanderweb.

(i) On the basis of the reasoning set out in British Telecommunications plc v One in a Million Ltd [1999] ETMR 61, the Complainant submits that the Respondent has intentionally attempted to attract, for the purpose of unfairly disrupting the business of the Complainant, internet users to the website www.blackberryworld.co.uk by creating a likelihood of confusion with the Complainant's Blackberry trade mark.

(j) The Complainant alleges that the choice of the Domain Name was not necessary given the nature of the Respondent's business. In support of this allegation, the Complainant has exhibited to the Complaint the results of a Google search made on 23 August 2006 for 'blackberry accessories', which lists the top 10 hits of websites offering such accessories. Of these, the Complaint submits that only the Respondent and one other business (blackberrysource.com) incorporate the Complainant's Blackberry trade mark in their domain name; the Complainant says that blackberrysource.com has obtained the Complainant's authorisation. It is alleged that the Respondent could legitimately use Blackberry in a meta-tag to attract traffic to a website and that there is no justification to use the Complainant's trade mark in the Domain Name.

(k) The Respondent is not licensed or authorised by the Complainant in any way. The Respondent is alleged to have pre-empted the Complainant's right to the exclusive use of Blackberry. It is alleged that if the Respondent's actions were approved it would open the floodgates to registrations of slight variations incorporating well known marks.

(l) The Complaint also contends that the right to resell or market a product does not create the right to use a trade mark more extensively than required to advertise and sell the product. The Complainant alleges that this does not extend to a right to incorporate a well known mark in a domain name.

(m) The Complainant submits that the use of the mark Blackberry in the Domain Name goes further than required to resell products claimed to be accessories for Blackberry devices, particularly where certain products are alleged to be not authorised or produced by the Complainant and where it is alleged that they may damage the Complainant's Blackberry devices.

(n) The Complainant also contends that if the Respondent began with good intentions, subsequent actions can lead to a finding they have fallen foul of DRS Policy if the effect of such actions is to give rise to confusion and to disrupt a Complainant's business.

(o) It is also alleged that the Respondent cannot claim fair use of the Domain Name because the Respondent's business competes with the Complainant's own business in the supply of Blackberry accessories. Further, it is claimed that the Respondent cannot demonstrate rights or legitimate interests to the Domain Name by virtue of being a reseller of the Complainant's products.

5. The Respondent's submissions in Response

The Respondent makes the following submissions in response:

(a) The Respondent has never claimed any formal association with the Complainant.

(b) The Respondent has used every endeavour to secure an amicable solution with the Complainant.

(c) The Respondent was first to market in the UK with its accessories' offering and has built up a strong and loyal customer base on the strength of its customer service, without ever having attempted to exploit the Complainant's market position.

(d) The Complainant permits third party websites to use the mark Blackberry in its trading names.

(e) The Respondent wishes to become an authorised site for supply of authentic Blackberry accessories.

(f) The Respondent launched its website in October 2004, focusing exclusively on Blackberry accessories. At that time, the Respondent claims that UK Blackberry users found it difficult to source accessories for their devices.

(g) Five months following the launch of the Respondent's business, the Complainant set up its own US-based website offering accessories globally known as Shopblackberry.

(h) Third parties use the name Blackberry in their trading names, whether authorised or not, to supply accessories for Blackberry devices.

(i) The Respondent's use of the Domain Name has only become problematic so far as the Complainant is concerned as a result of it setting up its US website Shop blackberry.

(j) To the best of the Respondent's knowledge, her business is the only global business that offers exclusively core accessories which are manufactured by the Complainant, in contrast to other websites, including Blackberry Source. The Respondent claims that the only other accessories that it sells are those designed specifically for Blackberry devices and with the approval of the Complainant. The Respondent claims that the reason for her choice of business name (and hence Domain Name) is to underline the authenticity of its product range and its focus and expertise on Blackberry devices.

(k) The Respondent is a small company which set up a business in good faith to supply a specific need in the marketplace. That need is said to be recognised and appreciated by its customer-base.

(l) The Respondent uses the website for the sole purpose of retailing accessories for Blackberry devices and that there is no evidence that this tarnishes the Blackberry trade mark. The Respondent refers to the many testimonials it has received from its customers.

(m) The Respondent denies that it has disrupted the Complainant's business. The Respondent says that her business does not compete with Shopblackberry but is complementary to that business. The Respondent says her business targets high-spending time-poor business users, offering a next-day delivery service, even same-day courier service within Greater London, with a local call number for ordering and support purposes.

(n) The Respondent admits that her website does not claim to be approved or endorsed by the Complainant but she says that that other websites which offer Blackberry accessories do not contain a disclaimer either. However the Respondent says she will include a notice to the effect that her site is independent if required.

(o) The Domain Name was not registered with the knowledge of the Complainant's alleged rights. Prior to registration, the Respondent claims that her research revealed that a number of businesses used "Blackberry" in their trading name (Blackberrystuff, Blackberrysource, Blackberrycommunity, The Blackberry people, Blackberrytools and BlackBerry Cool) without any reference to any rights of the Complainant, or any disclaimer. In these circumstances the Respondent says that she concluded that there was no need to include any disclaimer. The Respondent submits that she carried out appropriate due diligence prior to launching her site and that she has acted in good faith.

(p) The Respondent alleges that she was not aware of the Complainant's registered trade mark rights. Even if she had been, the Respondent says that she would probably not, in the light of her research, have concluded that these rights prevented the establishment of a site selling Blackberry accessories called "Blackberry World". The Respondent claims that the mark Blackberry is used by consumers as a noun and likewise its use in Blackberry World is merely descriptive of the accessories on offer.

(q) So far as the alleged defective Krusell goods are concerned, the Respondent claims that the email exchange exhibited to the evidence was between an individual and a competitor of the Respondent's, (Mobilefun). The Respondent contends that the correspondence have no connection with her, and that the Respondent has never retailed this product.

6. Complainant's Reply

The Complainant submits as follows in Reply:

(a) The Complainant's Shopblackberry website was launched in February 2005. That website is identified as being both "official" and emanating from the Complainant (as appears from the copyright notice).

(b) The Respondent's business does compete with the Complainant's Shopblackberry business. The Complainant denies that its Shopblackberry business was the reason for objecting to the Respondent's business. The Complainant says it first became aware of the Respondent following a telephone call made by the Respondent to the Complainant in or around March 2005. The Complainant contends that the purpose of this Complaint is not to stifle legitimate competition but is to prevent unauthorised use in the Domain Name of its trade mark by an entity which is unfairly disrupting the Complainant's business.

(c) The Respondent's due diligence prior to registering the Domain Name did not (by her own admission) include a trade mark search. The Complainant alleges that in consequence the Respondent's due diligence was inadequate. It is said that by the time the Domain Name was registered in July 2004 the mark Blackberry had already become famous.

(d) The Complainant says that the Respondent's activities cannot be justified with reference to the unauthorised activities of other parties offering Blackberry products. As to the businesses identified by the Respondent which use Blackberry as a part of their trading name prior to registration of the Domain Name, the Complainant says that it has been unable to locate one of these (The BlackBerry People); as to Blackberrysource, the Complainant alleges that this was created in March 2004 and has been authorised by the Complainant; as to the remainder, none are authorised and the Complainant says that it is currently considering taking appropriate action. Of those four businesses, the Complainant claims that three were created after registration of the Domain Name, namely Blackberrycool [January 3, 2005]; Blackberrytools [April 28, 2005]; and Blackberrycommunity [April 18, 2006].

(e) The Complainant says that the Domain Name is not merely descriptive of the accessories on offer and that BlackBerry World offers products not made or approved by the Complainant. As to the Respondent's denial that she has ever retailed the pouch holster made by Krussell, this is said to be inconsistent with the Respondent's letter (which has been exhibited to the Complaint) to potential customers dated March 1, 2005 and her product guide which specifically illustrates this item under product codes KLP62 and KLP72.

(f) The Complainant says that the Respondent is not authorised by it to run training courses. As to whether parties are likely to believe that the Respondent's training courses are connected with the Complainant, it is alleged that whatever the Respondent's intention may have been, Vodafone Spain referred her email to the Complainant's UK office to enquire whether Blackberry World was connected with the Complainant. Upon discovering that there was no connection, the Complainant alleges that Vodafone Spain declined the Respondent's proposal.

(g) The Complainant alleges that the Respondent's evidence of redacted customer testimonials fail to indicate whether the senders of those emails believed that the Respondent was authorised, or otherwise connected with the Complainant. However, the Complainant says that the available evidence is that a dissatisfied purchaser of a Krussell pouch holster referred the damage the holster caused to his Blackberry product to the Complainant and that its own customer, Vodafone Spain, asked for clarification as to whether the Respondent's business was associated with the Complainant. The Complainant submits that this is adequate evidence of an abusive registration.

7. Discussion and findings

The Complainant has produced ample evidence of its rights to the trade mark Blackberry. Plainly this trade mark is similar to the Domain Name given the incorporation of the Blackberry trade mark, which is by far the most dominant and distinctive aspect of the Domain Name, the word "world" in that context having minimal distinctive character.

The Complainant also has to show that the domain name is an abusive registration. Paragraph 1 of the Policy defines this as a domain name which either:

i. was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR

ii. has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."

A non-exhaustive list of factors, which may be evidence of an abusive registration, are set out in paragraph 3a of the Policy. However, these are only examples of conduct, which may be evidence that a domain name is an abusive registration.

At the heart of this Complaint is the extent to which it is permissible for a retailer, who supplies accessories and related services in respect of another party's goods, to register and use a domain name whose dominant and distinctive element is the trade mark of that other party. In the Seiko v Wanderweb case (DRS 248), concerning the domain names Seiko-shop.co.uk and spoonwatchshop.co.uk, the Appeal Panel refused to lay down any general rules governing when a third party can make legitimate use of the trade mark of a third party as a domain name. This was on the basis that there were too many different factual circumstances which could arise where a third party might legitimately wish to use another party's trade mark. However the Appeal Panel concluded that if there was evidence that the domain name makes, or is liable to be perceived as making the representation that there is something approved or official about the website, this would constitute unfair advantage or unfair detriment under the terms of the DRS. The Appeal Panel also took the view in that case that the domain names constituted an appropriation of Seiko's trade marks and likened it to the arrogation of the trading style of a principal by a mere agent.

Here the Complainant says that the email exhibited by the Complainant from the Respondent to Vodaphone Spain is evidence of confusion. However, what has not been exhibited is the email from Vodaphone Spain to the Complainant and so I do not believe on its own this evidence supports the Complainant's assertions.

Nor do I believe the evidence exhibited to the Complaint establishes that the Respondent knew she was acting otherwise than in accordance with acceptable business practices.

The manner in which some third parties are alleged by the Respondent to use the name Blackberry in their trading names, whether authorised or not, to supply accessories for Blackberry devices is not relevant to the question of whether the Domain Name in the hands of the Respondent is an abusive registration. While third party use of the Blackberry trade mark might constitute a reason why the Respondent thought her choice of Domain Name was unexceptional, it provides no assistance to the Respondent in this instance.

While it may well be true that at the time of the registration of the Domain Name she did not appreciate what rights were bestowed upon the Complainant by virtue of its registration of the mark "Blackberry," it is clear that the Respondent knew about the Blackberry name and range of products sold under this trade mark at the time she registered the Domain Name.

However, what I find determinative in the present case is that the evidence establishes that the Respondent is not using the Domain Name solely to describe the nature of her business. There is ample evidence in the Complaint that the Respondent uses the sign "Blackberry World" as a trade mark rather than as a descriptor: this is apparent from the way in which "Blackberry World" is used on the website itself, and on the Respondent's business stationary. I do not believe it can fairly be said therefore that the Respondent is using the Domain Name purely to inform the public that she sells accessories for Blackberry devices and related training services. To my mind this is a clear case where the Blackberry trade mark is being used within the Domain Name in such a way that it may create the impression that there is some form of commercial connection between the Respondent and the Complainant. The addition of the word "world" to the trade mark "Blackberry" does not go far enough to differentiate the two businesses and is liable to be perceived as making the representation that there is something approved or official about the website, particularly when viewed in the context of the Respondent's other uses of "Blackberry World".

Accordingly, I find that the Domain Name is an abusive registration on the grounds that it has been used in a manner which has taken unfair advantage of or has been unfairly detrimental to the Complainant's rights in the Blackberry trade mark.

8. Decision:

   In the light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an abusive registration, I direct that it be transferred.

   Cerryg Jones 15 November 2006