BlackBerry Limited v. WhoisGuard, Inc.
Claim Number: FA1904001840127
Complainant: BlackBerry Limited of waterloo, Canada.
Complainant Representative:
Complainant Representative: Davis Wright Tremaine of New York, United States of America.
Respondent: WhoisGuard Protected / WhoisGuard, Inc. of Panama Panama, International, PA.
Respondent Representative: «cFirstName» «cMiddle» «cLastName»
REGISTRIES and REGISTRARS
Registries: Aruba PEC S.p.A.
Registrars: NameCheap, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Examiner in this proceeding.
Antonina Pakharenko-Anderson, as Examiner.
Complainant submitted: April 23, 2019
Commencement: April 24, 2019
Default Date: May 9, 2019
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Procedural Findings:
This complaint and findings relate to the single domain < BBM.CLOUD >. No multiple Complainants or Respondents are involved in this proceeding. No domain names are dismissed from this complaint.
Factual Findings:
BlackBerry (Complainant) is a designer, manufacturer and marketer of innovative computer software solutions and telecommunications- related products and services, including its proprietary instant messenger and videotelephony application marketed, distributed and sold under the trademark BBM (the “BBM Mark”). BlackBerry has used the BBM Mark since as early as 2013 and there are currently over 190 million users of the BBM application worldwide. The BBM Mark, an incontestable registration mark in the US, is the subject of numerous valid and subsisting registrations in over 33 countries, including China, which is duly confirmed by the relevant evidence.
Respondent registered < BBM.CLOUD > on March 10, 2019 and expressly uses the BBM Mark in combination with the generic top level domain “.cloud.”
Respondent did not provide a response to the complaint in accordance with the URS rules of procedure.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
1. The registered domain name is identical or confusingly similar to a word or mark [URS 1.2.6.1]: for which the Complainant holds a valid national or regional registration and that is in current use.
Respondent registered < BBM.CLOUD > on March 10, 2019 and expressly uses the BBM Mark in combination with the generic top level domain “.cloud.”
The Examiner finds that the domain name < BBM.CLOUD > fully incorporates the Complainant’s BBM Mark.
The addition of the generic toplevel domain “.cloud” is irrelevant in determining whether <BBM.CLOUD > is confusingly similar to Complainant’s BBM Mark. Research in Motion Limited v. Banay, WIPO Case No. D20090151 (Mar. 20, 2009).
The Examiner finds that the domain name < BBM.CLOUD > is identical to the Complainant’s BBM Mark under URS 1.2.6.1. (i).
2. Registrant has no legitimate right or interest to the domain name [URS 1.2.6.2]
To the best of the Complainant’s knowledge, there is no relationship between Complainant and Respondent that would give rise to license or authorization by which Respondent could own or use the BBM Mark.
Because BlackBerry makes a prima facie showing of its rights in the BBM Mark, Respondent must come forward—and cannot—with evidence demonstrating rights in <BBM.CLOUD >. Croatia Airlines d.d. v. Modern Empire Internet Ltd., D2003-0455 (WIPO Aug. 21, 2003).
The Examiner finds that the Respondent has not established any rights or legitimate interests in the domain name < BBM.CLOUD > under URS 1.2.6.2.
3. The domain name was registered and is being used in bad faith [URS 1.2.6.3]
Respondent’s registration of a domain identical to Complainant’s registered trademark constitutes cybersquatting because it “could only have been intended to confuse the Complainant’s customers in bad faith.” Bombardier Aerospace Corp. d/b/a Flexjet v. Bluebellyfx, Inc., 2001 WL 1701212, at *5 (Aug. 14, 2001). Respondent is intentionally using <BBM.CLOUD > to attract internet users, for commercial gain, by creating a likelihood of confusion with Complainant's marks as to the source of the website, product, and/or service, and does not fall within the category of legitimate noncommercial user.
Thus, factoring that the Complainant’s holds the BBM Mark which is well-known for the public, that no response to the complaint having been filed, the Examiner finds such behavior to evidence Respondent’s bad faith registration and use under URS 1.2.6.3.
FINDING OF ABUSE or MATERIAL FALSEHOOD
The Examiner finds that the complaint was neither abusive nor contained material falsehoods.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration.
<bbm.cloud >
Antonina Pakharenko-Anderson, Examiner
Dated: May 13, 2019
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