Research in Motion Ltd., complainant vs.

Georges Elias, respondent (WIPOD2009-0218):

Facts Complainant Research in Motion (RIM), which manufactures and designs

wireless/mobile telecommunication devices worldwide, owns registered marks for
Blackberry (USA/Canada, registered as early as 2001) and Berry (Hongkong SAR,
registered in 2 February 2007; Taiwan, Province of China, registered in 16
November 2007), filed a complaint against the respondent Georges Elias (who
resides in Los Angeles, Calif., USA), regarding 111 domain names registered with
GoDaddy.com.
The complainant argues that the disputed 111 domain names registered by the
respondent, are confusingly similar to its marks, as the names either contain the
word Blackberry or misspelling thereof (example, blackberrito.com). Moreover, it
argues that the domain names are similar phonetically and visually and that the
term berry is a well-known nickname for its Blackberry device. Lastly, it argues
that the respondent has no legitimate interests or claim in the disputed domain
names, and he registered and used these names in bad faith.
The respondent denies the allegations raised by the complainant that 111 disputed
domain names are confusingly similar or identical to the complainants marks. He
claims that the terms blackberry and berry are common terms, having been
successfully trademarked by others. He also claims that he did not register those
domain names to attract users for commercial gain and that his website is remotely
similar to that of the complainants. Furthermore, he claims that he has legimitate
claims or rights in the said names because he claims to use them in connection to
bona fide offering of goods and services.
Issue (1) W/N the domain names registered by George Elias are confusingly
similar or identical to that of RIMs?
(2) W/N Elias has legitimate rights and in good faith to registered the domain
names?
Legal Provisions Par. 4 of ICANNs Uniform Dispute Resolution Policy states
the grounds when a complainant will be able to commence a domain dispute
resolution proceeding,
(Par. 4a)
i.
ii.

The domain name is identical or confusingly similar to a trademark or service

mark in which the complainant has rights; and
The respondent has no rights or legitimate interests in respect of the domain
name; and

iii.

The respondents domain name has been registered and is being used in bad
faith.
(Par. 4b)

The following circumstances, in particular but without limitation, if found by the

Panel to be present, shall be evidence of the registration and use of a domain name
in bad faith:
(i)

(ii)

(iii)
(iv)

circumstances indicating that the respondent has registered or acquired the

domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to the complainant who is the
owner of the trademark or service mark or to a competitor of that
complainant, for valuable consideration in excess of his/her/its documented
out-of-pocket costs directly related to the domain name; or
the respondent has registered the domain name in order to prevent the owner
of the trademark or service mark from reflecting the mark in a corresponding
domain name, provided that respondent has engaged in a pattern of such
conduct; or
the respondent has registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
by using the domain name, the respondent has intentionally attempted to
attract, for commercial gain, Internet users to his/her/its web site or other online location, by creating a likelihood of confusion with the complainant's
mark as to the source, sponsorship, affiliation, or endorsement of his/her/its
web site or location or of a product or service on his/her/its web site or
location.

Verdict The Panel (through sole panelist James Barker) granted RIMs
complaint, where the 101 domain names were transferred in its favor, mostly
containing the word Blackberry. Those domain names registered by respondent
Elias were confusingly similar to that of complainant RIM.
Meanwhile, the 10 disputed domain names 93-103 which combine BERRY and
generic terms such as mom, his, she, and verde (Italian and Spanish for
green), and domain names 95 and 97 combining terms iq and del sol with
BERRY) remain registered with George Elias.
Held by the Panel
First Issue: The Panel held that the complainant RIM has registered trademark
rights. It is that 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.
As to the disputed domain names 93-103 which combine the word BERRY and
generic terms such as mom, his, she, and verde (Italian and Spanish for
green), and domain names 95 and 97 include the terms iq and del sol.
With the exception of 103 (berryverde.com), the Panel is not convinced that these
domains are confusingly similar to complainants 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.

Second Issue The Panel held that Georges Elias gives no persuasive evidence
of having any rights or legitimate interests in the disputed domain names. It
also found that RIM has established that Elias registered and used the disputed
domain names in bad faith.

In relation to this ground, the respondents response consists of two sentences,

asserting that the Respondent is making a bona fide offering of goods or services.
Elsewhere, he 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.
(Bad faith)
The Panel noted that RIM's BLACKBERRY mark is distinctive and famous. Elias
websites all contain references to its products or that of its competitors. In these
circumstances, it is inconceivable that he was unaware of complainants mark when
he registered and then used the disputed domain names. The Panel has no doubt
that he registered the domain names with intent to exploit the value of the
complainant's marks.