Research in Motion Limited v. Dustin Picov

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

Research In Motion Limited v. Dustin Picov

Case No. D2001-0492

1. The Parties

The Complainant is Research In Motion Limited, a corporation organised under

the laws of the Province of Ontario, Canada, having a principal place of business

at 295 Phillip Street, Waterloo, Ontario N2L 3W8, Canada.

The Respondent is Dustin Picov, an individual with a listed mailing address

of 164 Huntington Pk Dr, Thornhill, Ontario L3T 7J9, Canada.

2. The Domain Name and Registrar

The Domain Name at issue (hereinafter the Domain Name) is <researchinmotion.com>.

The Registrar of the Domain Name is Register.com, Inc., with its address at

575 Eighth Avenue, 11th Floor, New York, NY 10019, USA.

3. Procedural History

On April 3, 2001, the Complainant submitted, via e-mail, a Complaint (hereinafter

the Complaint) with the WIPO Arbitration and Mediation Center (hereinafter the

Center). The Center received the hardcopy of the Complaint on April 5, 2001.

On April 9, 2001, the Center confirmed receipt of the Complaint to the Complainant,

via e-mail. On April 9, 2001, the Center informed the Registrar, Register.com

Inc., that the Complaint had been submitted to the Center regarding the Domain

Name, and asked for a verification of the registrant information. The said verification

results from the Registrar were received on April 10, 2001.

The Center then proceeded to verify that the Complaint satisfied the formal

requirements of the Rules for Uniform Domain Name Dispute Resolution Policy

(hereinafter referred to as the ICANN Rules) and the World Intellectual Property

Organisation Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

(hereinafter referred to as the WIPO Rules), including the payment of the requisite

fees. The verification of compliance with the formal requirements was completed

in the affirmative on April 10, 2001.

In a letter dated April 11, 2001, the Center informed the Respondent of the

commencement of the proceeding as of April 11, 2001 and of the necessity of

responding to the Complaint within 20 days. Evidence provided by the Center

supports the finding that the Center acted diligently in its attempts to inform

the Respondent of the proceeding.

On April 27, 2001, the Center received an e-mail from the Respondent requesting

an extension of one week to file his response (hereinafter the Response). On

April 30, 2001 the Center, via e-mail to the Respondent, granted the request.

On May 3, 2001, the Center acknowledged the receipt of the Response in its

hard copy format and requested the Response in electronic form. On May 6, 2001,

the Center received the Response in electronic form and, on May 7, 2001, the

Center received additional response material (fax) and communication records,

from the Respondent.

On May 14, 2001, the Center proceeded to transmit the Response via e-mail to

the Complainant as well as faxing the Response annexes and further Response

material to the Complainant.

The Panel has reviewed the documentary evidence provided by the parties and

the Panel and agrees with the Center’s assessment that the Complaint complies

with the formal requirements of the ICANN Rules and the WIPO Rules.

The Panel believes it was constituted in compliance with the ICANN Rules

and the WIPO Rules and has also issued a Statement of Acceptance and Declaration

of Impartiality and Independence.

On May15, 2001 the Center informed both parties, by e-mail, that an administrative

panel had been appointed.

The Panel has received no further submissions from either party since its formation.

The Panel is obliged to issue a decision on or prior to May 31, 2001, in the

English language and is unaware of any other proceedings, which may have been

undertaken by the parties or others in the present matter.

4. Factual Background

The Complainant in this administrative proceeding, Research in Motion Limited,

is an industry-leading designer, manufacturer and marketer of innovative wireless

solutions for the mobile communications market. Research In Motion Limited's

portfolio of award-winning products includes the Research In Motion Wireless

Handheld product line, the famous BlackBerry wireless email solution, wireless

personal computer card adapters, embedded radio modems and software development

tools.

Founded in 1984, Research In Motion Limited is listed on the Toronto Stock

Exchange under the RIM symbol, and on the Nasdaq Stock Market under RIMM. Research

In Motion Limited has used the trade name "Research In Motion" since

its inception.

In its 2000 fiscal year (March 1, 1999 through February 29, 2000)

Research In Motion Limited had gross revenues of US $85 million. In its last

reported quarter alone (the three months ending on November 30, 2000) Research

In Motion Limited spent US $16.9 million (almost 30% of revenue) on selling,

marketing and advertising.

The evidence shows that the Complainant or its predecessors have registered

and/or utilised trade names and trademarks consisting of the terms RESEARCH

IN MOTION or RIM in various forms and combinations throughout Canada and in

the United States.

No information has been supplied regarding the attributes and businesses of

the Respondent although it appears that the Respondent is a student who used

fake identities and addresses to register the Domain Name and who lives in Ontario,

Canada.

As shown by the evidence, the Respondent registered the Domain Name, which

consisted of <researchinmotion.com> in December 1999. The evidence reveals

that at one point in time, internet users entering the Domain Name, were directed

to a web site containing a mention of the Complainant’s mark, notably the following

statement, "future web site for rim.net". Furthermore, this site provided

links to the Complainant’s web site www.rim.net. The evidence also reveals that

after registering the Domain Name, Respondent placed it up for sale on greatDomains.com

with an asking price of $1,500,000.

There is no relationship between the Respondent and the Complainant. The Respondent

is not a Licensee of the Complainant nor has he otherwise obtained any authorisation

to use the Complainant’s marks or apply for any Domain Names incorporating any

of these marks.

5. Parties’ Contentions

A. Complainant

At paragraph I to the Complaint, the Complainant maintains that the Respondent

registered the Domain Name under a fictitious name to evade service of process

and to conceal the Respondent’s true identity. David Shaw is an alias designed

to conceal the registrant’s true identity.

At paragraphs J and K to the Complaint, the Complainant alleges that after

registering the Domain Name, Respondent placed it up for sale on greatDomains.com,

the asking price: $1,500,000. Complainant further alleges that there can be

no argument that $1,500,000 far exceeds the costs of registering a Domain Name

and that Respondent intended to profit through his actions of bad faith. The

greatDomains.com information notes that "this web site is for sale for

1.5 million, although I’m not really interested in selling it, just want to

see what its worth."

At paragraph M to the Complaint, the Complainant alleges that it owns various

trademarks such as:

Mark: RESEARCH IN MOTION

Canadian Registration No.: TMA 528,261

Registration Date: May 24, 2000

Mark: RESEARCH IN MOTION

U.S. Registration No.: 2,036,380

Registration Date: February 11, 1997

Mark: RIM

Canadian Registration No.: TMA 509986

Registration Date: March 25, 1999

Mark: RIM

U.S. Registration No .: 1,982,049

Registration Date : June 25,1996

At paragraphs A, B and C to the Complaint, the Complainant alleges its legitimate

use of the Domain Name, as well as the goodwill and reputation attached thereto.

The Complainant maintains that, in effect, for the past 17 years, the Research

In Motion name and mark has been continuously used to identify an industry-leading

designer, manufacturer and marketer of innovative wireless solutions for the

mobile communications market. Research In Motion Limited's portfolio of award-winning

products includes the Research In Motion Wireless Handheld product line. Furthermore,

Research In Motion Limited had gross revenues of US $85 million. In its last

reported quarter alone (the three months ending on November 30, 2000) Research

In Motion Limited spent US $16.9 million (almost 30% of revenue) on selling,

marketing and advertising.

At paragraph NN on the Complaint, the Complainant advances that the Domain

Name is likely to be confused with Research In Motion Limited's marks. The Domain

Name consists entirely of "ReasearchInMotion." Research In Motion

Limited’s trade name and trademark are identical to the disputed Domain Name.

Realising that consumers encountering the Domain Name will be confused into

believing that the Domain Name is associated with Research In Motion Limited,

Respondent even provided a link to <rim.net> and touted the Domain Name

as the future home of <rim.net>.

At paragraph PP of the Amendment to the Complaint, The Complainant asserts

that Respondent has no rights or legitimate interests in respect of the Domain

Name. Respondent is not commonly known by "research in motion." Respondent

is not making a legitimate commercial, noncommercial or fair use of the Domain

Name. Respondent undertook to register the Domain Name with full and complete

knowledge of Research In Motion Limited’s superior and prior rights. Moreover,

Respondent's documented offers to sell the Domain Name both on the Internet

and directly to Research In Motion Limited evidence his bad faith registration

and use.

Further on in paragraph RR of the amendment to the Complaint, the Complainant

maintains that Respondent registered the Domain Name at issue in this Complaint

in order to prevent Research In Motion Limited from registering its marks in

the corresponding Domain Name, or to simply sell it.

B. Respondent

The Respondent, in the various paragraphs of the Response, attempts to justify

his registering of the Domain Name, as well as his actions and intent towards

the Complainant. The following statements summarize the essential elements of

the Response:

In paragraph 2 of the Response, the Respondent alleges that "RIM

had no legitimate interest in the Domain Name until after Respondent had purchased

it. It was not a trademark until May 24, 2000. The Domain was purchased by myself

in Dec 1999. A trademark search done by myself at the time, showed no infringement."

In paragraph 3 of the Response, the Respondent maintains that "The Domain

Name has not ever been used at all."

In paragraph B of the Response, the Respondent alleges that "RIM

claims here that they were founded in 1984 and have used that trade name ever

since inception. However in Canada it was only approved in May 2000 and in the

U.S. in Feb. 1997."

In paragraph C of the Response, the Respondent alleges that Research in

Motion Limited’s web site "says RIM not research in motion on their web

site. So they do not even go by Research in Motion. I have also looked at their

products and they say RIM not research in motion. The following comes from their

web site where they use RIM all the time: i.e. […] You acknowledge that this

site may contain information, communications, software, photos, text, video,

graphics, music, sounds, images and other material and services (collectively

"Content"), which is generally provided by Research In Motion Limited

or its subsidiaries (collectively "RIM") or by licensors of RIM […]."

In paragraph G of the Response, the Respondent alleges that "After

getting the postings removed I decided to change all my information to false

information, as I was afraid for my safety. As you are aware they are a lot

of crazy people out there and it is not safe to give out your information to

strangers."

In paragraph J of the Response, the Respondent alleges that "I was

informed by others, that if I did this I could see how much value this Domain

Name had which could help if I ever wanted to get financing for my site. It

also never hurts to know the value of something you own."

In paragraph Z of the Response, the Respondent alleges that "RIM

then decided to take away the promotional items because they had no intentions

of sending them in the first place. This is when I no longer wanted to transfer

the Domain to them."

In paragraph AA of the Response, the Respondent alleges that "Now

RIM decides to give me a deadline and still does not offer me the promotional

items like first promised. The deadline now meant nothing to me. We tried to

ask for the promotional items but they made excuses, stating that it took too

long. They never wanted to give me a thing and their legal counsel tried to

scare me again by demanding a deadline."

In paragraph MM of the Response, the Respondent alleges that "The

trademark only comes into play after my Domain Name was purchased."

In paragraph 2 of the Response, the Respondent alleges that "I booked

this Domain with intentions of using it for a research site. That is 100% legitimate,

at the time there was not even a trademark established with this Name. Their

trademark is for Research in Motion anyways. My Domain is reseachinmotion.com."

In paragraph RR of the Response, the Respondent alleges that "I never

prevented RIM from registering their mark because there was no mark when I booked

it. I only prevented them from booking it after they had a mark for it but I

booked it months before it was a mark."

6. Discussion and Findings

Pursuant to the Uniform Domain Name Dispute Resolution Policy (hereinafter

the ICANN Policy) the Complainant must convince the Panel of three elements.

In order to have the Domain Name transferred to this end, it is incumbent upon

the Complainant to cumulatively show:

i) that the Domain Name is identical or confusingly similar to a trademark

or service mark in which it holds rights; and

ii) that the Respondent has no rights or legitimate interests in the Domain

Name; and

iii) that the Domain Name was registered and used in bad faith.

These three elements are considered below.

Identical or Confusingly Similar to Trademark

The Panel has reviewed the documentary evidence provided by the Complainant

regarding its rights in the trademark RESEARCH IN MOTION and finds that the

Complainant has satisfactorily shown that it owns such rights.

With respect to the confusing similarity between Complainant's trademark and

Respondent's Domain Name; in the decision, The Toronto-Dominion Bank v. Boris

Karpachev, WIPO Case No. D2000-1571,

the panel held: "In determining whether a Domain Name is confusingly similar

to a trademark, the intention of the Domain Name registrant is irrelevant. It

is the objective likelihood of confusion that must be assessed."

In this case, the second-level part of the Domain Name, "researchinmotion",

is phonetically and visually identical to the Complainant's trademark RESEARCH

IN MOTION. Thus an average Internet user who has knowledge or recollection of

the Name, RESEARCH IN MOTION, might easily mistake the Respondent’s web site,

associated with the Domain Name, as being somehow affiliated to or owned by

the Complainant. The Panel is of the opinion that this fact alone is sufficient

to conclude that the Domain Name is confusingly similar to Complainant's RESEARCH

IN MOTION trademark.

The Panel would like to take the opportunity to address a recurring argument

which is present in the Respondent’s Response, which is to the effect that:

"RIM had no legitimate interest in the Domain Name until after Respondent

had purchased it. It was not a trademark until May 24, 2000." On that point,

the Complainant does not need to prove rights in a registered trademark, as

the Policy does not require that the Complainant must have rights to a "registered"

trademark. However, in the absence of a registration, the Complainant has to

be able to satisfy the Panel that it has sufficient rights which would give

rise to an action for passing off. See Jeanette Winterson v. Mark Hogarth,

WIPO Case No. D2000-0235. In the matter,

presently before the Panel, the Complainant did provide evidence of use of the

mark RESEARCH IN MOTION, as well as showing substantial goodwill, reputation

and secondary association of the trademarks with the Complainant.

The Panel is therefore of the opinion that the Complainant has met the burden

of proof as established by paragraph 4(a)(i) of the ICANN Policy.

No Rights or Legitimate Interests

Paragraph 4(a)(ii) of the ICANN Policy inquires as to whether or not the Respondent

has any rights or legitimate interests vested in the Domain Name. Paragraph

4(c) provides examples of circumstances that can demonstrate the existence

of such rights or legitimate interests: (i) use of, or preparations to use,

the Domain Name in connection with a bona fide offering of goods or services;

(ii) the fact that the Respondent has commonly been known by the Domain Name;

and (iii) legitimate non-commercial or fair use of the Domain Name.

The Panel is of the opinion that there is no evidence to support any finding

of a right or legitimate interest in the Domain Name on behalf of the Respondent.

The Respondent has not shown use of, or preparations to use, the Domain Name

in connection with a bona fide offering of goods or services, nor has he attempted

to show that he has commonly been known by the Domain Name nor has he attempted

to show a legitimate non-commercial or fair use of the Domain Name.

Furthermore, the Panel is also of the opinion that the Respondent, in all intents

and purposes, admitted to not using the Domain Name in a legitimate manner when

he stated in paragraph 3 of the Response that "The Domain Name has not

ever been used at all."

Bad Faith

Pursuant to paragraph 4(a)(iii) of the ICANN Policy it is incumbent upon the

Complainant to prove, on the balance of probabilities, that the Respondent has

registered and is using the Domain Name in bad faith. Paragraph 4(b) of the

ICANN Policy provides a number of non-exhaustive circumstances which, if found

to be present, are evidence of the registration and use of a domain name in

bad faith. In particular, paragraph 4(b)(iv) of the ICANN Policy holds that,

if the circumstances tend to indicate that by using the domain name the Respondent

has intentionally attempted to attract, for commercial gain, Internet users

to his web site, by creating a likelihood of confusion with the Complainant's

mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s

web site, then this might be evidence of bad faith registration and use on behalf

of the Respondent.

The Panel has duly noted that the evidence shows that the Respondent provided

a link to <rim.net> and falsely indicated on the web site that it was

the future home page of the Complainant. The Panel finds that Respondent has

used the Domain Name in bad faith pursuant to Paragraph 4(b)(iv) of the UDRP,

in that Respondent has intentionally attempted to attract, for commercial gain,

Internet users to his web site or other on-line location, by creating a likelihood

of confusion with the Complainant’s mark as to the source, sponsorship, affiliation,

or endorsement of his web site or location or of a product or service on his

web site or location.

Furthermore, the Panel has taken note of uncontested evidence, which indicates

that after registering the Domain Name, the Respondent placed it up for sale

on greatDomains.com, the asking price: $1,500,000. Furthermore, the Respondent,

who stated that he had no real intention of ever selling the Domain Name, but

wanted to see what it was worth, admitted to this act. In addition, the Respondent

also stated that "RIM then decided to take away the promotional items because

they had no intention of sending them in the first place. This is when I no

longer wanted to transfer the Domain Name to them." The Panel is of the

opinion that the Complainant has satisfied its burden to establish, on these

grounds alone, that the Respondent was intending to demand more than his out-of-pocket

costs directly related to the registration of the Domain Name, a necessary component

of a finding of bad faith when offering a Domain Name for sale pursuant to paragraph

4(b)(i) of the ICANN Policy.

The Panel is also of the opinion that the Domain Name is so obviously connected

with the Complainant and its services that its very use by someone with no connection

to the Complainant suggests "opportunistic bad faith" (see Parfums

Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO

Case No. D2000-0226 and Veuve Cliquot Ponsardin, Maison

Fondée en 1772 v. The Polygenix Group Co., WIPO

Case No. D2000-0163), followed by this Panel in SSL International vs.

Mark Freeman, WIPO Case No. D2000-1080,

and Altavista Company v. Grandtotal Finances Ltd., WIPO

Case No. D2000-0848.

For the foregoing reasons, which are not exhaustive of all the acts of bad

faith committed by the Respondent, the Panel concludes that the Complainant

has met its burden of proof and has proven that the Respondent’s actions have

been in bad faith pursuant to paragraphs 4(b)(i) and 4(b)(iv) of the ICANN policy.

7. Decision

For the foregoing reasons, the Panel decides:

- that the Domain Name registered by the Respondent is confusingly similar

to the trademarks in which the Complainant has rights;

- that the Respondent has no rights or legitimate interests in respect of the

Domain Name; and

- that the Domain Name has been registered and is being used by the Respondent

in bad faith.

Accordingly, pursuant to paragraph 4(i) of the ICANN Policy, the Panel orders

that the registration of the Domain Name <researchinmotion.com> be transferred

to the Complainant by the Registrar, Register.com, Inc.

Jacques A. Léger, Q.C.

Sole Panelist

Dated: May 31, 2001

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