In the recent decision of Research in Motion Limited v. Georges Elias (WIPO D2009-0218, April 27, 2009), a single member panel was faced with a dispute over 111 (that’s not a typo) domains. Research in Motion (herein “RIM”) is the company most famously known for bringing us the BLACKBERRY cell phones and personal communication devices. RIM maintains two web sites at www.blackberry.com and www.shopblackberry.com. RIM claimed rights to the term BLACKBERRY and to the term BERRY.
Essentially, the Panel found that 101 of the domains met the three elements for ICANN UDRP domain disputes. Under paragraph 4(a) of the Policy, to succeed the Complainant must prove all of the following: (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.
In this case, the Panel determined that 10 of the domains did not satisfy the elements and made the following observations:
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.
Essentially, a close look at the domains which were not transferred show that they contained just the word “berry” with some other word, but lacked the prefix “black.” For a full listing of the domains transferred, please see a copy of the decision here.
