Domain Name Dilemma
The Complainant owns registered trademarks for the name "Blackberry", dating between 2000 and 2006. The disputed domain name, "theblackberrycoach.com", was first created on October 10, 2007.
The disputed domain name consists of the Complainant's trademark in its entirety, inserted between the definite article and the generic word "coach", which normally would have no impact on whether the domain name was confusingly similar to the trademark concerned. In the Panel's view, however, the problem here was that the Complainant's mark is a generic word in common use for a fruit. However, with the additional words of "the" and "coach", the Panel recognized it as an expression or term commonly used in the world of computers to provide assistance, notably in relation to "help" buttons, and the Complainant's mark relates to a form of computer technology. For these reasons, the Panel concluded on balance that the domain name is confusingly similar to the mark in which Complainant has rights.
At the time of the proceeding's commencement, the disputed domain name contained no content. Annexed to the Complaint was an image of a website to which it used to resolve, containing references podcasts and other items that appeared to relate to versions of computer software. There was no reference to the alternative meaning of "blackberry" as a fruit. The Panel opined that from this, one can deduce that the Respondent had in mind the information technology aspect of the name "blackberry" when registering and in using the website to which the domain resolved, suggesting that Respondent knew of Complainant's rights in connection with its trademark. Although failing to respond to the Complaint, the Respondent indicated to the Center that he no longer held the disputed domain name when, in fact, the Respondent did indeed still hold the registration. The Panel determined that this supported the conclusion that the Respondent was not acting in good faith and ordered transfer of the domain. Research in Motion Limited v. Louis Espinoza, WIPO Case No. D2008-0759