Complainant is Telefonaktiebolaget L M Ericsson (Ericsson) of Sweden, represented by WRB-IP LLP, United States of America.
Respondent is Above.com Domain Privacy of Australia / Transure Enterprise Ltd. of Tortola, British Virgin Islands, United Kingdom of Great Britain and Northern Ireland/ Shu Lin, Shu Lin Enterprises Limited of Dalian, China.
The disputed domain name <ercisson.net> is registered with Above.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2010. On April 15, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On April 19, 2010, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 20, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 23, 2010. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 20, 2010.
The Center appointed Daniel Peña as the sole panelist in this matter on May 31, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant is a world-leading provider of telecommunications equipment and related services to mobile and fixed network operators.
Complainant is the owner of United Kingdom (“UK”) Trademark Registration No. 2437257, for the word mark ERICSSON to cover products and services included in International Classes 9, 11, 16, 35, 36, 37, 38, 41 and 42. This registration was issued on August 31, 2007. (Annex G)
Complainant is the owner of United States (“U.S.”) Federal Trademark Registration No. 1313196 for the mark ERICSSON with three stripe design (stylized E) to cover products of International Class 9. This registration was issued on January 8, 1985. (Annex H)
Complainant is the owner of U.S. Federal Trademark Registration No. 2665187 for the word mark ERICSSON to cover products and services included within International Classes 9, 16, 35, 36, 37, 38, 41 and 42. This registration was issued on December 24, 2002. (Annex I)
Complainant is the owner of U.S. Federal Trademark Registration No 2676335 for the mark ERICSSON with three stripe design (stylized E) to cover products and services included within International Classes 9, 16, 35, 36, 37, 38, 41 and 42. This registration was issued on January 21, 2003. (Annex J)
Complainant is the owner of domain name <ericsson.com>. This domain name was registered in 1989. (Annex K)
Since 1876, Complainant has used the ERICSSON name and mark in connection with telecommunications goods and services. Such goods and services have been provided continuously under the ERICSSON name and mark in the United States since at least as early as 1942.
The existence of its valid and subsisting trademark registrations for the ERICSSON mark is sufficient to establish Complainant's rights.
Complainant has spent billions of dollars advertising its offering under the ERICSSON mark, and has sold billions of dollars of ERICSSON branded products and services in the U.S. alone.
Complainant's rights in the ERICSSON mark have been acknowledged in a number of prior decisions under the Policy.
Complainant clearly has strong rights in the ERICSSON mark and name, which predate the acquisition of the disputed domain name by more than 100 years globally.
The disputed domain name is confusingly similar to Complainant's ERICSSON mark in that the domain name consists of Complainant's ERICSSON mark wherein the letters “F” and “C” are reversed.
The word “Ercisson” in the disputed domain name and the Complainant's trademark ERICSSON are virtually identical.
The website at the disputed domain name contains links to sites featuring products of the type provided by Complainant and for which Ericsson is known, clearly illustrating that the name refers to and is known as referring to Complainant.
The disputed domain name would clearly be likely to cause confusion as to the source of goods provided or services rendered at such website, given the Complainant's prior and well established rights in the ERICSSON mark and name and its reputation as world-leading provider of telecommunications equipment and services.
There is no relationship between Complainant and Respondent which would give rise to any license, permission or authorization by which Respondent could legitimately claim rights.
The word “Ericsson” is not a part of Respondent's name and, on information and belief, is not a name by which Respondent is or has been ever been known.
Respondent did not reply to Complainant's contentions.
In order for Complainant to prevail and have the disputed domain name transferred, the Complainant must show the following per the Policy, paragraph 4(a):
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant bears the burden of proof for each of these elements.
Paragraph 4(a) (i) of the Policy requires a complainant to prove that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which [it] has rights.”
Based on the evidence provided by Complainant, the Panel is convinced that Complainant has rights in the ERICSSON trademark.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark ERICSSON. In the Panel´s view, the transposition of letters and minor misspellings characteristic of the disputed domain name are an example of typosquatting. In other words, a form of cybersquatting which relies on mistakes such as typographical errors made by Internet users when typing a domain name into a web browser.
For instance, upon comparing between the spelling of the disputed domain name and the spelling of the Complainant's trademarks, we find:
E R I C S S O N
E R C I S S O N
(a) The two (2) names have eight (8) letters, six (6) of which are identical and in the exact same order.
(b) The order of the remaining two (2) letters was changed. Such transposition is per se and in fact clear evidence that the intention of Respondent was to take advantage of users' misspelling when typing the word ERICSSON.
The confusion between the disputed domain name <ercisson.net> and the ERICSSON trademarks is reinforced as a result of the widespread reputation of the Complainant's trademark and business throughout the world. Moreover, the protection of ERICSSON trademarks covers precisely the products and services related to telecommunications networks and equipment, both fields for which the gTLD generic expression “net” is normally used and accordingly, it should be registered and used merely by Complainant.
The Panel is satisfied that the disputed domain name is identical or confusingly similar to Complainant's name and mark and Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a) (ii) of the Policy.
Concerning this requirement, the Complainant has set forth prime facie evidence that it has rights and legitimate interests in the trademark ERICSSON as a result of a wide range of commercial and industrial activities since 1876 within the telecommunications sector around the world.
It has also been evidenced that there has never been any relationship between Respondent and Complainant which would entitle to Respondent to use the ERICSSON mark or name or to use the disputed domain name.
In this Panel's view, a person carrying out a typosquatting activity that seeks to benefit from a mere misspelling of a widely-known name or trademark cannot be deemed to have a legitimate interest.
In the absence of a Response, the Panel accepts the arguments and evidence advanced by the Complainant and finds that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that accordingly, paragraph 4(a)(ii) of the Policy has been satisfied.
Under paragraph 4(b), a respondent has registered and used a domain name in bad faith if, inter alia, respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to respondent's website or other online location by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation or endorsement of respondent's site or of a product or service offered on the respondent's site. Policy, paragraph 4(b)(iv).
The Panel finds that by registering and using the disputed domain name, Respondent intentionally attempted to attract for commercial gain, Internet users to any of Respondent's web sites or other on-line locations, by creating a likelihood of confusion with Complainant's mark. In the Panel's view, Respondent is using the disputed domain name to divert customers to Complainant's competitors. In fact, this conduct seeks to lead Internet users to sponsored links featuring competitive goods and services, in an attempt to trade off of Complainant's trademark presumably for the purpose of receiving revenue based on pay per click (PPC) or a similar business model.
Finally, in the Panel's view, the typosquatting activity like the one carried out by Respondent in relation to a widely-known trademark is a clear indication of bad faith not only in the registration stage but also in the use of the disputed domain name itself.
Complainant has established that the disputed domain name has been registered and is being used in bad faith. The third requirement of the Policy has therefore been fulfilled.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ercisson.net> be transferred to the Complainant.
Dated: June 14, 2010