WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telefonaktiebolaget L M Ericsson (Ericsson) v. Eighty Business Names
Case No. D2010-1485
1. The Parties
Complainant is Telefonaktiebolaget L M Ericsson (Ericsson) of Stockholm, Sweden, represented by WRB-IP LLP, United States of America.
Respondent is Eighty Business Names of Grand Cayman, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <ercisson.com> is registered with Rebel.com Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2010. On September 6 and 8, 2010, the Center transmitted by email to Rebel.com Corp. a request for registrar verification in connection with the disputed domain name. On September 8, 2010, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on September 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 4, 2010.
The Center appointed Kamen Troller as the sole panelist in this matter on October 13, 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.
4. Factual Background
The designation “Ericsson” is Complainant’s company name, its trademark and corresponds to its Internet designation. Complainant has been active under this designation on a worldwide basis for many decades and has registered trademarks under that designation for a wide variety of goods, such as data communication, telephones and telephone services, optical apparatuses, electronic transmission services, and many more.
5. Parties’ Contentions
Complainant Ericsson is a world-leading provider of telecommunications equipment and related services to mobile and fixed network operators globally. Since 1876, Ericsson 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, a date prior to registration of the <ercisson.com> domain name by Respondent.
Complainant is the owner of trademark registrations for the ERICSSON mark in many countries, amongst others, United States Trademark No. 1313196 (Registration date: January 8, 1985), United States Trademark No. 2665185 (Registration date: October 1, 2002), United States Trademark No. 2676335 (Registration date: January 21, 2003) – which were all registered prior to Respondent’s registration of the disputed domain name. Complainant’s rights in the ERICSSON mark have been acknowledged in a number of prior decisions under the UDRP. See for example, Telefonaktiebolaget LM Ericsson v. Dailey Wells Comm, WIPO Case No. DCC2006-0005; and Telefonaktiebolaget L M Ericsson v. Harminder Bhasin, WIPO Case No. D2009-1709.
Complainant is the owner of the domain name <ericsson.com>, which it has used continuously since a date long prior to the registration of the disputed domain name by Respondent, to identify its website where it promotes and provides information about its goods and services and telecommunications in general and which at all times has prominently featured its ERICSSON mark and name. Complainant’s domain name was registered in 1989.
Complainant has spent many billions of dollars advertising its offerings under the ERICSSON mark, and has sold many billions of dollars of ERICSSON branded products and services in the United States and the United Kingdom alone.
The disputed domain name homepage shows sponsored listings for goods and services which are the same as or related to the goods and services that Complainant provides and historically has provided under its ERICSSON mark. Displayed on that page are sponsored links relating to goods and services of various parties, but not to any goods or services of Respondent
The disputed domain name is being used to attract Internet users looking for ERICSSON brand products to a website that displays sponsored links to products of Complainant’s competitors e.g., Nextel and Samsung, as well as a search option. This undoubtedly is done to receive pay per click (PPC) payments. Respondent’s website has all the earmarks of a PPC arrangement and is presumed to be one. Indeed, this was found to be the case in Bayer HealthCare LLC v. Eighty Business Names, WIPO Case No. D2010-1024, and BAB, Inc. v. Eighty Business Names, WIPO Case No. D2010-0478. This arrangement is commercial in that it is a revenue generating venture, and is unfair in that it takes advantage of Complainant’s recognition, without authorization, to lead users to competing products.
Complainant contends that (i) the disputed domain name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Respondent did not reply to Complainant’s contentions.
Under paragraphs 5(e) and 14(a) of the Rules, the effect of a default by Respondent is that the Panel shall proceed to a decision on the Complaint. Under Paragraph 14(b), the Panel is empowered to draw such inferences from Respondent’s default as it considers appropriate under the circumstances.
6. Discussion and Findings
In this case, the Panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The Panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence.
In particular, by defaulting and failing to respond, Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interest in the disputed domain name, such as use or preparation to use the disputed domain name prior to notice of the dispute, being commonly known by the disputed domain name, or making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question Complainant’s argument that Respondent has acted in bad faith.
A. Identical or Confusingly Similar
This Panel must first determine whether the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name is quasi-identical to Complainant’s trademark ERICSSON, just inverting the two letters “ic” in the middle of the word, but keeping the same sonority, the same length of the word, the same cadence of pronunciation and above all the identical first and last syllables which are predominant when assessing whether a domain name is identical or confusingly similar to a trademark. The Panel finds that Respondent’s domain name registration appears to be a case of “typosquatting”. Typosquatting is a practice by which “a registrant deliberately introduces slight deviations into famous marks” for commercial gain. See Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517; Deutsche Telekom AG v. Steven Newman, WIPO Case No. D2005-0707; Harry and David v. Jill Wasserstein, WIPO Case No. D2005-1332.
A prior UDRP panel has held that the transposition of letters and minor misspellings of Complainant’s name and trademark ERICSSON are characteristic of “typosquatting.” See Telefonaktiebolaget L M Ericsson (Ericsson) v. Above.com Domain Privacy/Transure Enterprise Ltd./ Shu Lin, Shu Lin Enterprises Limited, WIPO Case No. D2010-0566.
Other cases involving this Respondent and its registration of domain names incorporating famous marks of others appear to further evidence an intent by Respondent to create confusion for financial gain, from which likelihood of confusion may be presumed. See Bayer HealthCare LLC v. Eighty Business Names and BAB, Inc. v. Eighty Business Names, supra.
This Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It does not appear that there has ever been any relationship between Respondent and Complainant which would entitle Respondent to use the ERICSSON mark or name, or to register or use the disputed domain name, or that Complainant would ever have authorized Respondent to use its ERICSSON mark or name, or that there would be any other relationship between Complainant and Respondent which would give rise to any license, permission or authorization by which Respondent could legitimately claim rights. See Guerlain S.A. v. H.I. Investments, WIPO Case No. D2000-0494.
Furthermore, it does not appear that, before notice to Respondent of the dispute, Respondent had used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of rights or legitimate interests in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
It appears that, by registering and using the disputed domain name, Respondent intentionally attempted to attract for commercial gain, Internet users to Respondent’s web site or other on-line locations, by creating a likelihood of confusion with Complainant’s ERICSSON mark.
It furthermore appears that the disputed domain name resolves to a landing page at which competitive products are offered. Such a behavior has been considered to constitute bad faith by other panels: “The fact that Respondent is using the domain name in issue to divert customers to Complainant’s competitors is further evidence of bad faith.” See DORMEUIL FRERES and DORMEUIL UK v. Keyword Marketing, Inc, WIPO Case No. D2007-1424, citing Banca di Roma S.p.A. v. Unasi Inc. a/k/a Domaincar, WIPO Case No. D2006-0068. “The disputed domain name directs users to a webpage that offers goods in competition with Complainants. Respondent is thus presumably profiting from the reputation and goodwill of Complainants. The use of a well-known name or trademark by someone with no connection with that name is evidence of bad faith where the domain name is used to intentionally attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on your web site or location. Many prior UDRP panels have found that using famous trademarks to attract Internet users to a website for commercial gains constitutes bad faith use.” QVC Inc. and ER Marks Inc. v. Unique Boutique, LLC, WIPO Case No. D2009-0135.
Therefore, this Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <ercisson.com> be transferred to Complainant.
Dated: October 16, 2010