WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telefonaktiebolaget L M Ericsson v. Moniker Privacy Services / Jonathan Kimball, iCapital Holdings
Case No. D2011-0331
1. The Parties
Complainant is Telefonaktiebolaget L M Ericsson of Stockholm, Sweden, represented by WRB-IP LLP, United States of America.
Respondent is Moniker Privacy Services of Pompano Beach, Florida, United States of America / Jonathan Kimball, iCapital Holdings of Durham, North Carolina, United States of America (the “United States”).
2. The Domain Name and Registrar
The disputed domain name <ericcson.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2011. On February 18, 2011, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On February 22, 2011, Moniker Online Services, LLC 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 on the first page of the Complaint. The Center sent an email communication to Complainant on March 1, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on March 3, 2011.
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 Respondent of the Complaint, and the proceedings commenced on March 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 4, 2011.
The Center appointed James McNeish Innes as the sole panelist in this matter on April 19, 2011. 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
Complainant has established on the record that it is a world-leading provider of telecommunications equipment and related services to mobile and fixed network operators globally.
Since 1876, it 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 <ericcson.com> domain name by the Respondent.
Complainant is the owner of trademark registrations in many countries, including the United States for the ERICSSON word mark, and for the ERICSSON logo, which is the word ERICSSON and a design comprised of three stripes which represent the letter E. The ERICSSON logo also functions as Complainant’s corporate logo. Both the word and the logo identify both Complainant and its products and services.
Complainant is the owner of, among others, the domain name <ericsson.com>, which it has used continuously since a date long prior to the registration of <ericcson.com> 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. The domain name <ericsson.com> was registered in 1989.
Ericsson 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 alone.
5. Parties’ Contentions
The Complainant’s contentions include the following:
A. 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 first letter “s” is replaced with a “C”. ERICSSON and ERICCSON are virtually identical. The transposition of letters and minor misspellings are characteristic of “typosquatting.”
B. It is well established that typosquatting is a practice by which “a registrant deliberately introduces slight deviations into famous marks” for commercial gain. Because Respondent’s registration of the disputed domain name constitutes typosquatting, the disputed domain name is, by definition, confusingly similar to Complainant’s trademarks.
C. Moreover, the website to which ericcson.com resolves features, among others, products of the type provided by Ericsson and for which Ericsson is known.
D. The disputed domain name <ericcson.com> would clearly be likely to cause confusion as to the source of goods provided or services rendered at such website, given Ericsson’s prior and well established rights in the ERICSSON mark and name and Ericsson’s reputation as a world-leading provider of telecommunications equipment and services.
E. There has never been any relationship between Respondent and Ericsson which would entitle Respondent to use the ERICSSON mark or name, or to register or use the <ericcson.com> domain name. Ericsson has never authorized Respondent to use its ERICSSON mark or name. 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.
F. There is no evidence that, before notice to Respondent of the dispute, Respondent had used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.
ERICSSON is not a part of Respondent’s name and, on information and belief, is not a name by which Respondent is or has ever been known.
G. Attached print from the “www.organizers.com” homepage to which the disputed domain name resolves shows that it features goods for sale, some of which are the same as or related to the goods that Complainant provides and historically has provided under its ERICSSON mark.
H. The disputed domain name is being used to attract Internet users looking for ERICSSON brand products to a website that displays products of others, including Ericsson’s competitors, e.g., Microsoft and Motorola, that are available for purchase. The page also includes a search option. This undoubtedly is done to receive pay per click (PPC) payments or click through commissions.
I. By registering and using the disputed domain name <ericcson.com>, Respondent intentionally attempted to attract for commercial gain, Internet users to Respondent’s website or other on-line locations, by creating a likelihood of confusion with Respondent’s ERICSSON mark.
Because the disputed domain name <ericcson.com> resolves to a landing page at which competitive products are offered, Respondent’s use of the domain name is in bad faith.
J. The disputed domain name is used to misleadingly lead Internet users to a website featuring competitive goods and services, in an attempt illegitimately to trade off of Complainant’s well-known mark for the purpose of receiving revenue based on pay-per-click (PPC) or click-through commissions. Given that Respondent has no rights or legitimate interests in the ERICSSON mark or the <ericcson.com> disputed domain name, and products displayed on the site are related to and competitive with Complainant’s branded products, the only reasonable rationale for Respondent’s registration of the disputed domain name is that respondent wanted to make easy money on the back of the well-known and valuable ERICSSON mark.
Respondent had constructive notice of Complainant’s rights in ERICSSON, before Respondent registered the disputed domain name. Where a complainant has a United States registered trademark that preceded the respondent’s domain name registration, respondent is presumed to have had notice of the trademark and to have registered and used the domain name in bad faith.
K. It is obvious from the circumstances of this case that Respondent was on notice of Complainant’s rights in ERICSSON, before Respondent registered the domain name. This is not the first time Respondent has registered a domain name based on well-known trademarks for monetary gain. The intent to collect money based on famous marks is clear from this activity, and the domain was obviously selected carefully to maximize profits. Clearly, Respondent registered the disputed domain name based on the fame of the ERICSSON mark and the revenue that could be reliably expected from misdirected traffic.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(a) That the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
(b) That the respondent has no rights or legitimate interests in respect of the domain name.
(c) That the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Two separate issues fall for consideration; (1) Does Complainant have rights in the mark and (2) is the disputed domain name identical or confusingly similar to any such mark. On the record Complainant has established rights in its mark and registration. It has also demonstrated continued commercial usage since 1876.
The Complainant argues that the disputed domain name is identical or confusingly similar to its mark for the following reasons:
(a) The disputed domain name <ericcson.com> is confusingly similar to Complainant’s trademark.
(b) The only difference between Respondent’s domain name and Complainant’s trademark is that the first letter “s” has been replaced with the letter “c”.
(c) The disputed domain name incorporates the transposition of letters and minor misspellings which are characteristic of typosquatting.
The Panel accepts the Complainant’s contentions. The disputed domain name is confusingly similar to Complainant’s mark. The Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that any of the following circumstances in particular but without limitation if found by the Panel to be proved based upon its evaluation of the evidence presented shall demonstrate a respondent’s rights or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii):
(a) before any notice to you [respondent] of the dispute, your 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
(b) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(c) you [respondent] are 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.
Respondent has not submitted a Response and has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests. There is no independent evidence of any circumstances which could have demonstrated any rights or legitimate interests on the part of the Respondent. The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Policy, paragraph 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy contains the following provisions under the heading “Evidence of Registration and Use in Bad Faith”. For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(a) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(b) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(c) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(d) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
Respondent has made no Response in this connection. Complainant has made contentions that would lead to situations mentioned in paragraph 4(b). The Panel accepts Complainant’s assertion that Respondent has attempted to attract users to its websites by creating confusion with the Complainant’s mark. The Panel finds that the Policy, paragraph 4(a)(iii) has been satisfied.
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 <ericcson.com> be transferred to Complainant.
James McNeish Innes
Dated: April 22, 2011