WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telefonaktiebolaget L M Ericsson v. DNS Manager, Cenal.com / Moniker Privacy Services
Case No. D2011-0369
1. The Parties
The Complainant is Telefonaktiebolaget L M Ericsson of Stockholm, Sweden represented by WRB-IP LLP of United States of America.
The Respondent is DNS Manager, Cenal.com / Moniker Privacy Services, of Hong Kong, SAR of China and Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ericcsson.com> is registered with Moniker Online Services, LLC. (the “Registrar”)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2011. On February 25, 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 28, 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 in the Complaint. The Center sent an email communication to the Complainant on March 2, 2011 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 March 8, 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 the Respondent of the Complaint, and the proceedings commenced on March 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 30, 2011.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on April 6, 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
The Complainant provides trade mark registration certificates for numerous jurisdictions for its mark ERICSSON and device, and for its mark ERICSSON. In the United States, the Complainant owns United States Federal Trademark Registration No. 2,665,187 for the latter mark, which is registered for a full line of data communication, satellite communication, and telecommunication equipment and associated goods and services and which issued on December 24, 2002.
The disputed domain name was registered on December 1, 2003.
5. Parties’ Contentions
The Complainant asserts that it is a world leading provider of telecommunications equipment to mobile phone and fixed networks around the world. It has used the mark ERICSSON in that regard since 1876 and since 1942 in the United States. It owns registrations for the ERICSSON and ERICSSON with device trade marks in many countries around the world. The Complainant provides proof of its registrations. The Complainant asserts that its mark ERICSSON is a well-known or famous mark. The Complainant asserts that it has expended billions of dollars on advertising and has sold billions of dollars worth of products in the United States alone. The Complainant is also the owner of the “www.ericsson.com” website which it has operated from a date prior to the registration of the disputed domain name and on which it advertises and informs about its products and services.
The Complainant contends that the disputed domain name is confusingly similar to its trade mark ERICSSON as it only differs by the addition of one letter and is thus a clear example of typosquatting, ie the deliberate introduction of slight deviations from a famous mark for commercial gain. The Complainant asserts that the website to which the disputed domain name resolves refers to its own products as well as competing products, which the Complainant contends clearly illustrates that the disputed domain name refers to and is known by the Respondent as referring to the Complainant. The Complainant contends that the disputed domain name would generate confusion as to the source of the goods and services there offered, given the Complainant’s pre-existing rights and global reputation.
Further the Complainant asserts that the Respondent has no authorization to use its trade mark in any way. There is also no evidence that the Respondent is known by the name Ericsson nor does the Respondent, according to a registered trade mark search undertaken by the Complainant, dispose of any registrations in that name, nor does it according to the Complainant’s information and belief use that name.
The Complainant asserts that the website to which the disputed domain name resolves features goods that the Complainant provides but also competing goods of the same kind. The latter does not constitute non-commercial or fair use as it is undoubtedly done to generate pay per click fees, and numerous panels have held as such in the past. The Respondent relies on the similarity of the disputed domain name with the Complainant’s trade mark to generate revenue, and this does not generate rights or legitimate interests in the disputed domain name, as panels have repeatedly held.
Further the Complainant asserts that the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s web site or other on-line locations, by creating a likelihood of confusion with the Complainant’s mark. The Respondent’s use of the disputed domain name is said to be in bad faith because it resolves to a landing page at which competitive products are featured. This is an attempt to illegitimately trade off the well-known mark of the Complainant. The Complainant asserts that the links displayed are connected to the Complainant’s business and not to any generic or descriptive inclusion in the disputed domain name, which establishes that the Respondent had knowledge of the Complainant’s mark and intended to take advantage of it. In any case, the Complainant contends that its trade mark registration in the United States amounts to constructive notice. The Respondent has clearly taken the well known brand of the Complainant for the very purpose of capitalizing on the reputation of the trademarks by diverting Internet users for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s trade mark ERICSSON without any further addition. The only difference lies in the slightly different spelling: “ericcsson” with two “c” instead of “ericsson”. If not identical, the disputed domain name is certainly confusingly similar, in that an Internet user would barely notice the difference between the two except for having submitted it to very close scrutiny.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s trade mark ERICSSON.
B. Rights or Legitimate Interests
The Respondent has not replied to the Complaint. There is no evidence before the Panel that the Respondent is known by the name Ericcsson or uses that name in business or as a trade mark. The Complainant submits evidence that the Respondent has no registered trade marks in the United States in any name or mark. The Complainant also asserts that it has not authorized the use of its trade mark in any way.
The use of a domain name for the purpose of establishing a website where no legitimate goods of the complainant are actually offered, but where only a list of hyperlinks appears, some of which click through to websites offering competing goods, does not give rise to rights or legitimate interests vesting in a respondent. Rather it suggests that the website has been established by reference to a domain name which is barely distinguishable from the Complainant’s well-known mark, for the purpose of taking illegitimate advantage of the fame of that mark. This is a typical case of cybersquatting, where the only inference open to the Panel is that the Respondent intends to make a gain out of the deception visited upon Internet users by its registration and use of a domain name that shadows the Complainant’s mark.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant asserts that its trade mark ERICSSON is a well known mark. It submits evidence of trade mark registrations, extensive business activity and very considerable expenditure on promotion and advertising in numerous jurisdictions, including the United States. The Complainant has a long-standing presence in the telecommunications and mobile phone markets around the world. Its reputation was well-established before the date of registration of the disputed domain name. Further, the use to which the relevant website has been put, ie to list hyperlinks to providers of Ericsson products as well as competing products, clearly indicates that the Respondent was aware of the Complainant’s mark, the nature of its use and its wide spread reputation. Further, the Respondent set out to turn that reputation to its advantage by using the disputed domain name in the manner that it does. That is to say, it relies on the near-identity of the disputed domain name to bring inadvertent internet users to its website, where it then proffers links to other sites offering competing products. No doubt the Respondent intends to derive some financial gain from this practice, in the form of click through or pay per click royalties. In this Panel’s view this does not amount to a use in good faith of a trade mark.
Therefore the Panel holds that the disputed domain name was registered and used in bad faith.
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 <ericcsson.com> be transferred to the Complainant.
WiIliam A. Van Caenegem
Dated: April 20, 2011.