WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telefonaktiebolaget LM Ericsson v. Leon Popa / Registration Private / Domains By Proxy, LLC
Case No. D2016-0923
1. The Parties
The Complainant is Telefonaktiebolaget LM Ericsson of Stockholm, Sweden, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Leon Popa of PalmHarbor, Florida, United States of America / Registration Private / Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <myericsson.net> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 9, 2016. On May 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 9, 2016, 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 May 11, 2016 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 amended Complaint on May 11, 2016.
The Center verified that the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 2, 2016.
The Center appointed Marilena Comanescu as the sole panelist in this matter on June 16, 2016. 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.
The language of the proceeding is English.
4. Factual Background
The Complainant in this administrative proceeding is Telefonaktiebolaget LM Ericsson a world-leading provider of telecommunications equipment and related services to mobile and fixed network operators. The Complainant currently employs around 120,000 people, has offices in more than 100 countries and customers in about 180 countries.
The Complainant has used the name and trademark ERICSSON since 1876 and holds numerous trademark registrations for ERICSSON in United States of America and worldwide, particularly in connection with goods and services in International Classes 09, 11, 16, 35, 36, 37, 38, 41 and 42.
Also, the Complainant owns numerous domain names including the denomination "ericsson", covering both generic Top-Level Domains ("gTLDs") and country code Top-Level Domains ("ccTLDs"). The Complainant operates its main website at "www.ericsson.com".
The disputed domain name <myericsson.net> was registered on February 14, 2015. At the time of filing the Complaint, the disputed domain name resolves to an inactive webpage displaying an error page. According to Annex 11 to Complaint, the disputed domain name was used in the past for sending fraudulent job offers which had the appearance of coming from Complainant, asking the recipients to provide personal information, sending them phony unsolicited job appointment letters stating that the recipient had been awarded a position with the Complainant. Moreover, such fraudulent letters contained the signature and contact details of Complainant's actual employees and had the appearance of Complainant's official letterhead.
5. Parties' Contentions
The disputed domain name is confusingly similar to the Complainant's trademark ERICSSON as it is capturing in its entirety the Complainant's trademark together with the non-distinctive term "my".
The Respondent has no rights or legitimate interests in the disputed domain name.
The disputed domain name incorporating Complainant's trademark was used as part of a phishing attack to send fraudulent job offers, or kept inactive and therefore the disputed domain name must be considered as being registered and used in bad faith according to the Policy, paragraph 4(b)(iv). Further, the Complainant employed a privacy service to hide its identity.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In view of the Respondent's default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant holds worldwide trademark registrations for the ERICSSON trademark. The disputed domain name includes the Complainant's trademark preceded by the non-distinctive term "my".
Adding such term may not necessarily be sufficient to escape a finding of confusing similarity and does not change the overall impression of the disputed domain name as being connected to the Complainant's trademark. See paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
Further, it is well established in decisions under the UDRP that the presence or absence of spaces, characters (e.g., hyphens, dots) in a domain name and indicators for gTLDs (e.g., ".com", ".biz", ".net", ".org") are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark ERICSSON, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant asserts that it has given no license or other right to use or register its trademark to the Respondent, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial fair use or a bona fide offering of goods and services. In line with the previous UDRP decisions, the Panel accepts that the Complainant has provided a prima facie case of the Respondent's lack of rights or legitimate interests in relation to the disputed domain name, and the burden of production shifts to the Respondent.
The Respondent chose not to challenge the Complainant's allegations. There is no evidence before the Panel to support the contrary, and therefore the Panel accepts these arguments as facts.
Further, according to the evidence provided in the Complaint, the disputed domain name is currently inactive and in the past it was used for illegitimate purposes, to send fraudulent job offers.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainant holds trademark registrations for ERICSSON worldwide since 1876, including in the United States of America, where the Respondent is apparently located.
Further, the Complainant's trademark ERICSSON is internationally well-known in the field of telecommunications, as stated in several decisions issued by previous UDRP panels, see for example Telefonaktiebolaget LM Ericsson v. Andrea Mariotti, WIPO Case No. DRO2010-0008 and cases cited therein.
The disputed domain name was created in 2015 and incorporates the ERICSSON trademark together with the non-distinctive term "my".
For the above, the Panel finds that the disputed domain name was registered in bad faith, targeting Complainant's trademark.
At the time of filing of the Complaint, the disputed domain name was inactive. As it is well established by the long line of cases from Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the requirement of the Policy of a domain name "being used in bad faith" is not limited to positive actions.
Further, as provided in the Annex 11 to Complaint and uncontested by the Respondent, the disputed domain name was used in the past for sending fraudulent job offer or job appointment letters in which the recipients were asked to provide personal sensitive details, such as full name, home address, birthday, passport number. Sending such letters from an email address comprising the Complainant's well-known trademark, using Complainant's actual employees' names and using a form letterhead that had the appearance of being Complainant's official letterhead, is a clear evidence for this Panel that the Respondent was attempting to pass itself off as the Complainant for obtaining a potential gain for itself and therefore this fact constitutes bad faith use of the disputed domain name.
The Respondent registered the disputed domain name using a privacy shield and did not respond to the Complaint. Given the other circumstances of the case, such behavior may be considered as further evidence of bad faith in registering and using the disputed domain name.
For the above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
For 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 <myericsson.net> be transferred to the Complainant.
Date: July 4, 2016