WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Telefonaktiebolaget LM Ericsson v. Jade Allen, BrandBookie

Case No. D2020-3513

1. The Parties

Complainant is Telefonaktiebolaget LM Ericsson, Sweden, represented by CSC Digital Brand Services AB, Sweden.

Respondent is Jade Allen, BrandBookie, Australia.

2. The Domain Names and Registrar

The disputed domain names <ericssonphone.com>, <telefonaktiebolaget.com> and <telefonaktiebolagetlmericsson.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2020. On December 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 28, 2020, the Registrar transmitted by email to the Center its verification response.

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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 26, 2021. On February 18, 2021, due to an apparent issue with the notification, the Center granted the Respondent a five day period in which to indicate whether it wished to participate to this proceeding. The Center did not receive any communication from the Respondent.

The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on March 8, 2021. 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 is a provider of communication technology and services around the world. Complainant trades under the company name “Telefonaktiebolaget LM Ericsson” and offers most of its services under the TELEFONAKTIEBOLAGET L.M. ERICSSON and ERICSSON marks (“ERICSSON Marks” or “Complainant’s Marks”). Complainant employs over 99,000 employees worldwide, is listed on the New York and Stockholm NASDAQ indexes and generated over SEK 57 billion (approximately USD 6.7 billion) in 2020. Complainant owns multiple trademark registrations around the world for its TELEFONAKTIEBOLAGET L.M. ERICSSON mark, including Swedish registration numbers 37953 and 37156 (respectively registered on December 2, 1930 and June 3, 1930), and its ERICSSON mark, including Australian registration number 322638 (registered on October 3, 1978) and European Union registration number 000107003 (registered on March 23, 1999). Complainant also operates the website located at its primary domain name, <ericsson.com>, which was registered in 1989.

The disputed domain names <ericssonphone.com> and the <telefonaktiebolagetlmericsson.com> were registered on August 25, 2020, and the disputed domain name <telefonaktiebolaget.com> was registered on July 24, 2020. The disputed domain name <ericssonphone.com> previously resolved to a website containing various pay-per-click links (“PPC links”) relating to goods and services similar to those offered under Complainant’s Marks but now resolves to a parked page devoid of any content. The disputed domain names <telefonaktiebolaget.com> and <telefonaktiebolagetlmericsson.com> previously resolved to parked pages containing similar PPC links but now redirect users to Complainant’s website located at its <ericsson.com> domain name.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain names <ericssonphone.com> and <telefonaktiebolagetlmericsson.com> are confusingly similar to its TELEFONAKTIEBOLAGET L.M. ERICSSON and ERICSSON trademarks because they reproduce identically and entirely the TELEFONAKTIEBOLAGET L.M. ERICSSON or ERICSSON marks. Complainant argues that the omission of the full stops and spaces in the <telefonaktiebolagetlmericsson.com> disputed domain name and the addition of the term “phone” in <ericssonphone.com> do nothing to dispel the confusing similarity between these disputed domain names and Complainant’s Marks. Furthermore, Complainant alleges that the disputed domain name <telefonaktiebolaget.com> is also confusingly similar to Complainant’s TELEFONAKTIEBOLAGET L.M. ERICSSON mark despite the domain’s omission of “L.M. Ericsson”. Complainant argues that his omission does not alter the fact that the disputed domain name is confusingly similar to Complainant’s TELEFONAKTIEBOLAGET L.M. ERICSSON mark since the disputed domain name still incorporates a significant portion of this mark and of Complainant’s “Telefonaktiebolaget LM Ericsson” trade name.

Complainant also alleges that Respondent has no rights or legitimate interests in the disputed domain names. Complainant contends that there is no evidence that Respondent used or engaged in demonstrable preparations to use the disputed domain names in connection with bona fide offerings of goods and services. Complainant also alleges that there is no evidence that Respondent is commonly known by any of the disputed domain names nor making legitimate noncommercial or fair use of them. Complainant argues that using the disputed domain names to display PPC links relating to goods and services which directly compete with Complainant’s business and to redirect Internet users to Complainant’s website cannot be considered bona fide offerings of goods and services nor a legitimate noncommercial or fair use.

Lastly, Complainant contends that the disputed domain names were registered and are being used in bad faith. Complainant argues that Respondent must have had actual or constructive knowledge of Complainant’s rights in the TELEFONAKTIEBOLAGET L.M. ERICSSON and ERICSSON trademarks given their incorporation in the disputed domain names, the existence of active trademark registrations for each of Complainant’s Marks, and the worldwide notoriety of Complainant’s trademarks. Furthermore, according to Complainant, the fact that the disputed domain names merely resolve to Complainant’s website or display PPC links relating to goods and services that directly compete with Complainant’s business further demonstrates Respondent’s bad faith use.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Preliminary Issue: Consolidation of Domain Name Disputes

Paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. The record shows that Respondent is the registrant for all three disputed domain names. The Panel therefore finds that consolidation of the disputed domain names <ericssonphone.com>, <telefonaktiebolaget.com> and <telefonaktiebolagetlmericsson.com> into this single proceeding is appropriate.

6.2. Substantive Issues

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names were registered and are being used in bad faith.

Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:

“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?

Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

A. Identical or Confusingly Similar

Ownership of a nationally registered trademark registration constitutes prima facie evidence that complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the TELEFONAKTIEBOLAGET L.M. ERICSSON and ERICSSON trademarks through its national and international registrations.

With Complainant’s rights in the TELEFONAKTIEBOLAGET L.M. ERICSSON and ERICSSON trademarks established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the Top-Level Domain (“TLD”) in which each domain name is registered) are identical or confusingly similar to Complainant’s Marks. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” WIPO Overview 3.0, section 1.7. It is well established that a domain name that wholly incorporates a trademark is confusingly similar to that trademark for purposes of the Policy despite the addition of a word. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795. As stated in section 1.8 of the WIPO Overview 3.0, “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” See Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.

Furthermore, panels have taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name. WIPO Overview 3.0, section 15.

Here, Complainant’s TELEFONAKTIEBOLAGET L.M. ERICSSON and ERICSSON marks are fully incorporated in the disputed domain names <ericssonphone.com> and <telefonaktiebolagetlmericsson.com>. The omission of the full stops and spaces in the former and the addition of the term “phone” in the latter do nothing to prevent a finding of confusing similarity under the first element. Furthermore, the disputed domain name <telefonaktiebolaget.com> partially incorporates the TELEFONAKTIEBOLAGET L.M. ERICSSON mark, simply omitting the “L.M. Ericsson” elements of the mark but identically incorporating the first element of the mark, TELEFONIKTIEBOLAGET. The fact that the disputed domain name <telefonaktiebolaget.com> also redirects to Complainant’s main website at the <ericsson.com> domain name further supports the confusing similarity between this disputed domain name and Complainant’s TELEFONAKTIEBOLAGET L.M. ERICSSON mark. Id; see also Bayerische Motoren Werke AG (“BMW”) v. Registration Private, Domains By Proxy, LLC / Armands Piebalgs, WIPO Case No. D2017-0156 (“[m]oreover, whereas in the case of the latter Disputed Domain Names the mark is not present in its entirety, the content at the corresponding website serves to affirm a finding of confusing similarity.”).

The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain names are confusingly similar to Complainant’s TELEFONAKTIEBOLAGET L.M. ERICSSON and/or ERICSSON marks.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, complainant must make at least a prima facie showing that respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once complainant makes such a prima facie showing, the burden of production shifts to respondent, though the burden of proof always remains on complainant. If respondent fails to come forward with evidence showing rights or legitimate interests, complainant will have sustained its burden under the second element of the UDRP.

Paragraph 4(c) of the Policy lists the ways that respondent may demonstrate rights or legitimate interests in the disputed domain name:

(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or

(iii) respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not using the disputed domain names in connection with any bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of them.

All three disputed domain names originally resolved to a parked page containing PPC links relating to goods that directly compete with the goods Complainant sells under its ERICSSON Marks. Displaying links selling products highly similar to those being sold under Complainant’s Marks through the disputed domain names (and in particular noting <ericssonphone.com> and <telefonaktiebolagetlmericsson.com> incorporate the Complainant’s Marks in their entirety), clearly shows that Respondent is attempting to capitalize on the goodwill and reputation of Complainant’s Marks and not for any bona fide offering of goods and services or noncommercial or fair use. See WIPO Overview 3.0, section 2.9. Furthermore, the disputed domain names <telefonaktiebolaget.com> and <telefonaktiebolagetlmericsson.com> now redirect users to Complainant’s website at <ericsson.com>. This is clear indicia of cybersquatting intent, which categorically cannot be considered as a bona fide offering of goods and services. Lastly, there is no evidence that the disputed domain name <ericssonphone.com> was being used in connection with any bona fide offering of goods and services after it stopped resolving to a parked page containing PPC links. There is also no evidence on record suggesting that Respondent is commonly known by the disputed domain names.

Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed or permitted Respondent to use Complainant’s Marks in any way, or otherwise rebutted Complainant’s allegations and evidence, and therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain names within the meaning of Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4b(ii) of the Policy states that bad faith use and registration can be found when respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct. UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. WIPO Overview 3.0, section 3.1.2. This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner.

The Policy also indicates in paragraph 4(b)(iv) that bad faith registration and use can be found when, by using a disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. “Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for respondent’s commercial benefit, even if unsuccessful, (iii) the lack of respondent’s own rights or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use.” WIPO Overview 3.0, section 3.1.4.

In this case, bad faith can be found in the registration and use of the disputed domain names. Complainant provided ample evidence to show the widespread use of the TELEFONAKTIEBOLAGET L.M. ERICSSON and ERICSSON marks that predates Respondent’s registration of the disputed domain names. Therefore, Respondent was likely aware of the TELEFONAKTIEBOLAGET L.M. ERICSSON and ERICSSON trademarks when he or she registered the disputed domain names, or knew or should have known that they were identical or confusingly similar to Complainant’s Marks. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973. Furthermore, the disputed domain names are clearly targeting Complainant’s Marks since they either fully incorporate Complainant’s Marks or a significant portion of them. Furthermore, all three disputed domain names resolved to websites displaying PPC links selling goods and services similar or identical to those covered by Complainant’s Marks. This is clear evidence that Respondent is using the disputed domain names, which are confusingly similar to Complainant’s Marks, to attract Internet users, for commercial gain, to Respondent’s websites, by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or of a product or service on Respondent’s websites. Furthermore, the disputed domain names <telefonaktiebolaget.com> and <telefonaktiebolagetlmericsson.com> currently redirect to Complainant’s primary website located at the <ericsson.com> domain name. Panels have found that using a domain name confusingly similar to a complainant’s trademark(s) to redirect to complainant’s website supports a finding that respondent registered and used the domain name in bad faith. WIPO Overview 3.0, section 3.1.4.

Respondent has also engaged in a clear pattern of registrations targeting Complainant’s Marks. Respondent registered the disputed domain names <telefonaktiebolagetlmericsson.com> and <telefonaktiebolagetlmericsson.com> on August 25, 2020 and the disputed domain name <ericssonphone.com> on July 24, 2020. The registration of multiple domain names incorporating Complainant’s Marks constitutes a clear pattern of conduct aimed at preventing Complainant from reflecting its marks in corresponding domain names under Paragraph 4(b)(ii) of the Policy. See also Salvatore Ferragamo S.p.A v. Ying Chou, WIPO Case No. D2013-2034.

For these reasons, the Panel finds that Respondent registered and used the disputed domain names in bad faith.

7. Decision

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 names, <ericssonphone.com>, <telefonaktiebolaget.com>, and
<telefonaktiebolagetlmericsson.com> be transferred to Complainant.

Brian J. Winterfeldt
Sole Panelist
Date: March 22, 2021