WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Telefonaktiebolaget L M Ericsson v. Harminder Bhasin Case No. D2009-1709 1. The Parties
Complainant is Telefonaktiebolaget L M Ericsson of Stockholm, Sweden, represented by WRB-IP LLP, United States of America.
Respondent is Harminder Bhasin of Clen Clove, New York, United States of America, represented by Jacobs & Burleigh LLP, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG (“the Domain Name”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2009. On December 15, 2009, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the Domain Name. On December 16, 2009, 1&1 Internet AG transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an email communication to the Complaint on December 21, 2009 confirming that a copy of the Complaint had been sent to the Respondent. The Center verified that the Complaint together with the email communication 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 December 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2010. The Response was filed with the Center on January 11, 2010.
The Center appointed Clive L. Elliott as the sole panelist in this matter on January 22, 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
Complainant is a Swedish corporation with its principal place of business in Stockholm. It is a provider of telecommunications equipment and related services to mobile and fixed network operators globally.
Complainant is the owner of trademark registrations for the ERICSSON mark in many countries as well as being the owner of four registrations for the mark ERICSSON with a three stripe design (the “Mark”) in the United States of America as follows:
1. No. 1,313,196, registered on January 8, 1985
2. No. 1,703,037, registered on July 28, 1992
3. No. 2,665,187, registered on December 24, 2002; and
4. No. 2,676,335, registered on January 21, 2003.
Complainant is also owner of the domain name , which was registered in 1989.
The Domain Name was first created (according to the Registrar's WhoIs) on November 8, 2006 and updated on December 16, 2009. 5. Parties' Contentions A. Complainant
Complainant asserts that it has used the ERICSSON name and Mark in connection with telecommunications goods and services since 1876, and in the United States since 1942. Complainant also asserts that it has been the owner of the domain name since 1989 where it promotes and provides information about its goods and services and telecommunications in general and where its Mark is prominently featured.
Complainant advises that as well as having sold many billions of dollars of ERICSSON branded products and services in the United States alone it has also expended billions of dollars in advertising its products and services under the Mark.
Complainant submits that it has strong rights in the Mark and name due to its long term use of the Mark throughout the world, together with the substantial amount expended in advertising and sales and that this is supported and acknowledged by prior decisions made under the UDRP.
Complainant contends that the Domain Name is confusingly similar to its Mark in that the Domain Name consists of the Complainant's Mark and the generic word “deals4” and submits that the inclusion of the generic term does not defeat the identity or confusing similarity created by use of the Mark. Complainant also submits that in previous UDRP decisions concerning the addition of “deals” to a complainant's mark, the panels found that the addition of the word “deals” to the complainant's trademark does not serve to distinguish the domain name from the complainant's trademark. It provides by way of support references to Huppin's Hi-Fi Photo and Video, Inc. v. AG Distributing, Domains By Proxy, Inc.,WIPO Case No. D2009-0857, and QVC Inc. and ER Marks Inc. v. Unique Boutique, LLC / Domains by Proxy, Inc,WIPO Case No. D2009-0135.
Complainant also contends that the addition of the number “4” as the phonetic equivalent of the word “for” further links the Domain Name to Complainant by indicating that there are deals for Ericsson branded products.
Complainant asserts that the Domain Name home page contains links to sites featuring genuine Ericsson products, and products of the type provided by Ericsson and for which Ericsson is known and believes that this illustrates that the Domain Name refers to and is known as referring to Complainant. This, Complainant submits, would be likely to cause confusion as to the source of goods provided or services rendered at such website, given what Complainant believes is its prior and well established rights in the Mark and name and its reputation as a world-leading provider of telecommunications equipment and services.
Complainant states that there has been no relationship between Respondent and Complainant which would entitle Respondent to use the Mark or name or to register or use the Domain Name. Complainant further states that it has never authorised Respondent to use its Mark or name, and contends that the name “Ericsson” is not a part of Respondent's name or a name by which Respondent is or has been known.
Complainant asserts that because the Domain Name solely offers links to other websites it is not a bona fide offering of goods or services pursuant to paragraph 4(c)(i) and makes reference Accor and SoLuxury HMC v. Domains by Proxy, Inc. and Therese Kerr,WIPO Case No. D2009-0243, where the panel found that the respondent's “conduct is classic domain monetization unconnected with any bona fide supply of goods or services” and contends that this also applies to this case.
Complainant contends that Respondent has not registered the Domain Name for noncommercial or fair use and it is being used to attract Internet users looking for ERICSSON brand products to a website that displays sponsored links to such products and to those of Complainant's competitors, as well as a search icon. Complainant contends that the Domain Name exhibits a pay-per-click (“PPC”) arrangement. It submits that this arrangement is commercial and a revenue generating venture and is unfair. That is, it takes advantage of Complainant's recognition without authorization to lead Internet users to competing products and thereby profiting from the reputation and goodwill of Complainant.
Complainant advises that it wrote to Respondent in June, 2009 requesting that the Domain Name be transferred to Complainant and that Respondent replied in September, 2009 denying liability. Complainant further advises that its attorney wrote a follow up letter to Respondent in September requesting transfer of the Domain Name to which Respondent replied that same month with a further denial of liability and a request for evidence supporting the claim. Complainant advises that thereafter its attorney supplied Respondent with a full statement of facts and law supporting its position and that no reply was then received from Respondent.
Complainant advises that despite the above correspondence the Domain Name was renewed on November 8, 2009 by Respondent. B. Respondent
In its Response, Respondent asserts that it is a well established leader in the field of cellular phone and accessory sales, including sales of Sony Ericcson telephones, and operates from its domain name “”. Respondent states that it is not cybersquatting or attempting to “hold up” the Domain Name to prevent Complainant's use and that it purchased the Domain Name in good faith to use in connection with selling authentic Ericsson cellular telephones and accessories. Respondent states that it has never offered the Domain Name for sale to Complainant or any of its competitors and has just not yet developed the site which it intends to use in connection with its already existing cellular phone and accessory businesses.
Respondent submits that Complainant is trying to monopolise the use of the word “ericsson” even where used fairly and as permitted by law and that its actions constitute a “land grab”.
Respondent acknowledges that whilst Complainant has certain rights in the Mark, that in itself does not grant it any rights to exclude all other uses of “Ericsson”, particularly where used to identify authentic Ericsson goods. Respondent further contends that the Domain Name is not confusingly similar despite having the entire word “ericsson” included in the Domain Name.
Respondent contends that whilst there is no licensing relationship between Complainant and itself, its company sells authentic Ericsson phones through its “” site and that the Domain Name is intended to be used for the same purpose in order to give leverage to its already established lines of trade and business expertise.
Respondent also contends that it resides in the United States and it runs its cellphone and accessory business exclusively in the United States with United States customers, and has done so for more than ten years. Respondent asserts that there is no evidence that it has sold anything but genuine Ericsson telephones and that there is no indication that it will use the Domain Name to do so in the future.
Respondent further asserts that it and Complainant are not competitors but Respondent has a legitimate business selling cellular phones and accessories and that when it sells Ericsson branded goods Complainant also benefits.
Respondent states that the links on the website at its Domain Name are controlled by a third party and that this is common practice when a site is not yet developed. Respondent states that it has not selected the links appearing on the page and they are randomly generated by the service that provides the placeholder. Respondent advises that it has undertaken efforts to disable the placeholder provider's listings on the website and is endeavouring to have all links pointing to the “” Sony Ericsson page, which is its site where it sells genuine Ericsson products. Respondent further advises that this site will remain in this fashion until it can be developed as a stand alone site in the manner in which it seeks to utilize it in connection with Ericsson goods. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has clearly established that it is the owner of the Mark through registration and use of the Mark. ERICSSON is one of the world's leading brands in relation to the provision of telecommunications equipment and related services. This is not disputed by Respondent.
Complainant clearly has strong trademark rights in the Mark.
The Domain Name is confusingly similar to the Mark as it consists of the word “ericsson” and the generic word “deals4”. The inclusion of the generic term does not defeat the identity or confusing similarity created by use of the Mark in its entirety and the addition of the word “deals” to the Mark fails to distinguish the Domain Name from the Mark.
Complainant contends that the addition of the number “4” as the phonetic equivalent of the word “for” further links the Domain Name to Complainant by indicating that there are deals for Ericsson branded products. There is merit in this contention.
For these reasons it is found that the Domain Name is confusingly similar to the Mark, that Complainant has rights in the Mark and that the requirements of paragraph 4(a)(i) of the Policy are thus met. B. Rights or Legitimate Interests
Respondent contends that whilst there is no formal licensing arrangement between the parties that its company sells authentic Ericsson phones through its “” site and accordingly that the Domain Name is being used for entirely legitimate purposes.
The primary issue to be determined under this ground is whether Respondent is entitled to use an admittedly well-known trademark as part of a domain name to sells authentic Ericsson phones. If this is all the Respondent was doing it would, in this Panel's view, be entitled to do so.
Even if the “” site is a legitimate one (as it appears to be) and sells, amongst other things, genuine Ericsson phones, the evidence shows that the Domain Name in the first instance resolves to a webpage or landing site which contains links to numerous other websites. These websites include references to other parties who may or may not be dealing in Ericsson phones. The point however is that it seems that the Domain Name is being used primarily to attract Internet users looking for Ericsson brand products to a website that displays sponsored links to such products but also to a range of third parties including those of Complainant's competitors. Complainant contends that this is simply a PPC arrangement and it is not a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy.
The Panel infers that this is primarily a pay-per-click scheme and first and foremost a case of domain monetization. Further, the Panel concludes that if there is a supply of genuine Ericsson phones this is an incidental or secondary consequence and that the primary purpose of Respondent's website is to generate PPC revenue in accordance with this now well-established practice.
On this basis the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant thus succeeds in meeting the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that Respondent has registered and has used the Domain Name in bad faith.
Respondent asserts that the links on the website at its Domain Name are controlled by a third party and that the links appearing on the page are randomly generated by the service that provides the placeholder. Respondent further asserts that it has undertaken efforts to disable the placeholder provider's listings on the website and to have all links pointing to the “” Sony Ericsson page.
Regardless of what Respondent intends to do in the future to ameliorate the position the Panel is obliged to look at the evidence before it. For the reasons set out above the Panel is unable to accept Respondent's arguments and concludes that the Domain Name was registered and used in bad faith. On this basis, Complainant has satisfied paragraph 4(a)(iii) of the Policy. 7. Decision
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, be transferred to Complainant.
Clive L. Elliott
Sole Panelist
Dated: February 19, 2010
Full & Egal Universal Law Academy