WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Telefonaktiebolaget L M Ericsson v. Ericsson, John Case No. D2010-0705 1. The Parties
The Complainant is Telefonaktiebolaget L M Ericsson of Stockholm, Sweden, represented by WRB-IP LLP, United States of America.
The Respondent is Ericsson, John of San Antonio, Texas, United States, represented by Sharee Varelas, United States. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2010. On May 5, 2010, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On the same day, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2010. The Response was filed with the Center on May 29, 2010.
The Center appointed Alistair Payne as the sole panelist in this matter on June 7, 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
The Complainant is a well known worldwide provider of telecommunications equipment and related services. It has traded since 1876 and commenced business in the United States in the 1940's. It owns numerous trade mark registrations, including in the United States, a combined word and device mark featuring its ERICSSON mark registration number 1,313,196 and a word mark registration for ERICSSON under registration number 2,665,187. The Complainant also owns the domain name and operates a website from this address. 5. Parties' Contentions A. Complainant
The Complainant asserts that it owns registered trademark rights in its ERICSSON mark as set out above and that the Disputed Domain Name is identical or confusingly similar to its ERICSSON trade mark.
The Complainant submits that it has not authorised or permitted or licensed the Respondent to register or use the Disputed Domain Name. It says that there is no evidence to suggest that the Respondent uses or has made demonstrable preparations to use the Disputed Domain name in relation to an offering of bona fide goods or services in circumstances that the website to which the Disputed Domain Name resolves is a sponsored links site in relation to goods or services which are the same or related to those offered by the Complainant.
The Complainant further submits that the Respondent has no United States registered trademark rights in any mark identical or confusingly similar to the Disputed Domain Name and although the Respondent asserts that the Disputed Domain Name is owned by an individual, John Ericsson, there is evidence and circumstances to suggest that no such individual made the registration, or if he did, that it was done so in an attempt to legitimize a bad faith registration.
As far as bad faith is concerned, the Complainant says that the circumstances of this case, including the passive holding of the Disputed Domain Name with a placekeeper site, the comparatively recent registration of the Disputed Domain Name is indicative of bad faith. The Complainant notes in particular that the contact email address of the administrative contact of the registrant, John Ericsson, appears to be the email address of one R. Wells with whose company the Complainant has had previous business dealings and which in particular had been hired as an independent contractor on certain projects to assemble and test some of the Complainant's systems prior to their installation, as set out in a prior complaint, namely Telefonaktiebolaget LM Ericsson v. Dailey Wells Comm, WIPO Case No. DCC2006-0005, involving the domain name . The Complainant says that this assumption is only confirmed by checking the details of the administrative contact's physical address which also appears to be the address of R. Wells' company
The Complainant believes that in all the circumstances based on its past dealings with Mr Wells, the failure of Mr Ericsson to respond to the Complainant's prior correspondence concerning the Disputed Domain Name and the lack of any evidence of the existence of John Ericsson that the registrant of the Disputed Domain Name is in fact Mr Wells. The Complainant says that in all the circumstances the only logical conclusion that it can draw is that R. Wells and its company, disgruntled first by a loss of work from Ericsson and then by Ericsson's success in Telefonaktiebolaget LM Ericsson v. Dailey Wells Comm, supra, registered yet another domain name confusingly similar to the Complainant's mark, just as soon as the “.pro” suffix was re-launched, for the obvious purpose of punishing the Complainant for its “carelessness,” and disrupting the Complainant's business by preventing it from holding and using the Disputed Domain Name. B. Respondent
It is asserted on behalf of the Respondent that John Ericsson is indeed an individual who is a professional photographer and is the bona fide owner of the Disputed Domain Name. It is submitted that as the Respondent operates in a completely different field of activity there is no competition with the Complainant's goods or services and therefore the Disputed Domain Name is not confusingly similar to the Complainant's ERICSSON trademark.
The Respondent submits that “Ericsson” is a common surname with many entries in the relevant phonebook and that he has a legitimate interest in respect of the Disputed Domain Name by virtue of his photography business as demonstrated on the business card annexed to the Response. He maintains that he is as a result entitled to own the Disputed Domain Name.
As far as bad faith is concerned the Respondent says that he did not register and has not used the Disputed Domain Name in bad faith. He says that his photography website is under development by a webmaster and in the meantime he is entitled to have a placekeeper site which was in fact provided by Network Solutions. He says that he is happy to remove any material or links from the site to which the Complainant may object.
The Respondent expressly denies that R. Wells is the real person behind the Disputed Domain Name and says that Mr Wells in fact provides communication and Internet services and was his service provider on this occasion. The Respondent further submits that in the prior dispute concerning the domain name , Mr Wells' company in fact acquired the domain name in dispute in that case on behalf of Mr Ericsson's family for the purposes of a genealogy site. In the present case, the Disputed Domain Name was not acquired for personal reasons but for the purposes of the Respondent's profession.
Overall the Respondent says that he did not acquire the Disputed Domain Name in order to create a likelihood of confusion and thereby to attract Internet users to his website nor did he acquire the Disputed Domain Name for the purpose of disrupting the Complainant's business. The Respondent says that the Complaint is overreaching and is attempting to use trademark law to gain a monopoly in the “Ericsson” surname. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Complainant has demonstrated that it owns numerous registered trademark rights in the United States and elsewhere for its ERICSSON trade mark, including those noted above. The Disputed Domain Name is identical to the Complainant's ERICSSON trade mark it being well established that the “.pro” suffix is not to be taken into account in this regard.
As a result the Panel finds that the Complainant has fulfilled the first element under the Policy. B. Rights or Legitimate Interests
Under the Policy the Complainant is required to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and it is then for the Respondent to rebut this case.
The Complainant says that this has not authorised or otherwise permitted the use of its trademark by the Respondent. The core issue under this element of the Policy is therefore whether in all the circumstances the Panel accepts that the Respondent is in fact Mr John Ericsson, a professional photographer who has registered his own name for professional reasons under the “.pro” domain name space. If it does, then subject to an assessment of the links at the website to which the Disputed Domain Name resolves, it may be that the Complainant has not made out the prima facie case required of it under this element of the Policy.
The Complainant says that all the circumstances indicate that the Respondent is really Mr Wells. The basis of the Complainant's submission is that the email address of the administrative contact for the Disputed Domain Name belongs to Mr Wells, the administrative contact's physical address also appears to be Mr Well's address and the past history of dispute between the parties, both in relation to the previous domain name dispute Telefonaktiebolaget LM Ericsson v. Dailey Wells Comm, supra, concerning the domain name and their past business dealings.
In the Panel's view there are distinct similarities and parallels between the circumstances in this case and those in Telefonaktiebolaget LM Ericsson v. Dailey Wells Comm, supra, in which Mr Wells'company was the Respondent. Combined with the coincidence of the listed email and physical addresses to Mr Wells' addresses, it seems to the Panel that there is at the least a prima facie case to be answered by the Respondent as to whether it is in fact Mr Wells, or is associated with Mr Wells and is acting upon his behalf.
The Respondent's case is that he is a professional photographer and is legitimately entitled to register his own surname “Ericsson” as a domain name in the “.pro” domain space and has a webmaster currently developing a website for the purposes of his photography business. However the only evidence submitted to support this assertion is a copy of a business card together with a copy of the many telephone listings of people with a surname of “Ericsson”. In the Panel's view it is not unreasonable to expect that a bona fide professional photographer would have been able to provide more credible supporting evidence, such as his own telephone listing, relevant details of his business history including promotional materials, testimonials of clients or possibly copies of documents officially filed pertaining to his business. However none of this sort of evidence was provided by this Respondent.
For this reason the Panel considers that the Respondent has not rebutted the Complainant's prima facie case and in all the circumstances the Panel is inclined to infer that the Respondent is on the balance of probabilities either Mr Wells, or is acting upon Mr Wells' behalf as submitted by the Complainant.
As a result the Panel finds that the Respondent is illegitimately using the Ericsson surname as its justification for registering the Disputed Domain Name and has no rights or legitimate interests for the purposes of the second element of the Policy. C. Registered and Used in Bad Faith
Considering the Panel's finding under element 2 above, it follows that in the Panel's view the Respondent registered the Disputed Domain Name in bad faith.
As far as use in bad faith is concerned the Panel notes that since registration in September 2008, the Disputed Domain Name does not appear to have been used actively and resolves to a passive placekeeper site containing links to goods and services that compete with those of the Complainant. In addition there is no firm evidence of record or otherwise to suggest that the Respondent has a bona fide site under construction.
As set out by the Panel in Telefonaktiebolaget LM Ericsson v. Dailey Wells Comm, supra, it is well established by the long line of cases following Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 that the passive holding of a domain name registered in bad faith is use in bad faith for the purposes of the Policy.
Accordingly, the Panel finds that the Disputed Domain Name has been both registered and used in bad faith and that the Complaint succeeds under the third element 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 the Complainant.
Alistair Payne
Sole Panelist
Dated: June 16, 2010
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