The Complainant is Telefonaktiebolaget LM Ericsson, Sweden, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Aha Tek, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2021. On August 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 26, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 28, 2021, 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 August 31, 2021.
The Center verified that the Complaint together with 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 September 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2021.
The Center appointed Jeremy Speres as the sole panelist in this matter on October 28, 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 BackgroundThe uncontested facts are as follows. The Complainant was founded in 1876, and is a leading provider of communication technology and services around the world. In the third quarter of 2020, the Complainant achieved net sales of SEK 57.5 billion and an operating income of SEK 8.6 billion. The Complainant employs over 99,000 employees worldwide, across six continents.
The Complainant has registered its ERICSSON mark in many jurisdictions including in the Respondent’s home territory of the United States. Most relevant for this matter is United States Patent and Trademark Office registration number 2665187 ERICSSON in classes 9, 16, 35, 36, 37, 38, 41, and 42, which proceeded to registration on December 24, 2002.
The Domain Name was registered on January 31, 2019 and, as at the filing of the Complaint and the drafting of this Decision, resolved to the Complainant’s “Ericsson ConsumerLab” website at “www.ericsson.com/en/reports-and-papers/consumerlab”.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the Domain Name is confusingly similar to its ERICSSON mark, that the Respondent has no rights or legitimate interests in it, and the Domain Name was registered and has been used in bad faith given that the Respondent must have had the Complainant in mind when registering and commencing use of the Domain Name in light of the Domain Name’s redirection to the Complainant’s website. The Complainant also contends that there is a strong likelihood of the Domain Name being used for phishing or other fraud given the presence of mail exchange (“MX”) records in the Domain Name System (“DNS”).
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarWhere the trade mark is recognisable in the domain name, the addition of other terms does not prevent a finding of confusing similarity (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.8). The Complainant’s mark is the first and most distinctive element of the Domain Name, and the remainder, apart from the generic Top-Level Domain (“gTLD”), consists of the common word “lab” which does not prevent a finding of confusing similarity under the first element. The Complainant has satisfied the standing requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Complainant’s mark was registered and well known in many territories, including in the Respondent’s territory, long prior to registration of the Domain Name, as confirmed in numerous UDRP cases (e.g. Telefonaktiebolaget L M Ericsson v. Dailey Wells Comm,WIPO Case No. DCC2006-0005).
The Domain Name is confusingly similar to the Complainant’s mark, the Complainant has certified that the Domain Name is unauthorised by it, the Respondent did not file a Response, and there is no evidence that any of the circumstances set out in paragraph 4(c) of the Policy pertain. The only evidence of use of the Domain Name is its redirection to the Complainant’s website. In MySpace, Inc. v. Mari Gomez,WIPO Case No. D2007-1231, the panel held that this type of use cannot confer rights or legitimate interests under any of the provisions of paragraph 4(c) of the Policy, or more broadly, given that the Respondent’s use is neither a legitimate business in the Respondent’s hands nor a legitimate noncommercial fair use, amounting only to a pointer to the Complainant’s own legitimate business use. See alsoWIPO Overview 3.0 at section2.5.3; and Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records,WIPOCase No. D2017-2533.
Moreover, the Domain Name, which is composed of the Complainant’s ERICSSON mark in its entirety plus the word “lab” that is related to the Complainant’s business, carries a risk of implied affiliation with the Complainant. See alsoWIPO Overview 3.0 at section2.5.1.
The Complainant has thus made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name, the burden of production shifts to the Respondent (WIPO Overview 3.0 at section 2.1), and given that no Response was filed, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithUDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith (WIPO Overview 3.0 at section 3.1.4). That presumption is not rebutted here.
The redirection of the Domain Name to the Complainant’s website establishes actual knowledge and targeting of the Complainant. UDRP panels have found that a respondent redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant (WIPO Overview 3.0 at section 3.1.4). Further, there is a high risk that the Respondent may at any time cause Internet traffic to redirect to a website that is not that of, or associated with, the Complainant (MySpace, Inc. v. Mari Gomez, supra) and may increase customer confusion that the Domain Name is somehow licensed or controlled by the Complainant (PayPal Inc. v. Jon Shanks,WIPO Case No. D2014-0888). Paragraph 4(b)(iv) of the Policy is therefore applicable.
The potential for fraud is self-evident, especially given that the Complainant has offered a market research service under the “Ericsson ConsumerLab” for many years, commencing long prior to the registration of the Domain Name, with the Domain Name being confusingly similar to that mark and in fact redirecting to the website for that service offering. The Complainant has presented evidence that the Domain Name has been configured with MX records in the DNS enabling use for email. In the circumstances, there would appear to be no conceivable benefit to the Respondent to be gained by registration and use of the Domain Name in this way other than through some bad faith activity such as phishing (W.W. Grainger, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Daniel Thomas,WIPO Case No. D2020-1740).
The Panel draws adverse inferences from the Respondent’s use of a privacy protection service (WIPO Overview 3.0 at section 3.6) and the Respondent’s failure to take part in the present proceeding where an explanation is certainly called for (WIPO Overview 3.0 at section 4.3).
The Complainant has satisfied paragraph 4(a)(iii) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Jeremy Speres
Sole Panelist
Date: November 11, 2021