ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Telefonaktiebolaget LM Ericsson v. eryuesheng song Case No. D2024-0019 1. The Parties Complainant is Telefonaktiebolaget LM Ericsson, Sweden, represented by CSC Digital Brand Services Group AB, Sweden. Respondent is eryuesheng Song, China. 2. The Domain Name and Registrar The disputed domain name (the “Domain Name”) is registered with Fujian Domains, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2024. On January 4, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 11, 2024, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On January 12, 2024, the Center informed the parties in Chinese and English, that the language of the registration agreement for the Domain Name is Chinese. On January 12, 2024, Complainant requested English to be the language of the proceeding and filed an amended Complaint in English on the same day. Respondent did not submit any comment on Complainant’s submission. 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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on January 19, 2024. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 9, 2024.
page 2 The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on February 14, 2024. 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 was founded in 1876, and provides communication technology and services, including software and infrastructure information and communications technology (“ICT”) for telecommunications operators, traditional telecommunications and Internet Protocol (“IP”) networking equipment, mobile and fixed broadband, operations and business support services, cable television, IPTV, video systems, and an extensive services operation. Complainant alleges that it employs over 103, 000 employees worldwide, across six continents. In the second quarter of 2023, Complainant obtained net sales of SEK 64.4 billion, with a gross income of SEK 24.1 billion. Complainant owns numerous registered trademarks for the ERICSSON mark across various jurisdictions, including: - Chinese registered trademark number 777245 for the ERICSSON word mark, registered on February 7, 1995; - Chinese registered trademark number 3124284 for the ERICSSON word mark, registered on June 28, 2003; - Chinese registered trademark number 3152775 for the ERICSSON word mark, registered on August 21, 2003; - United States of America registered trademark number 1313196 for the ERICSSON word mark, registered on January 8, 1985; and - European Union registered trademark number 000107003 for the ERICSSON word mark registered on March 23, 1999. Complainant also owns and operates its primary website at , which was registered in 1989. The Domain Name was registered on August 14, 2023 and at the time of the filing of the Domain Name, redirected to a website that displayed adult content. At the time of the Decision, the Domain Name resolves to an inactive or error page. Complainant sent a cease-and-desist letter to Respondent on November 24, 2023, explaining its intellectual property rights, requesting Respondent to stop using the Domain Name and to transfer the Domain Name to Complainant. Respondent did not respond. Complainant then filed the current Complaint. 5. Parties’ Contentions A. Complainant Complainant contends that (i) the Domain Name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith. In particular, Complainant contends that it has trademark registrations for ERICSSON and that Respondent registered and is using the Domain Name with the intention to confuse Internet users looking for bona fide and well-known ERICSSON products and services.
page 3 Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s trademarks, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Procedural Issue – Language of the Proceeding The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. Complainant requested that the language of the proceeding be English. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese. Complainant asserted that they are unable to communicate in Chinese, that the Domain Name is comprised of Latin characters, that Complainant’s ERICSSON, which is the dominant portion of the Domain Name, does not have any specific meaning in the Chinese language, that Respondent is using the Domain Name which is confusingly similar to Complainant’s ERICSSON trademarks and targeting consumers seeking Complainant or its products. Complainant also had previously sent a cease-and-desist letter to Respondent, and Respondent did not respond despite ample time and opportunity for responding or indicating that communication should be in Chinese. Complainant also contends that any holding the proceeding in Chinese would cause undue delay, considerable expense, unfair disadvantage, and burden Complainant as well as the dispensation of the current matter. In exercising its discretion to use a language other than that of the Registration Agreement for the Domain Name, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time, and costs. The Panel takes note of the fact that the Domain Name is registered in Latin characters. The Panel also notes that the Center notified the Parties in Chinese and English of the language of the proceeding as well as notified Respondent in Chinese and English of the Complaint. Respondent chose not to respond to the case-and-desist letter, comment on the language of the proceeding nor did Respondent choose to file a Response. The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost-effective manner. Complainant may be unduly disadvantaged by having to translate the Complaint into Chinese and to conduct the proceeding in Chinese. Having considered all the circumstances of this case, the Panel determines that English be the language of the proceeding.
page 4 6.2. Substantive Issues Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name was registered and is being used in bad faith. Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that failure to respond to the complainant’s contentions 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, although in this case Respondent has failed to respond to the Complaint, 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 trademark registration is generally sufficient evidence that a 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 provided evidence of its rights in the ERICSSON trademarks, as noted above. Complainant has therefore proven that it has the requisite rights in the ERICSSON trademarks. With Complainant’s rights in the ERICSSON trademark established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s trademark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. Here, the Domain Name is confusingly similar to Complainant’s ERICSSON trademarks. The addition of a hyphen followed by the letters “-ma”, does not prevent a finding of confusing similarity between the Domain Name and the ERICSSON trademark as it is recognizable in the Domain Name. WIPO Overview 3.0, section 1.8. Thus, the Panel finds that Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make a prima facie showing that a 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 a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with relevant evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. From the record in this case, it is evident that Respondent does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not authorized or licensed to use the ERICSSON trademarks or to seek registration of any domain name incorporating the trademarks. Respondent is also not known to be associated with the ERICSSON trademarks and there is no evidence showing that Respondent has been commonly known by the Domain Name.
page 5 In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that at the time of the filing of the Complaint, the Domain Name resolved to a page featuring adult or pornographic content, which had no connection with the term “ericsson”. At the time of the Decision, the Domain Name resolves to an inactive or error page. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875. Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” The Panel finds that the available evidence on record shows that registration and use of the ERICSSON trademarks predate the registration of the Domain Name. Complainant is also well established and known in the automobile industry. Indeed, Complainant’s ERICSSON trademarks and related products and services are widely known and recognized. Therefore, Respondent was likely aware of the ERICSSON trademarks when he registered the Domain Name. See WIPO Overview 3.0, section 3.2.2; and see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973. The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007. Further, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a
page 6 descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. Moreover, Respondent registered and is using the Domain Name to confuse and mislead consumers looking for well-known ERICSSON products and services of Complainant or authorized partners of Complainant. The use of the ERICSSON trademarks in the Domain Name is intended to capture Internet traffic from Internet users who are looking for Complainant’s products and services. The use of the Domain Name to divert Internet users to the webpage with adult or pornographic content, for commercial gain, by creating a likelihood of confusion with the Complainant’s marks is in bad faith. Furthermore, the content provided on the website the Domain Name reverted to, may result in tarnishing Complainant’s reputation. Finally, the Panel also notes the failure of Respondent to submit a response to the cease-and-desist letter and to the Complaint. Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) of the Policy. 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 Domain Name be transferred to Complainant. /Kimberley Chen Nobles/ Kimberley Chen Nobles Sole Panelist Date: February 18, 2024
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