ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Telefonaktiebolaget LM Ericsson v. 苏剑锋 (su jian feng) Case No. D2024-3573 1. The Parties Complainant is Telefonaktiebolaget LM Ericsson, Sweden, represented by CSC Digital Brand Services Group AB, Sweden. Respondent is 苏剑锋 (su jian feng), China. 2. The Domain Name and Registrar The disputed domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2024. On September 4, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 5, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (“no information”) and contact information in the Complaint. The Center sent an email communication to Complainant on September 6, 2024 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in English on September 10, 2024. On September 6, 2024, the Center informed the Parties in Chinese and English, that the language of the Registration Agreement for the disputed domain name is Chinese. On September 10, 2024, Complainant requested English to be the language of the proceeding. 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”).
page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent in Chinese and English of the Complaint, and the proceedings commenced on September 13, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 7, 2024. The Center appointed Yijun Tian as the sole panelist in this matter on October 15, 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 A. Complainant Complainant, Telefonaktiebolaget LM Ericsson, is a company incorporated in Sweden. Founded in 1876, it is a global leader in communication technology and services. It provides ICT solutions, including software, infrastructure, and services for telecommunications operators, mobile and fixed broadband, IP networking, IPTV, and video systems. In Q2 2023, Complainant reported net sales of SEK 64.4 billion and a gross income of SEK 24.1 billion. Complainant has exclusive rights in the ERICSSON and ERICSSON related marks. Complainant is the owner of numerous ERICSSON trademarks worldwide, including the Chinese trademark registered on February 7, 1995 (the Chinese Trademark registration number 777245), and the Australian trademark registered on October 3, 1978 (the Australian Trademark registration number 322638). B. Respondent Respondent is 苏剑锋 (su jian feng), China. The disputed domain name was registered by Respondent on September 23, 2023. According to the Complaint and the evidence provided by Complainant, the disputed domain name previously resolved to a website purporting to sell communication devices and valves from various brands including those from the Complainant. The website also includes a copyright notice that states: “Powered By OpenCart EMERSON-ONLINE @ 2024.” 5. Parties’ Contentions A. Complainant Complainant contends that the disputed domain name is confusingly similar to Complainant’s ERICSSON trademark. The disputed domain name incorporates the ERICSSON trademark in its entirely. The mere addition of simply adding a hyphen and the generic term “global” does not provide adequate distinction to negate the conclusion that the disputed domain name is confusingly similar to the trademark ERICSSON. Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant contends that the disputed domain name was registered and is being used in bad faith. Complainant requests that the disputed domain name be transferred to it.
page 3 B. Respondent Respondent did not reply to Complainant’s contentions. However, Respondent replied to Complainant’s cease-and-desist letter on December 11, 2023, indicating “our company mainly sells various brand communication related products, including the Ericsson brand, which has no impact on this brand. At the same time, online display is also beneficial for the brand’s value enhancement and better brand awareness enhancement”. Respondent further indicated that “if you are interested in this domain name and have an intention to acquire it, you can tell me how much money you plan to spend on the acquisition, so that I can submit your application to our company and give a response”. On December 19, 2024, Complainant reiterated its policy against unauthorized third-party domain name registrations containing its trademarks, and requested Respondent to transfer the disputed domain name to it and indicated it would reimburse Respondent’s out-of-pocket registration fees. No further communication was received from Respondent. 6. Discussion and Findings 6.1. Language of the Proceeding The language of the Registration Agreements for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint and amended Complaints in English, and has requested that English be the language of the proceeding for the following main reasons: (a) Complainant cannot communicate in Chinese, and translating the Complaint would create an unfair burden and delay. (b) Any delay, given the abusive nature of the disputed domain name promoting ERICSSON branded and competing products, risks further harm to Complainant and consumers. (c) The disputed domain name is in Latin characters. (d) The previous website used English phrases like “B.W Industry is on-line exporter, we dealing name brand communication power supply and brand valves”. (e) The term “ericsson”, the dominant part of the disputed domain name, has no specific meaning in Chinese. (f) Respondent replied to Complainant’s cease-and-desist letter in English, showing they can communicate in English. (g) Respondent’s conduct and past case precedents, it is appropriate for the proceeding to be in English to avoid further burden on Complainant. Respondent did not make any submissions with respect to the language of the proceeding. In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all
page 4 relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1). On the record, Respondent appears to be located in China and thus presumably not a native English speaker, but considering the following aspects, the Panel has decided that the language of the proceeding shall be English: (a) the disputed domain name is registered in Latin characters, particularly in English (e.g., English word “global”), rather than Chinese script; (b) the generic Top-Level Domain (“gTLD”) of the disputed domain name is “.com”, so the disputed domains name seems to be prepared for users worldwide, particularly English speaking countries; (c) Respondent replied to Complainant’s cease-and-desist letter in English (Annex 10 to the Complaint); (d) the Center has notified Respondent of the language of the proceeding in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; (e) the Center also notified Respondent in both Chinese and English of the Complaint, and informed Respondent that it would accept a response in either English or Chinese, but Respondent chose not to file any response. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.2. Substantive Issues: Three Elements A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. Based on the available record, the Panel finds Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds Complainant’s ERICSSON mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. While the addition of other characters here, “-” and “global”, may bear on the assessment of the second and third elements, the Panel finds the addition of such characters does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Based on the available record, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a disputed domain name. While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
page 5 Having reviewed the record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. More specifically: (i) there has been no evidence adduced to show that Respondent has used the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence or reasons to justify the choice of the term “ericsson”, Complainant’s ERICSSON trademark, in the disputed domain name. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the ERICSSON trademark or to apply for or use any domain name incorporating the ERICSSON marks; (ii) there has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name on September 23, 2023, after the ERICSSON mark was registered in China (since 1995). The disputed domain name is confusingly similar to Complainant’s ERICSSON marks; and (iii) there has been no evidence adduced to show that Respondent was making a legitimate noncommercial or fair use of the disputed domain name. By contrast, the disputed domain name previously resolved to a website purporting to sell Complainant’s products and third-party competing products. Respondent also confirmed in its reply to Complainant that its company “mainly sells various brand communication related products, including the Ericsson brand”. Therefore, Respondent has attempted to make profits through the Internet traffic attracted to the website under the disputed domain name incorporating Complainant’s trademark. Based on the available record, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that Respondent has registered and used the disputed domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Based on the information provided by Complainant, the Panel finds that Complainant has a reputation in the ERICSSON marks with regard to its products and services. It is not conceivable that Respondent would not have had Complainant’s trademark in mind at the time of the registration of the disputed domain name (in September 2023). This has been reinforced by the fact that the disputed domain name incorporates Complainant’s ERICSSON trademark entirely, and that the use of Complainant’s trademark on the website. Respondent has used the website apparently for offering Complainant’s goods and competing goods from third parties for sale, and prominently displaying Complainant’s ERICSSON mark. Thus, the Panel concludes that Respondent is using a confusingly similar disputed domain name with the intention to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant. Such use constitutes bad faith pursuant to paragraph 4(b)(iv) of the Policy.
page 6 Based on the available record, the Panel finds the third element of the Policy has been established. 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 name be transferred to Complainant. /Yijun Tian/ Yijun Tian Sole Panelist Date: October 29, 2024
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