The Complainant is Telefonaktiebolaget LM Ericsson of Stockholm, Sweden, represented by Rominvent S.A., Romania.
The Respondent is Andrea Mariotti of Modena, Italy. 2. The Domain Name and Registrar
The disputed domain name is registered with RNC.ro. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2010. On October 20, 2010, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the disputed domain name. On October 21, 2010, RNC.ro. transmitted by email to the Center its verification response confirming that the 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, the Complainant filed an amended Complaint on November 15, 2010.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2010.
The Center appointed Mihaela Maravela as the sole panelist in this matter on December 17, 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. Language of the proceedings
As regards the question of the language applicable to this dispute, paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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.”
RNC.ro has informed the Center that the language of the relevant registration agreement is Romanian.
As the Complaint had been submitted in English, on October 29, 2010, the Center forwarded a notice to the parties stating that the Complainant should (a) provide evidence of an agreement between the parties that proceedings be in English; (b) translate the Complaint into Romanian; or (c) submit a request that English be the language of the proceedings. On November 4, 2010 the Complainant filed a request that the language of the proceedings be English.
Although properly notified in both languages on the commencement of the proceedings, the Respondent chose not to object the Complainant’s request that English be the language of the proceedings and not to participate in the proceedings.
In accordance with previous decisions (see e.g., DaimlerChrysler Corporation v. Web4COMM SRL ROMANIA,WIPO Case No. DRO2006-0003; Companie Générale des Établissements Michelin - Michelin & Cie. v. IPSOS New Media Research SRL,WIPO Case No. DRO2006-0004; Alphyra Romania S.A. v. Redpoint Software Impex S.R.L.,WIPO Case No. DRO2008-0001; Advanced Micro Devices, Inc. v. Softconcept SRL, Suciu Alexandru,WIPO Case No. DRO2008-0002; SC Tip Top Food Industry SRL v. S.C. WEB4COMM SRL/ web4COMM S.R.L. Romania, WIPO No. DRO2008-0013; Symantec Corporation v. SC SOFTCONCEPT S.R.L.,WIPO Case No. DRO2008-0014), the Panel determines according to the Rules under paragraph 11(a) that the language of these proceedings be English for the following reasons:
- The Center sent all the communications in both languages, Romanian and English. Further, the Center specifically advised the Respondent that if no objections were filed until November 5, 2010 it shall be proceeded on the basis that the Respondent had no objections to the Complainant’s request that English be the language of the proceedings;
- At the registration date of the disputed domain name - January 1, 1996 (according to the concerned registrar’s verification reply) - there were no possibility for a domain name applicant to choose between English or Romanian as the controlling language of the registration agreement, as other Panels found in other previous cases (see Symantec Corporation v. SC SOFTCONCEPT S.R.L.,WIPO Case No. DRO2008-0014 and the decisions cited therein);
- Despite the fact of being properly notified, the Respondent did not provide any Response and did not file any objection to English as the language of these proceedings. 4. Factual Background
The Complainant in this administrative proceeding is Telefonaktiebolaget LM Ericsson a world-leading provider of telecommunications equipment and related services to mobile and fixed network operators. The Complainant has used the trademark ERICSSON in commerce in connection with a wide range of products and services in classes 9, 11, 16, 35, 36, 37, 38, 41, 42 according to the Nice Classification, worldwide. Since 1876, the Complainant has used the ERICSSON name and mark in connection with telecommunications goods and services. Such goods and services have been provided continuously under the ERICSSON name and mark worldwide, since at least as early as 1942.
The Respondent in this administrative proceeding is Andrea Mariotti and the disputed domain name was registered on January 1, 1996. 5. Parties’ Contentions A. Complainant
The Complainant contends that the word “Ericsson” in the disputed domain name and the Complainant's trademark ERICSSON are identical.
Also, the Complainant contends that there is no relationship between the Complainant and the Respondent, which would give rise to any license, permission or authorization by which the Respondent could legitimately claim rights. The word “Ericsson” is not a part of the Respondent's name and, on information and belief, is not a name by which the Respondent is or has been ever been known. The Complainant argues that the Respondent has never actually used the name or mark ERICSSON in connection with the bona fide offering of any goods or services from the time the disputed domain name was registered until the date of this Complaint. The Respondent is not commonly known by the domain name and is not making a noncommercial or fair use of the domain name. Accordingly, the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant argues that the ERICSSON trademark is a well-known trademark in Romania and all the European countries, for the past 20 years. The Respondent knew or should have known of the use of the trademark prior to registering the disputed domain name. The fact that he registered the disputed domain name anyway constitutes bad faith. The likely explanation of the registration of the disputed domain name by the Respondent is that he intended to unfairly benefit from the reputation of the Complainant’s trademarks. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.
Applied to this case, paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel must find that the Complainant has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark.
Here, the Complainant has proved it has rights in the Community trademark No. 000107003 for the mark ERICSSON with three stripe design, in the Community trademark No. 001459130 for the verbal mark ERICSSON, in the Romanian trademark No. 041729 for the verbal mark ERICSSON. Also, the Complainant invoked it is the owner of United Kingdom (“UK”) Trademark Registration No. 2437257, for the word mark ERICSSON, of the United States of America (“U.S.”) Federal Trademark Registration No. 1313196 for the mark ERICSSON with three-stripe design (stylized E), which registration was issued on January 8, 1985, prior to the registration of the disputed domain name.
The question of resemblance for the purpose of the Policy requires a comparison of the disputed domain name to the trademark rights which have been proved.
Here, the disputed domain name fully incorporates the Complainant’s prior trademark ERICSSON. It is well accepted that a top-level domain, is to be ignored when assessing identity or confusing similarity of a trademark and a domain name (See, e.g. VAT Holding AG v. V,WIPO Case No. D2000-0607; Billa Aktiengesellschaft v. Ganea Nicolae,WIPO Case No. DRO2002-0001; Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L.,WIPO Case No. DRO2006-0001; Auchan v. Web4comm Srl Romania,WIPO Case No. DRO2005-0001).
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by a panel, may demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of WIPO panelists concerning the burden of establishing lack of rights or legitimate interests in respect of a domain name is as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.)
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. (See, e.g., Barbara Brennan Inc. v. Texas International Property Associates,WIPO Case No. D2008-0351; Sanford Winery Company v. Matt Geiser,WIPO Case No. D2008-0210). The Complainant alleges that the Respondent’s only reason in registering and using the disputed domain name is to benefit from the reputation of the trademark ERICSSON and illegitimately trade on its fame for commercial gain and profit.
By not submitting a Response, the Respondent has failed to invoke any circumstances, which could demonstrate any rights or legitimate interests in the domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
To fulfill the third requirement, the Complainant must prove that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a number of circumstances that shall, in particular but without limitation, be evidence of registration and use of the disputed domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant who is the owner of the trademark, or to a competitor of the Complainant, for a valuable consideration in excess of the Respondents documented out-of-pocket costs directly related to the domain name.
(ii) Circumstances indicating that the Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct.
(iii) Circumstances indicating that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.
(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 the said website location or of a product or service on that website location.
However, the requirement of the Policy of a domain name “being used in bad faith” is not limited to positive actions (see, e.g. Beiersdorf AG v. Web4comm Srl Romania,WIPO Case No. DRO2005-0002). In this particular case, the following actions are considered as further evidence of registration and use in bad faith:
- The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
- The Respondent has not contested any of the allegations made by the Complainant,
- The Complainant trademark ERICSSON is well-known (See, e.g. Telefonaktiebolaget L M Ericsson v. Dailey Wells Comm,WIPO Case No. DCC2006-0005; Sony Ericsson Mobile Communication AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Netfreez,WIPO Case No. DTV2007-0001),
- In the Panel’s view, any use of the domain name would likely lead the public to the conclusion that it, and its connecting websites, are associated with the Complainant.
In light of these particular circumstances, the Panel concludes that the Respondent has registered the disputed domain name in bad faith and that Respondent’s passive holding of the domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the domain name “is being used in bad faith” by the Respondent.
Also, particularly given the fame of the Complainant and the market value of its trademarks, the Panel agrees with the view expressed in AT&T Corp. v. Linux Security Systems,WIPO Case No. DRO2002-0002, that:
“Most of the time it is quite difficult, if not impossible to actually show bad faith with concrete evidence, particularly given the limited scope of the inquiry in these proceedings; one should not expect to easily find “the smoking gun”. While bad faith cannot be presumed, once Complainant has presented some evidence pointing in that direction, it is then incumbent upon Respondent to either respond or explain why its conduct should not be assimilated to bad faith. Panel’s understanding of the Policy is that although the initial burden to prove Respondent’s bad faith in the registration or the use of the disputed Domain Name relies squarely on the shoulders of Complainant, such obligation is only to make out a prima facie case, and once it has done so, as Panel finds it did in the present case, it is then incumbent upon the Respondent to either justify or explain its business conduct (if not to demonstrate the contrary). Failure to do so will, in some circumstances, enable the Panel to draw a negative inference. In the case at hand, the Respondent has elected (or failed) not to put forward any justification for its registration and use of the Domain Name and, in the circumstances, the Panel does draw a negative inference out of such omission. See Société Des Bains De Mer Et Du Cercle Des Étrangers à Monaco v. Iggi Networks Media Group,WIPO Case No. D2000-1324 (December 18, 2000), Hebdomag Inc. v. Illuminaty Marketing,WIPO Case No. D2001-0206 [(April 7, 2001)] and InterTrade Systems Corporation v. Donna Lawhorn, FA0204000112488 Nat. Arb. Forum (July 15, 2002).” 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.
Mihaela Maravela
Sole Panelist
Dated: December 31, 2010
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