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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Telefonaktiebolaget L M Ericsson v. Dailey Wells Comm

Case No. DCC2006-0005

 

1. The Parties

The Complainant is Telefonaktiebolaget L M Ericsson, Stockholm, Sweden, represented by WRB-IP LLP, United States of America.

The Respondent is Dailey Wells Comm, San Antonio, Texas, United States of America, represented by Sharee D. Varelas, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <ericsson.cc> is registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2006. On October 25, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On October 27, 2006, 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 for the administrative, billing, and technical contact.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 2, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2006. The Response was filed with the Center on November 21, 2006.

The Center appointed Warwick A. Rothnie, Petter Rindforth and Frederick M. Abbott as panelists in this matter on December 12, 2006. The Panel finds that it was properly constituted. Each member of 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 provider of telecommunications equipment and related services to mobile and fixed network operators globally. In the Complaint, it describes itself as “world leading” and this is not contested in the Response.

It claims to have been using the ERICSSON name and mark since 1876 and to have been continuously providing goods and services under the mark in the United States of America since 1981.

Amongst other things, it has registered as trademarks in the United States of America:

(a) Trademark No. 1313196 for ERICSSON (and 3 stripe design) in International Class 9 with a filing date in August 1981;

(b) Trademark No. 1703037 for ERICSSON (and 3 stripe design) in International Classes 9, 37 and 42 with a filing date in October 1981;

(c) Trademark No. 2665187 for ERICSSON in International Classes 9, 11, 16, 35, 36, 37, 38, 41 and 42 with a filing date in June 2000; and

(d) Trademark No. 2676335 for ERICSSON (and 3 stripe design) in International Classes 9, 11, 16, 35, 36, 37, 38, 41 and 42 with a filing date in November 2000.

Each of these trademarks is valid, subsisting and incontestable as to the goods and services covered.

The Complainant operates its main website at “www.ericsson.com”.

It claims that it has spent many billions of dollars advertising its offerings under the ERICSSON mark, and has sold many billions of dollars of ERICSSON branded products and services in the United States of America alone.

The Complainant often hires independent contractors to perform specific tasks in performance of the Complainant’s contracts for the sale and installation of telecommunications equipment and systems.

In the past and before the domain name in dispute was registered, the Complainant had hired the Respondent on certain projects to assemble and test some of the Complainant’s systems prior to their installation. The Respondent is not a reseller of the Complainant’s goods; nor is it an exclusive contractor. It is one of a number of independent contractors that have been used by the Complainant.

The Respondent registered the domain name in 2002.

In January 2006, the Complainant contacted the Respondent and demanded transfer of the domain name to it. The Respondent replied that it had not done any work for the Complainant in several years; had registered the domain name for “his” personal use, but might be willing to sell it and would need time to think about the price.

In the event, the Respondent refused to transfer the domain name and this Complaint was brought.

At the time the dispute arose, the domain name resolved to a web page “Under construction” on which there appeared a number of links or advertisements to the Complainants goods and services. The Respondent disclaims any responsibility for those links or advertisements, stating that they have been placed by the Registrar.

 

5. Discussion and Findings

Under paragraph 4(a) of the Policy the Complainant has the burden of proof in respect of the following three elements:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

The Panel deals with each of these elements in turn.

A. Identical or Confusingly Similar

There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to it?

The Complainant has established ownership of the trademarks registered in the United States of America for:

(a) ERICSSON; and

(b) ERICSSON (and 3 stripe design),

set out in section 4 above.

Apart from the addition of the ccTLD “.cc”, the domain name is identical to the registered trademark consisting of just ERICSSON. The 3 stripe design, or stylized ‘E’ included in the other trademarks is an additional difference.

It is well established, however, that the addition of the gTLD can and should be disregarded for the purposes of the comparison required under paragraph 4(a) of the Policy as a generic or descriptive feature. See for example Rollerblade, Inc. v. Chris McCrady WIPO Case No. D2000-0429, Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252 and Williams-Sonoma d/b/a Pottery Barn v. John Zuccarini, WIPO Case No. D2002-0582. No different conclusion follows from the addition of a ccTLD instead of a gTLD.

The Respondent points out that the Complainant’s registered trademark rights are limited to specific goods and services. Some of the trademarks are in fact registered for a very extensive range of goods and services. The central gravemen of the Respondent’s contention, however, is misplaced in this context. Under the Policy, the comparison is between the sign which makes up the trademark and the domain name. The question of the scope of the goods and services is not relevant, although it may be relevant on the subsequent questions of “rights and legitimate interests” and “registered and used in bad faith”. See for example Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420.

Here, the distinctive or memorable feature of the trademarks and the domain name is the common word ERICSSON. The Respondent argues that this is a common family name which may be used by others where such use does not infringe. Once again, this may be relevant under the other grounds, but it is to mistake the comparison under this heading.

Finally, the Respondent seeks to displace a finding of confusing similarity by arguing that a consumer seeking to find the Complainant’s website can easily do so by typing in its name and adding “.com”. The Respondent also argues that it will revise its “under construction” webpage to further remove the risks of confusion.

As with the other arguments, both these contentions overlook the nature of the comparison under this test: domain name to proved trademarks.

Consequently, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademark rights as the only distinguishing component of it is identical to the distinctive element of the Complainant’s trademarks.

B. Rights or Legitimate Interests

The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.

Paragraph 4(c) of the Policy sets out three examples of rights or legitimate interests. They are, however, not exhaustive but illustrative only.

In view of the difficulty in disproving a negative, under this head the Complainant is required to adduce sufficient material to raise a prima facie case and then an evidential burden shifts to the Respondent to rebut that prima facie case. See for example the decisions recently collected on this issue in PCHome Online Inc. v. Pchomes, WIPO Case No. DCC2006-0002.

The domain name is plainly not derived from the Respondent’s name. The Complainant further asserts that the Respondent does not have any registered trademarks for ERICSSON and the Respondent does not contend to the contrary. The Complainant states that it has not authorised or permitted the Respondent to use the domain name. The parties are not in agreement about whether the Respondent had a positive contractual obligation not to use or register ERICSSON. The Respondent does not contend, however, that it has a licence or permission from the Complainant. Rather, as discussed below, it contends it has a right or interest independently of any rights the Complainant may have.

In these circumstances, many other panels have found the Complainant has sufficiently established a lack of rights or legitimate interests for the onus to shift to the Respondent: see e.g. Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party WIPO Case No. D2000-1415 and Guerlain SA v. HI Investments, WIPO Case No. D2000-0494.

The Respondent contends that it has a right to make reasonable and fair use of the domain name so long as its reasonable and fair use does not infringe upon Complainant’s specific protected rights. It then states that it purchased the domain name:

“with a real interest and intent of establishing a general interest genealogy website for the Ericsson family (surname), which is a legitimate, fair, reasonable and non-competing use.”

The Respondent “affirms” that significant time and resources have been expended to date in pursuit of launching the site, and has committed to launching the site in 2007. Finally, the Respondent contends that the Complainant was careless in not registering the domain name in the “.cc” TLD when it could.

No evidence of the preparations for the website apparently scheduled for launch in 2007 has been provided, nor the extent to which any of those preparations commenced before the Complainant demanded transfer of the domain name. Nor has there been any explanation for the length of time which has lapsed between the registration of the domain name and the launch now scheduled for some time next year.

The lack of this corroborating evidence assumes particular importance in this case. In similar circumstances, panels have rejected claims to a right to use for legitimate non-commercial purposes: see e.g. Helen Fielding v. Anthony Corbert aka Anthony Corbett WIPO Case No. D2000-1000 and Archipelago Holdings LLC v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales WIPO Case No. D2001-0729.

Here, the circumstances are even stronger. The Respondent is a service provider in the telecommunications sector. It has had some sort of commercial relationship or dealings with the Complainant well before the domain name was registered. While the domain name does include a family or surname, the surname in question does not appear to have any relationship or connection to the Respondent, or the Respondent’s principal – a Mr. Wells. Against the background of the renown of the ERICSSON trademark and the Respondent’s direct involvement in the same industry as the Complainant, these failures assume a heightened significance. Also, while elsewhere in the Response, the Respondent does state that it has been using the domain name for personal email addresses, registration for this purpose, which is what the Respondent claimed when initially challenged, is not the same purpose which is now being advanced.

It is not at all clear to the Panel why someone would register a domain name for personal email addresses through a company, moreover a company which operates in the telecommunications sector, especially when neither the company nor those using the emails personally appear to have any connection with the Ericsson name as a family name.

In these circumstances, therefore, the Panel finds that the Respondent has not rebutted the Complainant’s prima facie case. Accordingly, the Panel finds that, for the purposes of this dispute, the Complainant has established that the Respondent does not have rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

Having regard to the factual background, the Complainant contends that the Respondent has registered and used the domain name to disrupt the Complainant’s business and relies on the long line of cases applying Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. It also invokes the Respondent’s “offer” to “think about the price” as in effect an offer to transfer the domain name for higher than the Respondent’s “out of pocket” expenses as sufficient evidence for the purposes of paragraph 4(b)(i) of the Policy.

In relation to the offer to think about the price, the Respondent points out that no price was ever set. It also notes that the statement was made in response to an approach by the Complainant and in circumstances where the Respondent claims to have been “feeling pressured and noticeably shaken” as a result of “initial verbal assaults, threats, and intimidation tactics”. The fact that the “offer” to think about the price was made in response to a request for transfer does not immunize the Respondent: see Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case D2000-1000. It is unnecessary for the Panel, however, to resolve this particular part of the dispute.

The Respondent points out that there is no obligation to commence using a domain name within any particular period. Its central defence to the allegation of registration and use in bad faith, however, is that it registered the domain name for the purpose of establishing a genealogy website for the Ericsson family name.

For the reasons already given in section 5B above, the Panel has found that the Respondent has not adequately proved that claim.

In the absence of that proof, the situation is that the Respondent has registered the domain name with clear knowledge of the Complainant and its rights and at a point where it was in, or had been in, a commercial relationship with the Complainant. The Respondent has no obvious connection outside that relationship with the name ERICSSON and the only business activity the Respondent has advanced lies in the field of telecommunications, the field in which the Complainant’s trademark is very well known. When the Complainant challenged the Respondent about the registration of the domain name, the Respondent pointedly replied that it had not done any work for the Complainant for a number of years. Further, the Respondent at that time claimed “he” (although it is an “it”) had registered the domain name for personal emails. As already noted, there is no obvious nor demonstrated connection between the name ERICSSON and the Respondent or Mr. Wells. In addition, the purported explanation was not maintained in this dispute. Instead, the Respondent has sought to advance a justification for registration of the domain name – the genealogy website – which, on the evidence before the Panel, has not been proved. In these circumstances, the Panel must draw the most logical and reasonable inference, that is, the Respondent registered the domain name to advance its commercial interests in its telecommunications business.

The Panel notes that the circumstances specified in paragraph 4(b) of the Policy are expressed to be “without limitation” to what constitutes registration and use in bad faith. They are examples only. They have in common the feature that someone else’s trademark has been registered knowingly with intent to turn its trademark significance, or goodwill, to the commercial advantage of the registrant in circumstances where the registrant does not have a right or legitimate interest within the terms of the Policy.

In the absence of a right or legitimate interest consistent with the Policy, the Panel finds that the deliberate registration of another telecommunications business’ well-known trademark for the advancement of the Respondent’s own telecommunications business constitutes registration in bad faith. Although the domain name did resolve to an “under construction” website which advertised products and services related to the Respondent, the Respondent has disclaimed any involvement in that advertising. It is well established by the long line of cases from Telstra Corporation Limited v. Nuclear Marshmallows that the passive holding of a domain name registered in bad faith is use in bad faith for the purposes of the Policy.

Accordingly, in the circumstances of this case and having regard to the failure of the Respondent’s positive justification for its conduct, the Panel finds that the domain name has been registered and used in bad faith.

 

6. 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, <ericsson.cc>, be transferred to the Complainant.

Warwick A. Rothnie Presiding Panelist
Petter Rindforth Panelist	Frederick M. Abbott Panelist

Dated: December 28, 2006