Administrative Panel Decision; Telefonaktiebolaget LM Ericsson v Zafer Aktas

WIPO Case No. D2024-0193

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
Telefonaktiebolaget LM Ericsson v. Zafer Aktas

Case No. D2024-0193

1. The Parties

The Complainant is Telefonaktiebolaget LM Ericsson, represented by CSC Digital Brand Services Group AB,

Sweden.

The Respondent is Zafer Aktas, Türkiye.

2. The Domain Name and Registrar

The disputed domain name <ericssonglobal.com> is registered with Turkticaret.net Yazilim Hizmetleri Sanayi ve Ticaret A.S. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2024. On January 17, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 18, 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 (Zafer TURKTICARET.Net) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 22, 2024, 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 January 24, 2024.

On January 22, 2024, the Center informed the parties in Turkish and English, that the language of the registration agreement for the disputed domain name is Turkish. On January 24, 2024, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit any comment on the 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 the Respondent of the
Complaint, and the proceedings commenced on January 29, 2024. In accordance with the Rules, paragraph
5, the due date for Response was February 18, 2024. The Respondent sent an email communication to the

Center on January 26, 2024.

The Center appointed Kaya Köklü as the sole panelist in this matter on February 26, 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

The Complainant is a company with its registered seat in Sweden and was founded in 1876. It is an internationally known provider of communication technology and services.

The Complainant owns numerous trademark registrations around the world for its ERICSSON trademark, including Turkish Trademark Registration No. 132966, registered on May 21, 1992, for ERICSSON, and Turkish Trademark Registration No. 2004 23408, registered on February 28, 2006, for ERICSSON, covering protection for various goods and services (Annex 1 to the Complaint).

The Complainant operates its official website at “

The Respondent is reportedly located in Türkiye.

The disputed domain name was registered on December 9, 2022.

Based on the case file, the disputed domain name does not resolve to an active website (Annex 3 to the

Complaint).

On March 16, 2023, the Complainant’s legal representatives sent a cease-and-desist letter to the
Respondent, and tried to solve the dispute amicably by requesting a transfer of the disputed domain name
(Annex 10 to the Complaint). The Respondent replied to the cease-and-desist letter on March 23, 2023, and
requested a payment of USD 2,000,000.00 for the transfer of the disputed domain name (Annex 11 to the

Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

B. Respondent

The Respondent replied to the Complaint on January 26, 2024 in Turkish, by indicating that the disputed domain name is passively held, so there is no bad faith, that he received an email asking for the transfer of the disputed domain name and that he replied he would transfer it for USD 2,000,000 because he thought the email was a scam.

page 3

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Turkish. 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.

The Complaint was filed in English. The Complainant requested that the language of the proceeding be requested translation would be time and costs intensive.

The Respondent did not make any submissions with respect to the language of the proceeding, even though communicated by the Center in Turkish and in English. Even though the Respondent provided his Response to the Complaint on January 26, 2024 in Turkish language, the Panel notes that the Respondent’s reply to

the Complainant’s cease-and-desist letter on March 23, 2023, was in English language, which indicates that
the Respondent has knowledge of English.

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 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).

Having considered all the matters above, the Panel believes that the Respondent will not be prejudiced by a decision being rendered in English, and determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

6.2. Substantive Issues

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the
Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i)        the disputed domain name is identical or confusingly similar to a trademark in which the Complainant

has rights; and

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

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

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where
relevant, accept the provided reasonable factual allegations in the Complaint as true. See section 4.3 of the
WIPO Overview 3.0.

For the evaluation of this case, the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views stated therein.

page 4

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 the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of the ERICSSON trademark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The entirety of the ERICSSON mark is reproduced within the disputed domain name. Accordingly, the
disputed domain name is confusingly similar to the ERICSSON mark for the purposes of the Policy. WIPO
Overview 3.0, section 1.7.

Although the addition of other terms, here “global”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the ERICSSON mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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 the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although 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 difficult 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 (although the burden of proof always remains on the complainant). 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.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case
that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has
not rebutted the Complainant’s prima facie showing and has not come forward with any relevant statement or
evidence demonstrating rights or legitimate interests in the disputed domain name such as those

enumerated in the Policy or otherwise.

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.

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.

page 5

In the present case, the Panel notes that the Respondent must have had the Complainant and its
ERICSSON trademark in mind when registering the disputed domain name. It is obvious to the Panel, that
the Respondent has deliberately chosen the disputed domain name, which is comprising the Complainant’s
ERICSSON trademark entirely, to target the Complainant. Consequently, the Panel is convinced that the
Respondent has registered the disputed domain name in bad faith.

As regards bad faith use of domain names, which have yet not been actively used, panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. Although panels will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good- faith use, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3.

Having reviewed the available record, the Panel notes the reputation of the Complainant’s ERICSSON trademark, and the inherently misleading composition of the disputed domain name, which comprises the entirety of the Complainant’s ERICSSON trademark plus the term “global”, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. Furthermore, the Panel finds the Respondent's argument that he thought the email sent by the Complainant was a scam and that he therefore offered the domain name for sale is not convincing. The fact that the Respondent offered for sale the disputed domain name to the Complainant to a price of USD 2,000,000.00, which obviously exceeds the Respondent’s out-of-pocket costs directly related to the disputed domain name, clearly demonstrates the Respondent’s opportunistic bad faith to utilize the disputed domain name for illegitimate commercial purpose.

Taking all facts of the case into consideration, the Panel is convinced that this is a typical cybersquatting case, which the UDRP was designed to stop.

The Panel finds that the Complainant has established the third element 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 disputed domain name <ericssonglobal.com> be transferred to the Complainant.

/Kaya Köklü/ Kaya Köklü Sole Panelist Date: March 11, 2024