Telefonaktiebolaget LM Ericsson v Himanshu Jain, IDS

WIPO Case No. D2025-0977

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Telefonaktiebolaget LM Ericsson v. Himanshu Jain, IDS

Case No. D2025-0977

1. The Parties

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

Group AB, Sweden.

The Respondent is Himanshu Jain, IDS, India.

2. The Domain Names and Registrar

The disputed domain names <ericsson2219.com>, <ericsson4418.com>, <ericsson4449.com>, and

<ericsson8863.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2025. On March 11, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 11, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 12, 2025, 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 March 13, 2025.

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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on March 19, 2025. In accordance with the Rules, paragraph
5, the due date for Response was April 8, 2025. The Respondent did not submit any response. Accordingly,
the Center notified the Respondent’s default on April 9, 2025.

The Center appointed Nicholas Smith as the sole panelist in this matter on April 16, 2025. 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 Swedish company that is one of the leading global suppliers of communication technology and services such as telecommunication systems and mobile phones which it sells under the trademark ERICSSON (the “ERICSSON Mark”).

The Complainant is the owner of trademark registrations in numerous jurisdictions for the ERICSSON Mark,
including, including a United States of America trademark registered on January 8, 1985, for goods in class 9
(registration number 1313196).

The Domain Names were registered on June 12, 2024. The Domain Name <ericsson4449.com> (“Inactive Domain Name”) is inactive or inaccessible and there is no evidence that it has been used for any purpose since registration. The remaining Domain Names (“Active Domain Names”) resolve to websites (the “Respondent’s Websites”) that reproduce the ERICSSON Mark and related logo and purport to offer unauthorised versions of the Complainant’s technology products (such as the ERICSSON 2219 and 4418 products).

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 Domain Names.

Notably, the Complainant contends that:

a) It is the owner of the ERICSSON Mark, having registered the ERICSSON Mark in numerous

jurisdictions. The Domain Names are each confusingly similar to the ERICSSON Mark as they wholly
reproduce the ERICSSON Mark and add references to the Complainant’s particular products (i.e. the 2219

or 4418 telecom devices).

b) There are no rights or legitimate interests held by the Respondent in respect of the Domain Names.

The Respondent is using the Active Domain Names to create websites that sell unauthorised versions of the to make a legitimate use of it. .

Complainant’s products and reproduce the Complainant’s marks and logos, such use not being bona fide.

c) The Domain Names were registered and are being used in bad faith. Given the use of the ERICSSON

Mark and the Complainant’s logo on the Respondent’s Websites the Respondent must have been aware of the Complainant at the time of registration. The Respondent is using the Active Domain Names (and in the case of the Inactive Domain Name passively held) to divert Internet users searching for the Complainant to the Respondent’s Websites to deceive consumers as to their affiliation with the Complainant. Such conduct amounts to registration and use of the Domain Names in bad faith.

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B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The 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 the entirety of the mark is reproduced within the Domain Names. Accordingly, the Domain Names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

While the addition of other terms, “2219”, “8863” “4418” and “4449” may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the Domain Names 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 Domain Names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Names such as those enumerated in the Policy or otherwise.

The Panel considers that the record of this case reflects that:

- before any notice to the Respondent of the dispute, the Respondent did not use, nor has it made

demonstrable preparations to use, the Domain Names or names corresponding to the Domain Names in
connection with a bona fide offering of goods or services. Paragraph 4(c)(i) of the Policy, and WIPO
Overview 3.0, section 2.2.

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- the Respondent (as an individual, business, or other organization) has not been commonly known by the Domain Names. Paragraph 4(c)(ii) of the Policy, and WIPO Overview 3.0, section 2.3.

- the Respondent is not making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Paragraph 4(c)(iii) of the Policy, and WIPO Overview 3.0, section 2.4.

- the record contains no other factors demonstrating rights or legitimate interests of the Respondent in the Domain Names.

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the ERICSSON Mark. There is no evidence that the Respondent is commonly known by any of the Domain Names or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a legitimate noncommercial or fair use. Indeed the Inactive Domain Name does not resolve and on the evidence before the Panel has never resolved to an active website.

The Respondent has used the Active Domain Names to operate websites to sell technology products that purport to be legitimate Complainant’s products under the ERICSSON Mark. Such conduct, involving the representation that the Respondent’s Websites are in some way connected to the Complainant (which is not

the case), does not, on its face, amount to the use of the Domain Names for a bona fide offering of goods or
services.

Even if the Respondent is offering genuine ERICSSON products from the Respondent’s Websites, such use does not automatically grant it rights or legitimate interests. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of UDRP decisions, starting

with the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

The WIPO Overview 3.0, section 2.8 summarizes the consensus views of UDRP panels in assessing claims of nominative (fair) use by resellers or distributors in the following manner:

“… Panels have recognized that resellers, distributors, or service providers using a domain name containing
the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services
may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain
name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific
conditions of a UDRP case:

(i)        the respondent must actually be offering the goods or services at issue;

(ii)       the respondent must use the site to sell only the trademarked goods or services;

(iii)      the site must accurately and prominently disclose the registrant’s relationship with the trademark

holder; and

(iv)      the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.

The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.”

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In this case, the Respondent’s Websites do not accurately and prominently disclose the Respondent’s relationship with the Complainant, in particular that it is not an authorized dealer or has no particular connection with the Complainant. Rather, its prominent display of the ERICSSON Mark and the Complainant’s logo and the absence of a disclaimer or any explanation as to the identity of the operator of the Respondent’s Websites results in the impression that the Respondent’s Websites are official websites of the Complainant. Even in the event that the Respondent is reselling genuine ERICSSON products, its use of the Domain Names for the Respondent’s Websites does not grant it rights or legitimate interests in the Domain Names.

Moreover, the nature of the Domain Names incorporating the Complainant’s ERICSSON Mark and the names of Complainant’s specific products such as its 2219 or 4418 models, which are related to the Complainant’s business, carries a risk of implied affiliation, contrary to the fact, which cannot constitute fair use.

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.

The Panel finds that the Respondent was aware of the Complainant and its reputation in the ERICSSON Mark at the time the Domain Names were registered. The Respondent’s Websites contain numerous references to the Complainant, including reproducing the ERICSSON Mark and logo. The Respondent has provided no explanation, and none is immediately obvious, of why an entity would register 4 domain names incorporating the ERICSSON Mark and the name of a Complainant’s product and direct the majority of the Domain Names to websites referring to the Complainant and its products unless there was an awareness of and an intention to create a likelihood of confusion with the Complainant and its ERICSSON Mark. The registration of the Domain Names in awareness of the ERICSSON Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith.

The Panel considers that the record of this case reflects that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites or other online location, by creating a likelihood of confusion with the Complainant’s ERICSSON Mark as to the source, sponsorship, affiliation, or endorsement

ERICSSON Mark to sell products, be they genuine or otherwise, in competition with the Complainant and without the Complainant’s approval and without meeting the Oki Data test.
of the Respondent’s Websites or location or of a product or service on the Respondent’s Websites. Domain Names for the purposes of operating websites that pass off as official websites of the Complainant allegedly offering the Complainant’s products for sale. The Respondent is using the Active Domain Names that are each confusingly similar to the

The Panel finds that the passive holding of the Inactive Domain Name does not prevent a finding of bad faith (see section 3.3 of WIPO Overview 3.0). The Panel is prepared to infer that the Inactive Domain Name is most likely being passively held for future use in the same manner as the Active Domain Names, namely for a website (or to redirect to a website) that will misleadingly create an association with the Complainant for commercial gain.

Accordingly, the Panel finds that the Respondent has registered and is using the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy

The Panel finds that the Complainant has established the third element of the Policy.

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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 Names <ericsson2219.com>, <ericsson4418.com>, <ericsson4449.com> and

<ericsson8863.com> be transferred to the Complainant.

/Nicholas Smith/
Nicholas Smith
Sole Panelist
Date: April 30, 2025