WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
General Electric Company v. Online Sales.com, Inc.
Case No. D2000-0343
1. The Parties
The Complainant is General Electric Company ("GE"), a corporation organized in the State of New York, United States of America (USA), with place of business in Fairfield, Connecticut, USA.
The Respondent is Online Sales.Com, Inc., doing business as Online Sales, Inc., with place of business in McLean, Virginia, USA.
2. The Domain Name(s) and Registrar(s)
The disputed domain name is "e-ge.com".
The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
a. The Complainant initiated the proceeding by the filing of a complaint received by courier mail by the WIPO Arbitration and Mediation Center ("WIPO") on April 27, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On May 3, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc. On May 9, 2000, WIPO completed its formal filing compliance requirements checklist.
b. On May 10, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail.
c. On May 22, 2000, a response from Respondent was received in hard copy by WIPO. Respondent also transmitted the response to Complainant.
d. On June 2, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On June 2, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
Except as regards the Supplemental Submission and Response referred to in the preceding paragraph, the Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
Complainant is the holder of a substantial number of trademark registrations on the Principal Register at the USPTO for "GE" as a letter mark and "GE" as a stylized monogram mark. Registrations for the block letter mark include No. 1203475, dated June 2, 1982, covering, inter alia, electric lamps; No. 1191120, dated March 2, 1982, covering, inter alia, diagnostic apparatus; No. 983140, dated May 7, 1974, covering, inter alia, silicon sealants; No. 1201681, dated July 20, 1982, covering, inter alia, synthetic resins, and; No. 1173260, dated October 13, 1981, covering, inter alia, plastic sheeting. Registrations for the stylized monogram mark include No. 1051200, dated October 26, 1976, covering, inter alia, electric lamps; No 1017222, dated June 5, 1975 covering, inter alia, synthetic resins; No. 1017393, dated August 5, 1975, covering, inter alia, locomotives, and; No. 1790247, dated August 31, 1993, covering, inter alia, medical diagnostic apparatus. (Complaint, para. 12.) These registrations are valid and subsisting, and Respondent accepts their validity (Response, para. 8). The GE marks have been used in commerce since at least 1974 (based on the foregoing registrations), and continue to be used in commerce. The GE marks have been widely advertised and are well known. Respondent accepts that the specified GE marks are "well recognized and famous" (Response, para. 10).
Complainant has registered and uses the domain name "ge.com". According to a Network Solutions’ WHOIS database query printout, this domain name was registered on August 5, 1986. Complainant is the named registrant (Complaint, Annex E).
Network Solutions’ WHOIS database query response (Complaint, Annex B) indicates that "E-GE.COM", with Administrative Contact at "Hostmaster, E-GE.COM", is the registrant of the domain name "E-GE.COM". The record of this registration was created on December 9, 1999, and was last updated on March 17, 2000 (id.).
As of April 25, 2000, an Internet user who entered the web address "www.e-ge.com" would automatically be directed to Respondent’s "Online Sales.Com" website (id., para. 12(f) and Annex F). This website was headed "This Web Site is For Sale", and included the text:
"Since this web site comes up for more than one domain, please specify which domain name you are interested in buying and include your return email address in the body of the message.
"Online Sales specializes in driving Internet traffic through the use of domain names. We offer many services for your Internet needs. If you are interested in purchasing advertising on this site or purchasing one of our domain names please contact us." (Id., Annex F)
As of June 2, 2000, an Internet user who entered the web address "www.e-ge.com" would find a website with same overall appearance as the website it would have located on April 25, 2000, including Respondent’s e-mail address as contact point, but headed "The domain name www.e-ge.com is for sale", followed by "Please contact us if you are interested in acquiring this domain name" (Complainant’s Supplemental Submission, Annex B). In its Response to Complainant’s Supplemental Submission, Respondent did not dispute the fact that it provided the foregoing content at the "www.e-ge.com" website location.
The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions’ dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)). Respondent has not contested that it is properly before this Administrative Panel.
5. Parties’ Contentions
Complainant indicates that it is the holder of valid and subsisting trademark registrations at the USPTO for "GE" in block letter and stylized format, covering a wide range of products (Complaint, para. 12(a)). (See Factual Background, supra).
"(b) GE has spent billions of dollars in advertising and promoting the GE marks in connection with its products and services throughout the United States, and GE has sold hundreds of billions of dollars worth of these products and services under and in connection with the GE marks throughout the United States.
(c) By virtue of GE’s long use, widespread advertising and enormous sales, the GE marks have become well-recognized and famous, and represent goodwill of extraordinary value. The GE Marks acquired such distinction and fame long prior to any date at which respondent commenced engaging in the wrongful conduct set forth below.
(d) The Complainant also owns, has registered and uses numerous domain names that include GE, including, but not limited to, and Copies of NSI's Whois database information pages showing Complainant's registration of these domain names are attached as Annex E.
(e) The domain name at issue, www.e-ge.com, is identical or confusingly similar to the GE marks. The prefix ‘e-’ is commonly used as an abbreviation for ‘electronic’ to refer to on-line commerce, and the ‘e-ge.com’ domain name simply combines this common prefix with the GE marks in an on-line environment.
(f) The Respondent’s lack of rights in the domain name and his bad faith in registering and using it are demonstrated by numerous facts. Specifically, Complainant submits the following evidence:
(i) Respondent appears to be a cybersquatter, offering the domain name and apparently others, for sale. The web site to which the domain name points is named OnlineSales.Com. The domain name points to the same web site…. The web site's heading states, in large bold letters, ‘This Web Site Is For Sale.’ Immediately under this heading is a ‘For Sale’ sign. The web site further prominently states as follows: ‘Since this web site comes up for more than one domain, please specify which domain name you are interested in buying and include your return email address in the body of the message. Online Sales specializes in driving Internet traffic through the use of domain names. We offer many services for your Internet needs. If you are interested in purchasing advertising on this site or purchasing one of our domain names please contact us.’ (Emphasis added.)
(ii) Respondent appears to have avoided identifying itself in the NSI application www.e-ge.com under the name On-Line Sales, Inc. for the purpose of impeding objections, and to impede others from determining what other domain names are owned by Respondent.
(iii) Respondent is using the domain name without the consent or approval of GE.
(iv) Respondent appears to have no intellectual property rights in the domain name www.e-ge.com.
(v) Respondent appears to have no bona fide commercial or noncommercial basis for using the domain name www.e-ge.com.
(vi) Respondent's registration of the domain name prevents Complainant from registering and using that domain name. (Id., para. 12)
Complainant supplementally indicates that the website located at "www.e-ge.com" was revised following the filing of its complaint on April 25, 2000 to state, inter alia, "The domain name www.e-ge.com is for sale" (Complainant’s Supplemental Submission of New Facts, para. 2 and Annex B).
Complainant requests that the Panel ask the Registrar to transfer the domain name
"e-ge.com" from Respondent to it (Complaint, para. 13).
Respondent does not dispute that the trademarks specified in Complainant’s complaint are registered and used by Complainant (Response, para. 8), and neither admits nor denies that Complainant has spent billions of dollars advertising the marks (id., para. 9).
Respondent "admits that the specified GE Marks have become well-recognized and famous. Respondent denies the characterization of its conduct as wrongful." (Id., para. 10)
Respondent denies that the disputed domain name is identical or confusingly similar to the specified GE marks, stating:
"a. Complainant has defined the GE Marks as ‘the names and mark GE and a stylized logo GE monogram logo.’ …
b. The domain name e-ge.com is not identical to the name or mark GE and the domain name has no logo of any kind associated with it and is therefore not identical to the GE monogram logo.
c. Complainant allegation that the domain name e-ge.com is confusingly similar to its GE mark is not supported by the record. Complainant also suggests that not only does it have exclusive rights to the mark ‘GE’ but that it also has exclusive rights to other words or letters used in conjunction with ‘GE.’ (See Complaint & 12(d) wherein Complainant assets that it has ‘numerous domain names that include GE. . . . .’) As it turns out neither is true.
d. As to the mark ‘GE,’ the United States Patent & Trademark Office (USPTO) has registered the word mark GE to the registrant Goldsmith International, Inc. The registration number of this trademark is 1247120 dated August 2, 1983. This is a live trademark.
e. The USPTO has also registered word marks that incorporate GE in the name. For example, the USPTO registered the trademark G GE to the registrant Genoa Packing Company. The registration number is 0921628 dated October 5, 1971. This is a live trademark. The USPTO registered the trademark Ge-Feron to the registrant Viva America Marketing, Inc. The registration number is 2016380 dated November 12, 1996. This is a live trademark. The USPTO has registered the trademark GE OXY-132 to registrant Global Marketing Associates, Inc. The registration number 1513304 dated November 22, 1988. This is a live trademark. The USPTO has registered the trademark GE, INC. ALUMINUM EXTRUSIONS ‘GENERAL LINE’ to registrant General Extrusions, Incorporated. The registration number is 0578217 dated August 4, 1953. This is a live trademark.
f. It is beyond argument that the USPTO would not register a mark that it found to be confusingly similar or infringed on or diluted the another registered mark. It follows that none of the marks set out above were found by the USPTO to fall in that prohibited category. The name at issue here e-ge.com is certainly less confusing that the trademark GE set out above …. E-ge.com is no more confusing than the marks G GE, Ge-Feron, GE OXY-132 and GE, INC. ALUMINUM EXTRUSIONS ‘GENERAL LINE’…. Complainant clearly cannot claim that any domain name or trademark using ‘GE’ automatically is confusingly similar.
g. Complainant would have the reader believe that it has a very strong mark (as opposed to a famous mark) and therefore any use of ‘GE’ in commerce is reserved exclusively for Complainant because any such use would cause confusion with its marks. This is the purpose of Complainant’s allegation … Complainant has ‘numerous domain names that include GE. . . .’ Complainant’s contention that it has exclusive use in commerce of any use of ‘GE’ in combination with other letters or words is false. In the domain name arena … there are many examples that prove Complainant does not have exclusive use in commerce of the letters ‘GE’ in combination with other letters or words." (Response, para. 12).
Respondent provides examples of domain names incorporating the letters "GE" and registered by parties other than Complainant, including (but not limited to) "GEINC.COM" (registered to Gemini Enterprises, Inc.), GECORP.COM (registered to Graphic Equipment Corporation), GECO.COM (registered to Guarantee Electrical Company), GECOM.COM (registered to Gene & Associates), GE.NET, registered to GE Network Services, GEINC.NET (registered to Greenfield Environmental, Inc), and GECO.NET (registered to Sierra Tree Care) (id, para. 12(g)).
Respondent further states:
"12.h. Since the Complainant has the burden of proof, Complainant’s failure to call these marks and domain names to the Panel’s attention and to attempt to distinguish them from the domain name at issue here, should cause the Panel to, at a minimum, conclude that the issue is in doubt and Complainant failed to carry its burden of proof. Respondent submits that the marks registered by the USPTO and set out above, conclusively establish that under applicable principles of United States law, said marks are not confusingly similar to Complainant’s GE Marks. For had they been found by the USPTO to be so, USPTO would not have registered them. It seems clear that the USPTO would not find Respondent’s domain name confusingly similar to Complainant’s GE Marks based upon USPTO’s action in the cases of the marks set out above by Respondent…. The Panel clearly should conclude the domain name e-ge.com is not confusingly similar to Complainant’s GE Marks.
13. In addition to proving that (1) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, Complainant must also prove (2) that Respondent has no rights or legitimate interests in respect of the domain name and that the (3) domain name has been registered and is being used in bad faith. …
14. … The remainder of this paragraph suggests that Respondent’s sale of domain names, in and of itself suggests bad faith. Complainant presents no authority for this proposition because none exists.
15. … Complainant states that Respondent was somehow hiding to impede objections by, in this case, Complainant. This is indeed a mysterious allegation. Complainant apparently had no difficulty in finding Respondent …. This is hardly the proof that is required to show bad faith.
16. … Respondent is not required to have Complainant’s permission to use the domain name at issue. Tellingly, Complainant does not allege that Respondent needs such permission.
17. …. Respondent was using the disputed domain name prior to notice of this dispute in connection with a bona fide offering of goods and services. The offering is set out at Annex F of the Complaint.
18. Complainants last allegation … states that Complainant can not use or register the disputed domain name because Respondent has registered it. This statement is true of literally every domain name registered in the world … and is not evidence of bad faith.
19. What the Complainant failed to discuss are the four indicia of use and registration in bad faith set out in 4(b) of the Policy. Respondent will now address each of these circumstances and demonstrate that they are not present in this case.
20. … Even though not alleged by Complainant, Respondent affirmatively asserts that it has never offered to sell or transfer the domain name at issue to Complainant or any of its competitors for consideration in excess of its out of pocket costs. Respondent also states that until the filing of the Complaint in this matter it has never had any communication with the Complainant or any other entity known to be a competitor of the Complainant.
21. The second circumstance evidencing bad faith is that the Respondent registered the name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent engaged in a pattern of such conduct. (Policy and4 b(ii). Complainant fails to even allege conduct that amounts to the circumstance described in this paragraph. Indeed, Complainant alleges that it has the trademark GE and that it has the domain name ge.com. These allegations prove that Complainant did, in fact, reflect its trademark in a corresponding domain name. Further, even if Complainant were able to prove the first part of this circumstance, it has not alleged or offered any evidence that Respondent engaged in a pattern of conduct to deny trademark owners use of a corresponding domain names.
22. The third circumstance evidencing bad faith it that Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor. (Policy and 4b(iii)). Complainant does not allege and Respondent is not a competitor of Complainant. Neither does Claimant allege that Respondent registered the name to disrupt its business (even though this is not a circumstance of bad faith as set out in the Policy).
23. The fourth circumstance evidencing bad faith is that by using the domain name internet users are attracted to a web site by creating a likelihood of confusion with the Complainant’s mark as either the source, sponsor, affiliate or endorser of Respondent’s web site or a product or service on the web site. (Policy and 4b(iv). As demonstrated above, Complainant has failed to prove that the disputed domain name is confusingly similar to Complainant’s mark. Complainant does not allege that Respondent drives traffic to its site by creating confusion that Complainant sponsors, or endorses the site or is affiliated with Respondent or is the source of the site. The only allegation that is remotely related to this circumstance is Complainant’s allegation that Respondent ‘specializes in driving Internet traffic through the use of domain names.’…. However this allegation is a far cry from what is required to demonstrate bad faith under 4b(iv) of the Policy. An examination of Annex F to the Complaint, which is a print out of Respondent’s web site page, demonstrates that there is no likelihood that a visitor to this site will believe that Complainant is the sponsor, endorser, affiliate or the source of the site. The site clearly identifies itself as the site of Online Sales. It informs readers that Online Sales has domain names for sale and informs readers who are interested in acquiring a domain name how to contact Online Sales.
24. As to the first of the three required elements, Complainant has failed to carry its burden of proof that the disputed domain name is confusingly similar to its mark. As to the second of the three required elements, Complainant has failed to carry its burden of proof that Respondent has no rights or legitimate interests in respect of the domain name. As to the third of the three required elements, Complainant has failed not only to prove, but even to allege, any of the elements of bad faith under the Policy. Hence, having the burden of proving each of the three elements and having failed on all of the three elements, there is no basis under the Policy or the Rules to transfer the disputed domain name to the Complainant." (Id.)
In its Response to Complainant’s Supplemental Submission of New Fact, Respondent states:
"Sale of a domain name is not evidence of bad faith under ' 4(b) of the Policy unless a respondent is selling or transferring the domain name to the complainant or a competitor of the complainant for valuable consideration in excess of respondent’s out of pocket costs. (Policy 4 b(i)). Complainant does not allege such conduct in its Complainant or in the Supplemental Submission. Hence the Supplemental Submission raises no new facts which are relevant to an analysis of bad faith under ' 4(b) of the Policy." (Id., para. 2)
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).
In this proceeding, Respondent has furnished a detailed Response to the Complaint in a timely manner. There is no issue as to whether Respondent received adequate notice of these proceedings. Complainant’s Supplemental Submission furnished relevant factual information arising contemporaneous with or subsequent to the filing of Complainant’s complaint. Respondent was provided with ample opportunity to reply to Complainant’s Supplemental Submission of New Facts, and did furnish a Response to such submission. It is within the discretion of the Panel to accept supplemental submissions from parties to these administrative proceedings (see Rules, paras. 10(a) and 12).
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant is the holder of multiple trademark registrations regarding various classes of products for "GE" in the United States and is using that mark in commerce (see Factual Background, supra). Complainant’s registration of the trademark on the Principal Register at the PTO establishes a presumption of validity of the mark in U.S. law. Respondent has accepted the validity of Complainant’s trademark registrations in respect to the covered classes of products. The Panel determines that Complainant has rights in the trademark "GE". Based on the May 7, 1974, date of Complainant’s registration of the trademark "GE" (the earliest of those submitted in this proceeding by Complainant), and without prejudice to whether Complainant may hold earlier-arising rights in the mark, the Panel determines that Complainant’s rights in the trademark arose prior to Respondent’s registration, on December 9, 1999, of the disputed domain name "e-ge.com".
Respondent has registered the domain name "e-ge.com". This name is identical to Complainant’s trademark "GE", except that (1) the domain name adds the prefix "e-" to the letter mark "GE", (2) the domain name adds the generic top-level domain name ".com", and (3) the domain name employs lower case letters, while the trademark is used with capital letters.
Insofar as domain names are not case sensitive, the Panel concludes that use of the lower case letter format in "e-ge.com" is a difference without legal significance from the standpoint of comparing "e-ge.com" to "GE". Similarly, the addition of the generic top-level domain (gTLD) name ".com" is without legal significance since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific service provider as a source of goods or services.
The question remaining is whether the addition of the prefix "e-" to the letters "ge" is sufficient to distinguish the disputed domain name from Complainant’s trademark. In a previous administrative determination under the Policy, this sole panelist said:
"The Panel determines that the prefix ‘e’ has become a generic or common descriptive term used to identify electronic commerce activity – a type of business activity -- routinely in relation to commercial websites on the Internet. [footnote 6] This use finds a clear manifestation in the term ‘e-commerce’ or ‘ecommerce’ that is now a common term in the English language used to describe the conduct of business over an electronic network. WIPO, for example, refers to its electronic commerce-related activities by the term ‘Ecommerce’ (see http://ecommerce.wipo.int, visited by the Panel, April 21, 2000). The prefix ‘e’ is often added to other terms to create domain names. If the mere addition of ‘e’ to a service mark were sufficient to distinguish new Internet service sources from existing service sources (electronic or non-electronic), it would be extraordinarily difficult for existing service sources to maintain their identities in the electronic commerce marketplace. The Panel concludes that addition of the prefix ‘e’ … constitutes the mere addition of a generic or common descriptive identifier for a type of business activity. …
"[footnote 6] The U.S. Court of Appeals for the Seventh Circuit has held that: ‘an adjective can be a generic term when that word is a part of a common descriptive name of a kind of goods. In order to be generic, however (as the word implies), the word in question must serve to denominate a type, a kind, a genus or a subcategory of goods.’ G. Heileman Brewing v. Anheuser-Busch, (7th Cir. 1989), 873 F. 2d 985, 997, citing Henri's Food Products Co., Inc. v. Tasty Snacks, Inc., 817 F.2d 1303,
1305-06 (7th Cir. 1987). This reasoning would apply to types of services as well."
The Panel’s reasoning regarding the generic nature of the prefix "e-" applies to trademarks and suppliers of goods as well as to service marks and providers of services. The addition of the prefix "e-" to a trademark is a generic or common descriptive manner for indicating that the trademarked products are offered via an electronic source (typically on the Internet). Consumers using the Internet to search for products are likely to associate a trademark preceded by an "e-" with the trademark holder and its products. The domain name "e-ge.com" is confusingly similar to the trademark "GE" because consumers are likely to associate the Internet address with "GE" as a source of trademarked products.
Respondent states that the trademark "GE" is registered by a party other than Complainant (i.e. Goldsmith International, Inc.). Since identical trademarks are registered concurrently by the USPTO (and registration authorities outside the United States) in various circumstances (see 15 USC § 1052(d)), it is not uncommon for an identical trademark to be held by more than one party (e.g., by parties that are the source of different classes of goods). Paragraph 4(a)(i) of the Policy does not require that a complainant hold rights in a trademark for all classes of products (or in all territories), but only that it "has rights" in the mark. Complainant has demonstrated its rights in the "GE" trademark.
Respondent has conceded that the "GE" trademark is "well-recognized and famous", at least in so far as it relates to specified classes of products. There is a substantial likelihood that consumers using the Internet will associate the disputed domain name with the holder of the famous "GE" mark.
Respondent notes that there are domain names incorporating the letters "GE" registered and used by parties other than Respondent and Complainant, and that this demonstrates that Complainant does not have exclusive rights to use the letters "GE" in a domain name. Domain name registrars do not examine applications for registration to determine whether proposed names will infringe on the rights of trademark holders. Presumptions of validity as against trademark holders are not established by the mere act of domain name registration. The Policy provides a number of bases upon which registrants may establish rights to use domain names that are identical or similar to that of trademark holders (id., para. 4(c)). There may be registrants of "GE"-similar domain names, other than Complainant, that would be able to demonstrate rights or legitimate interests in those names, even if they were confusingly similar to Complainant’s trademark. There may be registrants of "GE"-similar marks that will face challenge from Complainant in other administrative proceedings under the Policy. This proceeding is directed at Respondent and its registration of a domain name that is confusingly similar to a trademark in which Complainant has rights. The Panel must make its determination on the facts of this case.
Complainant has met the burden of proving that Respondent is the registrant of a domain name that is confusingly similar to a trademark in which the Complainant has rights. It has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.
There is no evidence on the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain name "e-ge.com", other than that it has registered this domain name and has used it in a manner hereafter determined to be in bad faith. If mere registration of the domain name was sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration. Construing the Policy so as to avoid an illogical result, the Panel concludes that mere registration does not establish rights or legitimate interests in the disputed domain name so as to avoid the application of paragraph 4(a)(ii) of the Policy. Similarly, bad faith registration and use of a domain name does not establish rights or legitimate interests in the name so as to avoid a determination of the absence of rights or legitimate interests under paragraph 4(a)(ii) of the Policy.
The Panel determines that Respondent has no rights or legitimate interests in the disputed domain name. Thus, the Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.
The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are (1) that the domain name has been registered or acquired by a respondent "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent’s] documented out-of-pocket costs directly related to the domain name" (Id., para. 4(b)(i)); (2) that a respondent has registered the domain name "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct" (id., para. 4(b)(ii)), and (3) that a respondent "by using the domain name, … [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site 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 [respondent’s] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).
Respondent has offered the disputed domain name for sale on its website. Respondent argues that since this offer was not made to Complainant or its competitor, that this does not constitute bad faith within the meaning of the Policy. In an earlier administrative proceeding, this sole panelist considered a similar offer of sale made to the public at large. This sole panelist first observed that an offer for sale to the public at large was not the subject of the express language of paragraph 4(b)(i) of the Policy. However, this sole panelist said:
"This does not, however, end our inquiry regarding the element of bad faith, since the Policy indicates that its listing of bad faith factors is without limitation. Thus we must still ask whether a general offer for sale in the circumstances of this case constitutes bad faith use of the domain name.
"The value which Respondent seeks to secure from sale of the domain name is based on the underlying value of Complainant’s trademark. This value is grounded in the right of Complainant to use its mark to identify itself as a source of goods or services. Respondent has failed to establish any legitimate domain name-related use for Complainant’s trademark, in a context in which such legitimization might be possible. The Respondent having failed to present any such justification, the Panel may reasonably infer that Respondent neither intended to make nor has made any legitimate use of Complainant’s trademark in connection with the … domain name.
"… [Respondent] has made no use of the domain name other than to offer it for sale at a price that is likely to substantially exceed its out-of-pocket costs of registration, and the price that the domain name commands would largely be based on the trademark of the Complainant. Although a supplemental, as opposed to competitive, user of the domain name might be willing to pay the price sought by Respondent, there is no reason based on the record to award this price to Respondent. The Respondent was the first-to-register, and in circumstances of legitimate registration and use this may secure its right to the domain name. However, because Respondent is contributing no value-added to the Internet – it is merely attempting to exploit a general rule of registration – the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it."
Similarly in the instant proceeding, Respondent has sought to profit from the mere registration as a domain name of a well-known trademark. Its use to direct Internet users to a website offering it for sale merely constitutes advertisement of a bad faith offer. There is no evidence on the record of this proceeding that persuades the Panel that Respondent had a purpose for registering the disputed domain name other than for the purpose of selling it for a price in excess of its out-of-pocket costs directly related to the name. The Panel determines such registration and use to be in bad faith.
In the interests of administrative economy, the Panel will refrain from making determinations regarding other potential bad faith activities on the part of Respondent.
The Panel determines that Respondent has registered and used the domain name
"e-ge.com" in bad faith within the meaning of paragraph 4(b)(i) of the Policy. Complainant has thus established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.
The Panel will therefore request the registrar to transfer the domain name "e-ge.com" to the Complainant.
Based on its finding that the Respondent, Online Sales.Com, Inc., doing business as Online Sales, Inc., has engaged in abusive registration of the domain name "e-ge.com" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name "e-ge.com" be transferred to the Complainant, General Electric Company.
Frederick M. Abbott
Date: June 19, 2000On June 5, 2000, Respondent objected to WIPO by e-mail regarding the fact that Complainant had not transmitted to Respondent’s authorized representative its request to transmit the Supplemental Submission to the Panel, along with the Submission, at the same time it transmitted the request to WIPO. Respondent indicated that it was prejudiced by not being able to object in a timely manner to the request for a determination by the Panel. Complainant indicated that it had transmitted its proposed submission to Respondent (although not to its authorized representative as it had requested in its Response). The Panel’s decision of June 6 regarding the Supplemental Submission stated:
"I have considered the Complainant’s request to submit a supplemental submission of new facts in this matter, and make the following decision:
Since Complainant’s supplemental submission of new facts is directly related to the context in which the Respondent is using the disputed domain name, and since the Respondent’s alleged new use arises after the submission of the Complaint (and thus could not have been identified by Complainant in its initial submission), the Panel will accept the supplemental submission solely for purposes relating to the identification of after-arising facts.
In light of the Panel’s decision to accept the supplemental submission from Complainant, the Respondent is correspondingly given leave to file a supplemental submission solely for the purpose of disputing the accuracy of the alleged new facts as stated by Complainant. Any such supplemental submission by Respondent shall be received by WIPO within three business days of WIPO’s transmission by e-mail of this decision to Respondent. Neither Complainant nor Respondent is requested by the Panel to submit additional legal argumentation.
Please let me know if you have any questions regarding the foregoing."See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000. For purposes of making its determination in this proceeding, the Panel does not need to consider the significance of Complaint’s stylized "GE" mark. 2.15 USCS § 1057(b). See, e.g., Avery Dennison v. Sumpton (9th Cir. 1999), 189 F.3d 868. See Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1055, (9th Cir. 1999). See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498, (2d Cir. 2000), citing Brookfield, id. For purposes of its decision, the Panel need not address whether ".com" may be capable of acquiring secondary meaning in another context. Busy Body, Inc. v. Fitness Outlet Inc., Case No. D2000-0127, decided April 22, 2000. The prefix "e" is used with and without a hyphen to convey the same meaning. There is no meaningful distinction between "e" and "e-" in the context of domain name usage. ETS v. TOEFL, supra note 3. Id