WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

General Electric Company v. Mark White and Associates

Case No. D2000-0344

 

1. The Parties

The Complainant is General Electric Company, 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 Mark White and Associates, with place of business in Hendersonville, North Carolina, USA.

 

2. The Domain Name(s) and Registrar(s)

The disputed domain name is "gelightingsystems.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) Complainant initiated the proceeding by the filing of a complaint by courier mail received in hardcopy 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 9, 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. Notification was also successfully transmitted by telefax to Respondentís Administrative and Technical Contacts.

c) On June 5, 2000, WIPO transmitted notification to Respondent of its default in responding to the complaint via e-mail, telefax and courier mail (with telefax to Respondentís Administrative and Technical Contacts).

d) On June 7, 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 7, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

e) On June 8, 2000, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by June 22, 2000. On June 8, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.

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 (taking note of Respondentís default in responding to the complaint). 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. 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.

Complainant owns a subsidiary company, "GE Lighting Systems", established in 1997, and located in Hendersonville, North Carolina. Since 1997, Complainant has used the trademark and trade name "GE Lighting Systems" in commerce in connection with the sale of high intensity discharge lighting systems. Complainant has advertised the GE Lighting Systems mark.

Complainant has registered and uses the domain name "ge-lightingsystems.com". According to a Network Solutionsí WHOIS database query printout, this domain name was registered on August 9, 1999. Complainant is the named registrant (Complaint, Annex D).

Complainant has registered and uses the domain name "ge.com". According to a Network Solutionsí WHOIS database query printout, this domain name was registered on August 5, 1986. Complainant is the named registrant (Complaint, Annex D).

Network Solutionsí WHOIS database query response (Complaint, Annex B) indicates that "Mark White and Associates," with Administrative Contact at "ePlace Interactive Inc.", is registrant of the domain name "GELIGHTINGSYSTEMS.COM". The record of this registration was created on April 16, 1999, and was last updated on April 16, 1999 (id.). As of April 25, 1999, the website located at the "gelightingsystems.com" address displayed the message "This Site is under construction" (id., Annex E).

Network Solutionsí WHOIS database query response (Complaint, Annex F) indicates that Respondent is the registrant of the following domain names, in addition to the disputed domain name: "COCACOLAUSA.COM" (record created February 10, 1999), "GMACHOMESERVICES.NET" (record created June 24, 1999) and "GMACREALESTATE.COM" (record created June 24, 1999). As of April 25, 1999, the websites located at the "COCACOLAUSA.COM" and "GMACHOMESERVICES.NET" addresses each displayed the message "This Site is under construction" (id., Annex G).

The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutionsí 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. Partiesí Contentions

A. Complainant

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).

Complainant states:

"(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 GEís long use, widespread advertising and enormous sales, the GE marks have become well-recognized and famous, and represent goodwill of extraordinary value.

"(d) The Complainant is sole owner of a subsidiary named GE Lighting Systems, established in 1997. GE Lighting Systems is located in Hendersonville, North Carolina. Since 1997, GE Lighting Systems has continuously used the name and mark GE LIGHTING SYSTEMS throughout the United States in connection with a complete line of high intensity discharge lighting fixtures for illuminating streets, highways, industrial facilities, and outdoor areas such as parks and parking lots.

"(e) By virtue of its being a member of the family of famous GE marks, and by virtue of its use since 1997, with substantial sales and advertising, the name and mark GE LIGHTING SYSTEMS has become well-recognized in the United States as embodying and extending the fame of the GE marks.

"(f) The Complainant also owns, has registered and uses numerous domain names that include GE, including, but not limited to, www.ge.com and www.ge-lightingsystems.com. Copies of NSI's Whois database information pages showing Complainant's registration of these domain names are attached. Ö

"(g) The domain name at issue, www.gelightingsystems.com, consists of and is identical with the trademark and trade name of Complainant's wholly-owned subsidiary, GE Lighting Systems. GE Lighting Systems maintains an active web site at the domain name ge-lightingsystems.com.

"(h) The Respondentís 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 is using the domain name gelightingsystems.com without the consent or approval of GE.

(ii) Respondent appears to have no intellectual property rights in the domain name www.gelightingsystems.com.

(iii) (Respondent appears to have no bona fide commercial or noncommercial basis for using the domain name www.gelightingsystems.com.

(iv) The web site located at the address states that it is currently Ďunder construction.í The web site neither discloses Respondent's identity nor contains any substantive content. Ö

(v) Respondent registered other domain names containing famous marks to which Respondent appears to have no claim or rights, including www.cocacolausa.com, www.gmachomeservices.net and www.gmacrealestate.net. Copies of NSI's Whois database information pages for these domain names are attached Ö. The web sites located at the addresses and www.gmachomeservices.net Ö display an Ďunder constructioní sign identical to that at the address. The domain name www.gmacrealestate.net is inactive.

(vi) Respondent is located in the same city (Hendersonville, North Carolina) as Complainant's subsidiary which bears the name and mark used in Respondent's domain name, namely, GE Lighting Systems.

(viii) Respondent's registration of the domain name www.gelightingsystems.com prevents Complainant from registering and using that domain name.

"(i) Complainant, upon learning of Respondent's registration of www.gelightingsystems.com, unsuccessfully attempted to contact Respondent on several occasions. On February 2, 2000, Complainant sent Respondent a formal cease and desist letter. Ö Respondent did not respond to Complainant's letter." (Id., para. 12)

Complainant requests that the Panel ask the Registrar to transfer the domain name

"gelightingsystems" from Respondent to it (id., para. 13).

 

B. Respondent

Respondent did not reply to Complainantís contentions.

 

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 1. 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 have 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 case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO. There is ample evidence in the form of air courier receipts, and confirmations of the sending of e-mail and telefax, that Respondent was notified of the Complaint and commencement of the proceedings (see Procedural History, supra).

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) Respondentís 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

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

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, para. 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainantís undisputed representations (id., para. 14(b)).

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) 2. Complainantís registration of the trademark on the Principal Register at the PTO establishes a presumption of validity of the mark in U.S. law 3. The Panel determines that Complainant has rights in the trademark "GE". Based on the May 7, 1974, date of Complainantís 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 Complainantís rights in the trademark arose prior to Respondentís registration, on April 16, 1999, of the disputed domain name "gelightingsystems.com".

Complainant owns a subsidiary company named "GE Lighting Systems", and has used the "GE Lighting Systems" trademark in commerce since 1997. Complainantís use in commerce of that mark preceded Respondentís registration of the domain name "gelightingsystems.com" (see Factual Background, supra). The Policy requires that a Complainant have "rights" in a trademark that is subject to abuse by a Respondent (Policy, para. 4(a)(i)). It does not require that a trademark be registered by a governmental authority for such rights to exist. In U.S. law, trademark infringement actions may be brought under the unfair competition provisions of the Lanham Act on the basis of unregistered marks (and common law rights) 4, and U.S. legislation authorizing infringement actions based on abusive domain name registration does not require registration of a mark as a condition for obtaining relief 5.

Complainantís ownership of a business named "GE Lighting Systems", combined with its use of the trademark "GE Lighting Systems" on goods in commerce, in light of its subsisting trademark registrations for "GE", persuade the Panel that the Complainant has "rights" in the trademark "GE Lighting Systems" in the United States. The Panel determines that Complainant has rights in the trademark "GE Lighting Systems".

Respondent has registered the domain name "gelightingsystems.com". This name is identical to Complainantís trademark "GE Lighting Systems", except that (1) the domain name eliminates the space between "GE", "Lighting" and "Systems", (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 and initial capital letters.

Insofar as domain names are not case sensitive, and the elimination of the spacing between words in domain names is dictated by technological factors and common practice among domain name registrants, the Panel concludes that use of the lower case letter format in "gelightingsystems.com", and elimination of the space between the words "GE", "Lighting" and "Systems" to form that name, are differences without legal significance from the standpoint of comparing "gelightingsystems.com" to "GE Lighting Systems" 6 . Similarly, the addition of the generic top-level domain (gTLD) name ".com" is likewise 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 7.

For purposes of this proceeding, it is unnecessary to decide whether, in light of these factors, Respondentís domain name is "identical" to Complainantís trademark, since Respondentís domain name "gelightingsystems.com" is without doubt confusingly similar to Complainantís trademark "GE Lighting Systems".

Complainant has met the burden of proving that Respondent is the registrant of a domain name that is identical or confusingly similar to a trademark in which the Complainant has rights, and 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 "gelightingsystems.com", other than that it has registered the domain name, and has used it in connection with the posting of a "This Site is under construction" web page. 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 a domain name so as to avoid the application of paragraph 4(a)(ii) of the Policy.

Respondent has furnished no evidence of any legitimate use or preparation to use the disputed domain name. There is no evidence on the record of this proceeding of any such legitimate use or preparation to use by Respondent, other than Respondentís posting of a standard format "This Site is under construction" page at the address identified by the disputed domain name. The Panel does not regard this limited use as of legal significance for the purpose of deciding this proceeding. Absent evidence to the contrary, the posting of a standard format "under construction" web page is effectively no more than a part of the registration process, and for the purpose of this proceeding the Panel treats it as such 8. Registration, standing alone, does not establish rights or legitimate interests in a domain name in the sense of paragraph 4(a)(ii) of the Policy.

On the record of this proceeding, the only use of the domain name by Respondent involves circumstances that are hereafter determined to be in bad faith within the meaning of paragraph 4(b)(i) of the Policy. Such use does not, standing alone, establish rights or legitimate interests in the domain name.

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 third element that must be proven by Complainant to establish Respondentís abusive domain name registration is that Respondent has registered and is using the disputed domain name in bad faith. The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Most relevant to the current proceedings: 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)).

Respondent has registered "gelightingsystems.com". As a consequence, Complainant is unable to reflect its trademark "GE Lighting Systems" in a corresponding domain name 9. Absent any contrary indication from Respondent, the Panel infers that Respondent intended the logical consequences of its acts, and that it registered the disputed domain name "in order to prevent" Complainant from using its trademark in a corresponding domain name.

Complainant has provided evidence that Respondent has registered several other domain names that are confusingly similar to trademarks held by third parties. For example, "cocacolausa" registered by Respondent 10 is confusingly similar to the trademark "cocacola" registered by the Coca Cola Company 11. The domain names "gmacrealestate.com" and "gmachomeservices.net" are registered by Respondent 12. GMAC Real Estate and GMAC Home Services are trademarks actively used by GMAC Home Services in its business. 13

The Panel is satisfied that Respondent has engaged in a pattern of conduct intended to prevent trademark holders from using their marks in corresponding domain names.

The Panel determines that Respondent has registered and used the domain name "gelightingsystems.com" in bad faith within the meaning of paragraph 4(b)(ii) 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 direct the registrar to transfer the domain name "gelightingsystems.com" to the Complainant.

 

7. Decision

Based on its finding that the Respondent, Mark White and Associates, has engaged in abusive registration of the domain name "gelightingsystems.com" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name "gelightingsystems.com" be transferred to the Complainant, General Electric Company.

 


 

Frederick M. Abbott
Sole Panelist

Dated: June 22, 2000


Footnotes:

1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.

2. For purposes of making its determination in this proceeding, the Panel does not need to consider the significance of Complaintís stylized "GE" mark.

3. 2.15 USCS ß 1057(b). See, e.g., Avery Dennison v. Sumpton (9th Cir. 1999), 189 F.3d 868.

4. 15 USCS ß 1125(a). See, e.g., Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1047, n. 8, (9th Cir. 1999).

5. 15 USCS ß 1125(d).

6. See Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1055 (9th Cir. 1999).

7. 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.

8. This is by no means to suggest that the posting of an "under construction" web page is indicative of a wrongful intention, either by Respondent or by any other party that may choose to post one. In the context of this proceeding, it is an act without legal significance.

9. The Panel recognizes that Complainant has successfully registered the domain name "ge-lightingsystems.com." This does not alter the fact that Complainant is precluded by Respondentís conduct from registering a domain name directly corresponding to its trademark.

10. Factual Background, supra.

11. See http://www.thecocacolacompany.com (site visited by Panel, June 22, 2000).

12. Factual Background, supra.

13. See http://www.gmac-real-estate.com (site visited by Panel, June 22, 2000).