WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
General Electric Company v. mr domains (Marcelo Ratafia)
Case No. D2000-0594
1. The Parties
Complainant is the General Electric Company, 3135 Easton Trunpike, Fairfield, Connecticut, U.S.A., 06431.
Respondent is mr domains (Marcelo Ratafia), Br. Artigas 1645, Apto. 102, Montevideo, 11200 Uruguay.
2. The Domain Names and Registrar
The domain names at issue (hereinafter the Domain Names) are:
The registrar of the Domain Names is Register.com Inc., 575 8th Avenue, 11th Floor, New York, New York, U.S.A. 10018 [hereinafter the Registrar].
3. Procedural History
On June 13, 2000, the Complainant filed a complaint [hereinafter the Complaint] with the WIPO Arbitration and Mediation Center [hereinafter the Center], receipt of said Complaint being acknowledged by the Center in a facsimile to the Complainant dated June 17, 2000, a copy of which was also sent to the Respondent by e-mail. Included with the Acknowledgement of Receipt of Complaint was a Complaint Deficiency Notification wherein the Center informed the complainant that the Complaint was deficient in two manners: the Complaint had not been submitted in electronic format and the requisite on original and four copies of the Complaint had not been submitted to the Center.
In a letter dated the same date the Center informed the Registrar that a complaint had been submitted to the Center regarding the Domain Names. On June 22, 2000 the Registrar confirmed that the Domain Names had been registered via the Registrarís registration services and that the Respondent was the current registrant of the Domain Names.
The Center then proceeded to verify that the complaint satisfied the formal requirements of the Rules for Uniform Dispute Resolution Policy [hereinafter referred to as the ICANN Rules] and the World Intellectual Property Organisation Supplemental Rules for Uniform Dispute Resolution Policy [hereinafter referred to as the WIPO Rules], including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on July 4, 2000.
The Panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Centerís assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.
In a letter dated July 6, 2000, the Center informed the Respondent of the commencement of the proceedings as of July 6, 2000 and of subsection 5(a) of the ICANN Rules which grants the respondent 20 days to respond to the Complaint. Evidence provided by the Center supports the finding that the Center acted diligently in its attempts to inform the Respondent of the proceedings.
In a letter July 26, 2000, the Center informed the Respondent that he was in default pursuant to the ICANN Rules and the WIPO Rules and that an administrative panel would be appointed based on panelists designated by the Complainant. The Panel was appointed on August 10, 2000. The Panel believes the Panel was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
On July 26, 2000, the Center received an e-mail from the Respondent advising of attempts to cancel the Domain Names. A hard copy of the Respondentís letter to the Registrar requesting cancellation of the Domain Names was received by the Center on August 2, 2000.
No further submissions have been received formally by the Panel from either party since its formation. Initially, the Panel was advised it would be obliged to render a decision on or prior to August 24, 2000. However, the Panel initially delayed commencing review of the documentation as the Parties had indicated there was an attempt to transfer the Domain Names. The Panel therefore requested an extension until August 28, 2000, said extension being granted. The Panel intends to fulfil its obligation to issue a decision on or prior to August 28, 2000, without the necessity of further investigations. The decision is to be rendered in the English language and the Panel is unaware of any other proceedings which may have been undertaken by the parties or others in the present matter.
4. Factual Background
The Complainant is a corporation incorporated under the laws of NewYork. The Complainant is engaged in a wide variety of businesses including the manufacture of lights and electrical appliances, medical diagnostic equipment and financial services. In August 1986 the Complainant registered the domain name "ge.com".
No information has been supplied regarding the attributes and businesses of the Respondent.
The Complainant holds a number of registrations for the trademark "GE" for use with a wide variety of products in a number of different industries. These registrations date beginning in the mid 1970s.
The Complainant owns and uses the domain name "www.ge.com" for its corporate website, said domain name having been registered in August 1986. The Complainant also owns and used numerous trademarks and numerous domain names which contain the prefix GE as part of the name.
A print out from the Registrarís WHOIS database reveals that the Respondent registered the Domain Names on February 4, 2000. On the same date, the Respondent informed the Complainant in an e-mail that he was the owner of the Domain Names and would sell them for $500,000 each.
5. Partiesí Contentions
At paragraph 12(b) to the Complaint the Complainant maintains that it has spent billions of dollars in advertising and promoting the GE marks in connection with its products and services throughout the United States.
At paragraph 12(c) to the Complaint the Complainant maintains that by virtue of the long use, widespread advertising and sales, the "GE" trademark has become well recognised and famous.
At paragraph 12(e) to the Complaint the Complainant maintains that, as the "GE" trademark has no generic meaning, and as it has been used as a prefix in combination with a large assortment of generic terms as designation for its numerous subdivisions and subsidiaries, the public has come to associate such combinations with the Complainant. Therefore, the Complainant continues, registration of the Domain Names by the Respondent creates a strong likelihood of confusion with the Complainantís "GE" trademark.
At paragraph 12(f) to the Complaint the Complainant maintains that the Respondent lacks rights in the Domain Names and had registered them and is using them in bad faith.
The Respondent failed to file a response with the Center within the foreseen delays and has failed to file a response since.
6. Discussion and Findings
Referring to paragraph 14 of the ICANN Rules, in the absence of a response to the Complainantís claims by the Respondent, the Panel considers those claims in the light of the unchallenged evidence submitted by the Complainant. However, the Panel cannot decide in the Complainantís favor solely given the Respondentís default but is entitled to draw, and does, such inferences as it feels just from the Respondentís failure to respond.
Pursuant to the Uniform Domain Name Dispute Resolution Policy [hereinafter the ICANN Policy] the Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent on the Complainant to show:
i) that the Domain Name is identical or confusingly similar to a trademark in which the Complainant holds rights;
ii) that the Respondent has no legitimate rights or interests in the Domain Name; and
iii) that the Domain Name was registered and used in bad faith.
These three elements are considered below.
Identical or Confusingly Similar to Trademark
As stated above, the Complainant has provided evidence to the effect that 5 U.S. registrations have been made for the "GE" trademark. The Panel is of the opinion that the evidence provided by the Complainant supports a finding that the Complainant has registered the trademark "GE". This is notwithstanding the fact that the Domain Names have been formed by adding the prefix "www-" to the trademark. In the Panelís opinion "www-" used in this context is a generic term which does nothing to reduce the potential for confusion, and therefore the panel is of the opinion that the Domain Names are for all intents and purposes identical to the registered trademark. The Panel is therefore of the opinion that the Complainant has readily met the burden of proof as established by paragraph 4(a)(i) of the ICANN Policy.
No Rights or Interest
Paragraph 4(a)(ii) of the ICANN Policy inquires as to whether or not the respondent has any rights or legitimate interests vested in the Domain Names. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the Domain Names in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the Domain Names; and (iii) legitimate non-commercial or fair use of the Domain Names.
No evidence was provided by the Respondent to dispute the Complainantís contention that the Respondent possesses no rights to the Domain Names. In this regard the Panel is of the opinion that the Respondent has failed to establish a legitimate right or interest under paragraph 4(c)(ii) and (iii) in that there is no evidence to support a finding that the Respondent is commonly known by the Domain Names nor is there any evidence that the Respondent has a legitimate non-commercial or fair use of the Domain Names. Additionally, the Panel finds that: the Respondent is not a licensee of Complainant, nor has he received any permission or consent to use the trademark "GE"; the Complainant has prior rights in that mark which precede Respondentís registration of the Domain Names; and the Respondent is not (either as an individual, business or other organization) commonly known by the name "www-GE".
The Panel is also of the opinion that the Respondent has no legitimate right or interest under paragraph 4(c)(i), i.e. that by merely offering the Domain Names for sale the Respondent has failed to demonstrate the existence of the use of, or preparation to use, the Domain Name in connection with a bona fide offering of goods or services.
Furthermore, the Panel finds it appropriate in this regard to draw an adverse inference from the Respondentís failure to reply to the Complaint and detail any legitimate rights or interests he may have in the Domain Names of the type defined in paragraph 4(c) of the ICANN Policy.
Pursuant to paragraph 4(a)(iii) of the ICANN Policy it is incumbent on the Complainant to prove that the Respondent has registered and is using the Domain Name in Bad Faith. Paragraph 4(b) of the ICANN Policy provides a number of circumstances which, if found to be present, are evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(i) of the ICANN Policy holds that, if the circumstances indicate that the domain name was registered for the purpose of selling the domain name to the complainant, that the complainant is the owner of the trademark and that the consideration sought by the Respondent is in excess of documented out-of-pocket costs directly related to the domain name, then this is evidence of bad faith registration and use on behalf of the Respondent.
Given that the evidence supports a finding that on the very day that the Respondent registered the Domain Names he offered them for sale for $500,000 each to the Complainant, a sum which is obviously greatly in excess of any out-of-pocket expenses the Respondent may have been obliged to pay for registering the Domain Names, the Panel is of the opinion that paragraph 4(b)(i) of the ICANN Policy applies and the Respondent has registered and is using the Domain Names in bad faith.
For the foregoing reasons, the Panel decides:
- that the Domain Names registered by the Respondent are confusingly similar to the trademark to which the Complainant has rights;
- that the Respondent has no rights or legitimate interests in respect of the Domain Names; and
- the Domain Names have been registered and are being used by the Respondent in bad faith.
Accordingly, the Panel finds that the Complaint should be allowed and the Domain Names:
be transferred to the Complainant and so directs Register.com to do so forthwith.
Hugues G. Richard
Dated: August 28, 2000