WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

General Electric Company v. Gentryhoneywell Inc. and Hiroi Moya

Case No. D2001-0136

 

1. The Parties

The Complainant is General Electric Company ("the Complainant") or ("GE"), a corporation incorporated under the laws of the State of New York, with the principal place of business at 3135 Easton Turnpike, Fairfield, Connecticut, USA.

The Respondents are Hiroi Moya of 10-3-25 Habuchi, Tzuki-ku, Koyama, gaya, Japan and Gentryhoneywell Inc. of the same address ("the Respondents").

 

2. The Domain Name and Registrar

The domain name in issue is <GE-Honeywell.com>. The registrar of the domain name is TUCOWS Inc. of 96 Mowat Avenue, Toronto, Ontario M6K 3M1, Canada ("TUCOWS").

 

3. Procedural History

On January 25, 2001, the Complainant filed a Complaint in respect of the domain names <GE-Honeywell.com> and <GEHoneywell.net>, as against QNIC Internet ("the original First Respondent"), the address of which is 2F, 19-13 DongmyungDong DongGu, Gwangju, Korea, and Seo Yong, Jeong of the same address. The registrar was Network Solutions Inc. ("NSI") of 505 Huntmar Park Drive, Herndon, Virginia, USA.

A Complaint in respect of each domain name was made to the WIPO Arbitration and Mediation Center ("the Center") via email in accordance with the Internet Corporation for Assigned Names and Numbersí ("ICANN") Uniform Domain Name Dispute Resolution Policy ("the Policy"). Hard copies of the complaint were received on January 26, 2001.

On January 29, 2001, the Center acknowledged the receipt of the Complaint.

On March 5, 2001, the Center received the NSI verification response, stating that the registrar of <GE-Honeywell.com> was TUCOWS and the registrar of <GEHoneywell.net> was HANGANG Systems, Inc. D/B/A <DORGEI.com> ("Hangang").

On March 14, 2001, a request for registrar verification was sent to TUCOWS in respect of <GE-Honeywell.com>.

On March 14, 2001, a request for registrar verification was sent to Hangang with respect to <GEHoneywell.net>.

On March 15, 2001, TUCOWSí verification response was that the domain name was registered but that the original First Respondent was not the current registrant of the domain name. The registrant was Gentryhoneywell Inc. of 10-3-25 Habuchi, Tzuki-Ku, Koyama, Giya, Japan and the administrative, technical and billing contact was Hiroi Moya of the same address. The response further stated that the Policy applied.

On March 23, 2001, the Hangang verification response in respect of <GEHoneywell.net> was that the domain name had been registered on February 14, 2001, and that the current registrant of the domain name was not the original First Respondent but Jeonggon Seo of 1475-3 Yongchunri, Changsungeub, Changsungun, Chunnam, Republic of Korea. The same person was the administrative, technical and billing contact. The language of that registration agreement was Korean. As was pointed out in correspondence between the Center and the Complainant, a Complaint in respect of <GEHoneywell.net> had to be filed in Korean, unless an agreement was reached with the registrant of the domain name to use another language. There is nothing before the panel to indicate that such agreement was reached.

On May 16, 2001, an amended complaint was submitted by GE in electronic form in respect of the domain name <GE-Honeywell.com> naming Hiroi Moya and Gentryhonewell Inc as respondents ("the Amended Complaint"). Hard copies were received on May 21, 2001.

On May 17, 2001, TUCOWS confirmed that the domain name <GE-Honeywell.com> was registered with TUCOWS with the same registration details as previously notified.

On May 21, 2001, the Center verified that, with respect to the <GE-Honeywell.com> domain name, the Amended Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").

May 21, 2001, is the date of the notification of the Complaint and the commencement of administrative proceedings in respect of <GE-Honeywell.com> to the Respondents. The notification complied with paragraph 2(a) of the Rules.

On June 12, 2001, the Center sent to the Respondents a notification of the Respondentsí default. No response has been received.

On July 3, 2001, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Dr. Annabelle Bennett SC ("the Sole Panelist"), the Center notified the parties of the appointment of the Administrative Panel consisting of the sole panelist.

 

4. Factual Background

The following facts taken from the Amended Complaint are not disputed.

GE has continuously owned and used the name and mark "GE" and a stylized GE monogram logo in connection with GEís products and services (collectively, the "GE Marks") for a long time and well prior to the Respondentsí registration of the domain name. The GE Marks are registered, inter alia, in the United States of America, Japan and the Republic of Korea.

The Complainant provided a representative listing of the GE Marks that had been registered with the United States Patent and Trademark Office, within Japan and within the Republic of Korea. The classes of goods for which the GE Marks are registered are very broad in scope. GE has spent billions of dollars in advertising and promoting the GE Marks in connection with its products and services throughout the United States of America and the Far East, including Japan and the Republic of Korea and has sold hundreds of billions of dollars worth of these products and services under and in connection with the GE Marks throughout the same geographical area. The GE Marks are well recognized and represent valuable goodwill.

The Complainant owns and has registered the domain name GE.com and maintains an active website at "www.GE.com". It also owns and operates numerous divisions and subsidiaries using a GE prefix as part of the name, for example, GE Medical Systems and GE Capital Services. GE has also registered additional domain names incorporating the GE Mark, such as GEHealthproducts.com.

On or about October 22, 2000, GE publicly announced its intention to acquire the Honeywell Corporation. The domain name at issue comprises the GE Marks and trade name of the Complainant with the name of the target acquisition.

 

5. The Complainantís Contentions

The Complainant asserts that the domain name is identical, or confusingly similar, to trademarks or service marks in which the Complainant has right and relies upon the decision in General Electric Company v. CPIC NET and Hussain Syed (WIPO Case No. D2001-0087) ("the GE v. CPIC case") in respect of the domain name <GEHoneywell.org>.

The Complainant has made compendious contentions in respect of the Respondentsí lack of rights in the domain name and their bad faith in registering and using it. The Complainant points to a number of matters including the following:

(i) The Respondents have registered the domain name without the consent of the Complainant and have no bona fide commercial or non-commercial basis for using the domain name.

(ii) The domain name as well as the related domain name GEHoneywell.net were registered by a company called QNIC Internet acting through an individual by the name Jeong Seo Young on the same day that it became publicly known that GE was one of three possible candidates to acquire Honeywell.

(iii) Despite the fact that the NSI WHOIS data base did not reflect the fact that the registration of those two domain names had lapsed and were released to the public domain, the domain names were again registered on February 14, 2001, in the name of the First Respondent with TUCOWS. The Complainant relies upon this knowledge on the part of the Respondents to indicate that they are the same as or acting in concert with the original First Respondent.

(iv) There was then a series of communications between the Complainant and the Respondents through Ms. Moya. In the course of that communication, Ms. Moya asked what the Complainant could "do for" her in return for a transfer of the domain name. She initially asked for $6,000.00 in return for a transfer of the domain name. When asked to prove that $6,000.00 in expenses were in fact incurred in connection with the domain name, Ms. Moya offered no such support but offered to transfer the domain name for $2,000.00, asserting that it would cost the Complainant $2,000.00 to take legal action at WIPO.

(v) The Complainant asserts that it has investigated the address and phone number provided by the Respondents to NSI and has established that the address is incomplete and, in effect, meaningless. Similarly, the phone number is incorrect and the Complainant could not obtain an answer to that number or a number using a similar or more likely area code.

(vi) The Complainant asserts that it was unable to find any company called Gentryhoneywell listed anywhere in Japan.

(vii) The Complainant asserts that Ms. Moya is not really based in Japan but that the messages as sent by her came from the Republic of Korea and were not sent from the registered email address at Yahoo, but from another account.

The Complaint contends that each of the elements of paragraph 4(a) of the Policy are present. The Respondents have not answered or disputed any of the contentions.

 

6. Discussion and Findings

Identical or Confusingly Similar

It is clearly apparent that the domain name at issue,<GE-Honeywell.com> includes the GE trademark and trade name of the Complainant with the name of its target acquisition. As was pointed out in the case Pharmacia & Upjohn AB v. Monsantopharmacia.com Inc. (WIPO Case No. D2000-0446) there is a jurisprudence being developed by a wide variety of panelists under the Policy which provides a fruitful source of precedent. In the GE v. CPIC case, the panel considered the domain name, <GEHoneywell.org>. There as here, the panel had to consider the elements that have to be proved by the Complainant under paragraph 4(a) of the Policy, namely:

(i) that the domain registered by the Respondents are identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the Respondents have no rights or interest in respect of the domain name; and

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

Here, the Complainant has set out the numerous registered trademarks and asserts that they are valid and subsisting. There is no evidence to rebut the assertion that the Complainant has ownership of the trademark GE and the exclusive right to its use. The panel finds that, for the purposes of these proceedings, the Complainant has enforceable rights in the GE Marks.

It was pointed out by the sole panelist in the GE v. CPIC case, citing other panel decisions which do not need to be repeated here, that "numerous panel decisions have established that the addition of words or letters to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark". In that case, as here, the domain name at issue consists of a combination of the trademark and trade name of the Complainant along with the name of the target acquisition. There, as here, the domain name misleadingly suggests an association with, or relationship to, the Complainant which does not exist or which may lead to confusion. The Complainant asserts, and there is no assertion to the contrary by the Respondents, that neither the letters "GE" or the word "Honeywell" have a generic meaning.

The reasoning of the panel in the GE v. CPIC case applies to the domain name at issue in this matter.

The panel concludes that the Respondentsí domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights.

Rights or Legitimate Interests in Respect of the Domain Name

The factual matters put forward by the Complainant are indicative of an absence of any right or legitimate interest in respect of the domain name. The Respondents have not established any such right or interest. There is no evidence of any of the matters under paragraph 4(c) of the Policy and there is no evidence before the panel to suggest that any such right or interest exists.

Bad Faith

Paragraph 4(b) of the Policy sets out four non-exclusive criteria for the Complainant to show registration and use of a domain name in bad faith. The circumstances of bad faith are not limited to those criteria. The factual matters that have been referred to above are indicative of bad faith on the part of the Respondents. There has been no evidence to contradict this conclusion. In particular, the timing of the registration of the mark, the submission of false registration information (which is itself an indication of bad faith (Nintendo of America Inc. v. Lipson (WIPO Case No. D2000-1121)) and the course of conduct in negotiation for the transfer of the domain names provide overwhelming evidence of bad faith.

As was noted in the GE v. CPIC case, "numerous ICANN panels have ruled that the registration of a domain name shortly after an announced corporate merger, constitutes bad faith and justifies finding the complainant and transferring the domain name, even without a direct offer to sell the domain or an active use". There are numerous panel decisions in which findings of bad faith were made in circumstances where the Respondents offered to sell the domain name at a substantial price that could not be directly attributed to out-of-pocket expenses directly related to the domain name.

The Complainant contended that the evidence establishes a reasonable inference that the Respondents registered the disputed domain name for the primary intention of selling it to the Complainant (or to a competitor) for valuable consideration in excess of their out-of-pocket expenses directly related to the domain names, thus constituting bad faith within the meaning of paragraph 4(b)(i) of the Policy. The panel agrees with this contention.

The evidence establishes the circumstances set out in paragraph 4(b)(i) of the Policy. In addition, as in the GE v. CPIC case, the evidence, which has not been rebutted by any facts put forward by the Respondents, establishes:

(i) actual and constructive knowledge by the Respondents of the Complainantís rights in the GE Marks upon the registration of the domain name;

(ii) a course of conduct supporting the inference that the Respondents were trying to capitalize on the Complainantís potential merger with Honeywell Corporation;

(iii) the use of the Complainantís entire mark creating an absence of any plausible use of the domain name that would constitute good faith;

(iv) an intent to profit from registration of the domain name which is inconsistent with an intent to engage in any legitimate use of the domain name.

The Complainant has proved each of the matters required to be proved under paragraph 4(a) of the Policy.

 

7. Decision

The panel concludes:

(i) that the domain name registered by the original First Respondent is confusingly similar to the Complainantís registered GE Marks;

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

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

Accordingly, pursuant to paragraph 4(i) of the Policy, the panel requires that the registration of the domain name <GE-Honeywell.com> be transferred to the Complainant.

 


 

Dr. Annabelle Bennett SC
Sole Panelist

Dated: July 17, 2001