WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

General Electric Company v. Japan, Inc.

Case No. D2001-0410

 

1. The Parties

Complainant is General Electric Company ("GE"). Complainantís address is 3135 Easton Turnpike, Fairfield, CT 06431, USA. Respondent is Japan, Inc. ("Japan, Inc.").

Respondentís address is 495 Ashford Avenue, Ardsley, NY 10502, USA.

 

2. The Domain Name and Registrar

This dispute concerns the following domain name: <japan-ge.com> ("Domain Name"). The registrar with which the domain name is registered is Network Solutions, Inc.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received the Complaint by e-mail and in hard copy on March 22, and March 26, 2001, respectively. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is March 28, 2001.

Issuance of Complaint

The Complaint indicates that NSI WHOIS ("NSI") records for the Domain Name lists Respondent Japan, Inc. at the following address: 495 Ashford Avenue, Ardsley, NY 10502, USA. Complainant sent a copy of the Complaint by e-mail to Respondent. Japan, Inc. is the Administrative and Billing contact for the Domain Name.

Confirmation of Registration Details

On March 27, 2001, the Center transmitted, via e-mail to NSI, a request for registrar verification in connection with this case. On March 28, 2001, NSI transmitted by e-mail to the Center, their verification response confirming the domain name <japan-ge.com> is registered through NSI and that Japan Inc. is the Registrant and the Administrative Contact.

Notification of Complaint

On March 28, 2001, the Center transmitted to the Respondent, Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by April 16, 2001.

Filing of Response

On April 17, 2000, Respondent filed a Response by e-mail.

Supplemental Submissions

Complainant submitted to the Center a Reply to Respondentís Response, dated May 10, 2001, and Respondent submitted an Objection to that Reply, dated May 11, 2001. The Center furnished to the Panel electronic files of these supplemental submissions.

Constitution of Administrative Panel

On May 18, 2001, the Center notified the parties via e-mail that the Administrative Panel would consist of Professor Frederick M. Abbott and M. Scott Donahey and Mr. David Everett Wagoner as the Presiding Panelist.

Compliance with the formalities of the Policy and the Rules

Upon review of the file, the Panel concludes that the Center has fully complied with the formalities of the Policy and Rules, that Respondent was given adequate notice of this proceeding, and that Respondent has been accorded due process.

 

4. Factual Background

(1) Since long prior to Respondentís registration of the domain name, Complainant GE has continuously owned and used the name and mark "GE" and a stylized GE monogram logo (collectively, the "GE Marks") in connection with GEís products and services. A large number of Complainantís GE Marks is registered with government authorities in the United States. A Representative listing of the GE Marks that Complainant has registered with the United States Patent and Trademark Office is set forth in paragraph 11(a) of the Complaint.

(2) 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.

(3) By virtue of GEís long use, widespread advertising and enormous sales, the GE Marks have become well-recognized and famous in the U.S.

(4) The Complainant owns and has registered the domain name <ge.com> and it maintains an active web site at <ge.com>. Complainant also owns and has registered the domain name <gejapan.com> and it maintains an active web site at <gejapan.com>.

(5) In addition, Complainant owns and operates numerous domain names using "GE" as part of their name, in combination with a geographic name, such as <ge-china.com>, <ge-hongkong.com>, <ge-asia.com>, <ge-australia.com>, <ge-israel.com>, <ge-romania.com>, and many others, some of which are maintained as active websites, such as <ge-china.com>.

(6) Respondent is the business of selling gas turbines, components, spare parts, and related equipment, some of which were originally manufactured by Complainant and others by Complainantís competitors. Respondent registered the domain name for use in connection with these sales activities.

(7) The website operated at <japan-ge.com> states as follows:

Japan Inc. is an independent company dealing in the purchase and sale of Industrial Gas Turbines, Generators, Process and Pipeline Compressors.

Our services include major component and parts support.

We hold an extensive inventory of General Electric, Westinghouse, Rolls-Royce & Ruston turbines, components and spare parts.

Please contact us both for your needs, and disposal of your excess equipment.

(8) On or about March 21, 2000, Counsel for the Complainant, Patrick Murphy, sent a letter to Respondent by certified mail, demanding that it cease and desist its use of the domain name. On or about April 14, 2000, Respondent responded to Mr. Murphy, rejecting Complainantís demand for reasons reflected in its response to the complaint in this proceeding.

 

5. Partiesí Contentions

A. Complaint

The Complaint alleges that the Domain Name is nearly identical and confusingly similar to the GE Marks, that Respondent registered the Domain Name in bad faith for the purpose of capitalizing on the famous GE Marks and profiting from the international and domestic goodwill GE has built up in its famous trademarks and that Respondent has no rights or legitimate interests in respect of the Domain Name.

B. The Response

Respondent alleges that the domain name is not identical or confusingly similar to any trademark held by Complainant, that Respondent has legitimate interests in respect of the Domain Name since Respondent is using the domain name in connection with a bona fide offering of goods prior to notice of the dispute and Respondentís use is a fair use and that Respondent has neither registered nor used the domain name in bad faith.

 

6. Discussion and Findings

As a preliminary matter, the Panel does not accept the supplemental Reply to Respondentís Response submitted by Complainant. The Panel has discretion to accept supplemental submissions. However, in the present proceeding, Complainantís Reply does not address facts asserted by Respondent that Complainant should not reasonably have been aware of when preparing in its initial submission. Neither does Complainantís Reply address legal arguments from Respondent that Complainant may not have reasonably foreseen. There is insufficient basis for the Panel to accept Complainantís supplemental submission.

Paragraph 4(a) of the Policy directs that Complainant must prove, with respect to the domain name in issue, each of the following:

(1) The domain name in issue is identical or confusingly similar to the Complainantís trademarks or service marks; and,

(2) The Respondent has no rights or legitimate interests in respect of the domain name; and,

(3) The domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances, any one of which for purposes of Paragraph 4(a)(iii), shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved, shall demonstrate Respondentís rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar Domain Name

Complainant has proved that Respondentís Domain Name is confusingly similar to trademarks or service marks in which GE has rights.

The addition of the word "Japan" to "GE" has no trademark significance and does not eliminate a likelihood of confusion with Complainantís trademarks or service marks. For example, in NIKE, Inc. v. Jaeik Jung (WIPO Case No. D2000-1471; decided December 30, 2000), the Panel, in assessing the registration of the domain name <nike-europe.com> (and other variants thereof), stated as follows:

All of the additions to the trade marked word are for the geographical suffix or prefix "europe" or its close variant ("euro"). Geographical additions do not alter the underlying meaning of a domain name, so as to avoid confusing similarity. This has been held in many UDRP cases (citing cases).

Likewise, in Inter-IKEA v Polanski (WIPO Case No. D2000-1614; decided January 22, 2001), in connection with the domain name<ikeausa.com>, the panel stated:

Given the fame of the IKEA mark and also the activities of the Complainant in Poland, including a furnishing outlet in Krakow, it is inconceivable that the Respondent was unaware of the Complainant before registering <ikeausa.com>. Furthermore, it can be considered to be common knowledge of Internet users that the abbreviation "USA" stands for "The United States of America". It can therefore reasonably be excluded beyond any doubt that the Respondent created a fantasy name, which happened to consist of the word Ďikeaí and the letters Ďusa.í (emphasis added).

Respondent is using the Domain Name in connection with sale of GE turbines, components and spare parts, as well as in connection with the sale of equipment manufactured by GEís competitors. By creating a Domain Name that uses the mark GE together with Respondentís name, Respondent is improperly confusing consumers into believing that they have reached GEís website for Japan, or -- in the alternative -- creating a false impression that Respondent is associated or affiliated with GE.

B. Respondentís Rights or Legitimate Interests in the Domain Name

In the alternative to asserting that the Domain Name is not confusingly similar to Complainantís well-known GE mark, Respondent claims fair use rights in Complainantís mark on grounds that it is a reseller of used GE power generation equipment. As such, Respondent asserts that it is legitimately using the GE mark for purposes of advertising the availability of properly trademarked goods to the public.

A reseller of trademarked goods that is unaffiliated with or unauthorized by a trademark holder may well have certain fair use rights regarding the mark, depending upon the specific context of the use. If resellers were unable to refer to marks they would not be able to properly identify their resale goods to the public. There is a substantial body of judicial authority in the United States and elsewhere that establishes this fair use right, and Respondent has cited some of that authority to the Panel. (Footnote 1) However, this fair use right is carefully bounded by the requirement that a reseller not make use of the mark in a way that is likely to confuse consumers as to an affiliation between the trademark holder and the reseller (Footnote 2) Courts have generally disallowed the use by an unaffiliated reseller of another partyís trademark on a sign identifying a business, unless the signage expressly includes language sufficient to notify the consumer that the business is not affiliated with or authorized by the trademark holder. (Footnote 3)

In the instant proceeding:

(1) Respondent registered the Domain Name without the consent or approval of GE.

(2) Respondent is not commonly known by the Domain Name. Respondent is doing business in New York State under the name "Japan Inc."

(3) Although "Japan" is Respondentís name, as of the date of the filing of this Complaint, Respondent has not filed a trademark application with the USPTO for "Japan."

(4) The Domain Name is being used to offer GE products for resale. Respondent has no license or agreement with GE to distribute its products or act on its behalf or use its trademarks. Respondentís use of the Domain Name as a principal identifier of its business on the Internet implies that Respondent is affiliated with GE or is otherwise acting with the consent of GE. There is nothing in the Domain Name to suggest in any way that Respondent is independent of GE. Instead, Respondent has used the GE mark in the Domain Name in a manner directly comparable with the way that GE uses its mark in domain names identifying its websites.

(5) Respondentís website identified by the Disputed Domain name (that uses Complainantís mark) in fact offers for resale the products of a number of manufacturers whose products compete with Complainantís products. Respondent is not in this sense fairly using Complainantís mark because it is using the mark to direct consumers to competing products.

On the basis of the foregoing factors, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.

C. Domain Name Registered and Used in Bad Faith

The Panel finds that the Domain Name has been registered and is being used in bad faith.

The Domain Name is designed to imply that there is an affiliation between Respondent and Complainant or that GE endorses Respondentís activities even though no such affiliation or endorsement exists. ICANN panels have addressed such situations in several instances and have consistency held that it is bad faith to misrepresent an affiliation with a third party where none exists. In a case with similar facts, Caterpillar Inc. v. Matthew Quin (WIPO Case No. D2000-0314; decided June 12, 2000), the panel found for Complainant, holding:

The second element which the Complainant is required to prove is that the Respondent has no rights or legitimate interest in respect of the domain names in dispute. The domain names in dispute suggest some affiliation or connection of the Respondent with the Complainant when there is no such affiliation or connection. ... Companies or individuals seeking spare parts for Caterpillar equipment would enter the disputed domain names expecting to contact Caterpillar Inc. or one of its distributors. In fact, the company or person entering the disputed domain name ends up at a web page not affiliated or associated with the Complainant. The Respondent has no rights or legitimate interest in respect of the disputed domain names.

Similarly, in Amway Corp. Inc. v. Business Internet Connection and Rex Mehta (WIPO Case No. D2000-1118; decided November 26, 2000), the panel held that:

While Mr. Mehta contends that he is an IBO [Independent Business Operator] of Amway and, thus, authorized to sell Amway goods, Complainant asserts that, even if such is true, Mr. Mehta is not authorized to use the AMWAY mark in a domain name. Based on this unrebutted assertion, the Panel concludes that Mr. Mehta's status as an Amway IBO does not provide him "rights or legitimate interests" in the domain name.

See also Caterpillar, Inc. v. DES-CATE Sociaded Limitada (NAF 96077; decided December 26, 2000), (rejecting the right of a registrant to use the mark of the complainant simply because it was selling parts of the complainant).

Regardless of the nature of Respondentís business and its dealing with products of GE, it is unauthorized to use the GE Marks in connection with its business or imply that there is an affiliation, association, or endorsement of its business by GE through its use of the Domain Name. Respondentís Domain Name is likely to confuse consumers to believe that they have reached a website of GE, given GEís extensive number of domain names that include a geographic designation, such as <ge-china.com> and <ge-asia.com>.

The Panel stresses that independent resellers under appropriate circumstances have rights to make use of trademarks to properly identify resale goods. There may be circumstances in which such use would be appropriate in a domain name. Here, however, the geographical indicator <japan-ge.com> clearly suggests an affiliation with GE. On the website identified by the Domain Name, Respondent sells products from various manufacturers. The use of the trademark GE in the second level domain is not properly descriptive of Respondent's business, and is not a fair use of Complainantís mark.

 

7. Decision

In light of the foregoing, the Panel decides that:

(1) The Domain Name registered by Respondent and at issue here is confusingly similar to Complainantís trademarks,

(2) The Respondent has no rights or legitimate interests in respect of the Domain Name at issue, and

(3) The Domain Name at issue has been registered and is being used in bad faith by Respondent.

Accordingly, the Panel decides that the Registration of the Domain Name set forth in paragraph 2 of this Decision shall be transferred to Complainant.

 


 

David Everett Wagoner
Presiding Panelist

Frederick M. Abbott
Panelist

M. Scott Donahey
Panelist

Dated: June 14, 2001

 


Footnotes:

1. See Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (9th Cir. 1969). (back to text)

2. McCarthy frames the rule as follows: "A dealer who specializes in selling, servicing or repairing a certain brand of product has the right to so inform the public, so long as the dealer's advertising and use of another's mark does not confuse the public into thinking that it is an authorized agent." J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition ß 25:50 (4th ed. 1996 and updated). (back to text)

3. Id. (back to text)