WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

General Electric Company and GE Money Bank v. Crazy Moniker

Case No. D2007-1195

 

1. The Parties

The Complainants are General Electric Company of Fairfield, Connecticut, United States of America; and GE Money Bank of Salt Lake City, Utah, United States of America; represented by Kilpatrick Stockton LLP, of New York, New York, United States of America.

The Respondent is Crazy Moniker of New York, New York, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <myearthreward.com> (the “Disputed Domain Name”) is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2007. On August 15, 2007, the Center transmitted by e-mail to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On August 15, 2007, Go Daddy Software transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 30, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2007. The Respondent did not submit a formal response. Accordingly, the Center notified the Respondent’s default on September 21, 2007.

The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on October 5, 2007, but he recused himself on November 2, 2007. Thereafter, the Center appointed Douglas M. Isenberg as the sole panelist in this matter on November 2, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

Complainants state that GE Money Bank is a wholly owned subsidiary of General Electric Company. These two entities are referred to herein individually and collectively as “Complainant”.

Complainant states that it is “one of the world’s leading multi-national technology, industrial, media, and financial services companies, offering a wide array of products and services, including, by way of example, aircraft jet engines, electricity, lighting, entertainment services, financial services, medical imaging equipment, motors, plastics, silicones, railway locomotives, security services, and industrial automation”.

Complainant further states that it “operates in more than 100 countries and employs hundreds of thousands of individuals worldwide”.

Complainant further states that it “is widely recognized as one of the most watched and admired companies in the world”.

Complainant states that it has used (as discussed below) the trademark EARTH REWARDS since at least July 25, 2007.

Complainant is the applicant for a federal trademark registration in the United States, Serial No. 78-848,981, filed as an intent-to-use application on March 29, 2006, for the mark EARTH REWARDS for use in connection with “credit card services”.

Complainant states that its “authorized representative” registered the domain name <myearthrewards.com> on June 27, 2007, which is used in connection with a website offering information to consumers relating to Complainant’s EARTH REWARDS credit card program and educational information concerning the environment.

Respondent registered the domain name <myearthreward.com> on July 25, 2007, which is used in connection with a pornographic website.

 

5. Parties’ Contentions

A. Complainant

Complainant states that it formally launched a new credit card program – the first U.S. credit card that allows users to reduce their carbon emissions by automatically contributing up to one percent of their card purchases to greenhouse gas emissions offsets – under the name and mark EARTH REWARDS on July 25, 2007. Complaint states that the EARTH REWARDS credit card was unveiled on July 25, 2007, at 7 World Trade Center in New York City (an environmentally friendly “green” building), surrounded by substantial press coverage and media attention.

Complainant states that it issued “advance” press releases about the EARTH REWARDS credit card and that media outlets began reporting on the EARTH REWARDS credit card on July 24, 2007. In support thereof, Complainant has provided copies of news articles from, among other sources, The New York Times, CNNMoney.com, Financial Times and MarketWatch. Some of the news sources reporting on the EARTH REWARDS credit card referred to Complainant’s website using the domain name <myearthrewards.com>.

Complainant contends, inter alia, the following:

- The Disputed Domain Name is identical or confusingly similar to the EARTH REWARDS trademark because the absence of the letter “s” and the addition of the word “my” are “insignificant”.

- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “there is no relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name so nearly identical to Complainant’s EARTH REWARDS mark”; Respondent is using the Disputed Domain Name in connection with a “website [that] contains sexually explicit textual and graphic material and features pornographic videos available for download[, which] further contains links to other commercial websites featuring pornographic content, as well as advertisements for other pornographic movie and video services, all of which are unrelated to Complainant and its goods and services”; and Respondent “registered the Domain Name on the same day as Complainant’s high-profile public launch of the EARTH REWARDS credit card program in New York City, and a day after it was widely announced that Complainant was launching the EARTH REWARDS credit card program and its website at ‘myearthrewards.com’”.

- The Disputed Domain Name has been registered and is being used in bad faith because “the Domain Name is nearly identical to Complainant’s EARTH REWARDS mark; was acquired shortly after the EARTH REWARDS product was launched; and re-directs to a website featuring pornographic content”; “linking to a pornographic site establishes evidence of bad faith”; and “registration of the Domain Name immediately after Complainant’s launch of the EARTH REWARDS credit card further confirms that there can be no question as to Respondent’s bad faith registration of the Domain Name”.

B. Respondent

Respondent did not file a formal response. However, Respondent submitted e-mails to the Center stating, in relevant part, as follows:

- On August 30, 2007: “Myearthreward.com is any other name like Myplanetreward.com… This is purely a case of reverse domain name hijacking.”

- On September 1, 2007: “I registered that name because it was available for our climate related website needs. Our software used the forwarding address in error. There is no intent to sell nor was any action taken to profit from this name.”

- On November 2, 2007: “[T]he domain though co-incidental was NOT registered in bad faith. We own hundreds of climate related names and this name was registered [sic] for such use. [E]xamples of our climate related names included… carboncreditcar.com[,] carboncreditcars.com [and] carboneliminators.com[,] and myearthreward.com was one of our names to be developed [sic] for eco purpose website. Crazy Moniker registers names in bulk and assigns them forwarding address to which the forwarding address to domain myearthreward.com was in error. We made no attempt to sell, approach anyone for it’s [sic] sale or profit from the registration of this name. This is simply a matter of a big corporation using it’s resources for reverse hijacking purposes.”

The Panel is not technically obligated to consider these e-mails because they do comply with the Rules; among other things, the e-mails do not contain a signed certification statement as required by paragraph 5(b)(viii) of the Rules. See, e.g., Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709 (panel declined to consider response that did not comply with paragraph 5(b)(viii) of the Rules); and Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (same). However, as described below, the Panel notes the unsupported statements made therein.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, Paragraph 4(a).

A. Identical or Confusingly Similar

The pending federal trademark application cited by Complainant for EARTH REWARDS is not determinative in this proceeding because an application at the United States Patent and Trademark Office does not in and of itself confer any rights unless and until the application matures into a registration. Further, “[t]his application was filed under Section 1(b) of the U.S. Lanham Act, which applies to [a] person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce”. 15 U.S.C. 1051(b). In other words, an applicant for such a mark not only lacks a federal registration but also represents (until it has filed a statement of use or an amendment to allege use with the United States Patent and Trademark Office) that it has not used the mark that is the subject of the application. [T]he application[] merely establish[es] that, on the date that [it was] filed,… applicant intended to use the mark as a trademark. The[] [application] do[es] not, standing alone, evidence use of a mark”. Donald J. Trump v. eStore of New York, WIPO Case No. D2007-0119 (some internal punctuation and citations omitted).

However, based upon Complainant’s actual uses of the EARTH REWARDS mark, it appears as if Complainant established common-law rights in this mark on or about July 25, 2007. See, e.g., Uitgeverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575 (“A fundamental principle of trademark law is that rights in a trademark can be acquired through use, and such rights exist even though the trademark may not be registered.”).

As to whether the Disputed Domain Name is identical or confusingly similar to the EARTH REWARDS mark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “myearthreward”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose.

The Disputed Domain Name differs from the EARTH REWARDS mark only by the absence of the letter “s” and the addition of the word “my” in the Disputed Domain Name. The Panel agrees with the cases cited by Complainant that these differences are insignificant. See, e.g., Universal City Studios, Inc. v. HarperStephens, WIPO Case No. D2000-0716 (the absence of a letter “s” from a domain name “do[es] not change the overall impression engendered”); and Sony Kabushiki Kaisha v. Sin, WIPO Case No. D2000-1007 (transfer of <mysony.com>).

Therefore, the Panel is convinced that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant alleges that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “there is no relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name so nearly identical to Complainant’s EARTH REWARDS mark”; Respondent is using the Disputed Domain Name in connection with a “website [that] contains sexually explicit textual and graphic material and features pornographic videos available for download[, which] further contains links to other commercial websites featuring pornographic content, as well as advertisements for other pornographic movie and video services, all of which are unrelated to Complainant and its goods and services”; and Respondent “registered the Domain Name on the same day as Complainant’s high-profile public launch of the EARTH REWARDS credit card program in New York City, and a day after it was widely announced that Complainant was launching the EARTH REWARDS credit card program and its website at ‘myearthrewards.com’”.

Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1, (as of November 5, 2007).

Respondent’s failure to file a response that satisfies the Rules means that Complainant’s allegations on the issue of rights or legitimate interests are technically not rebutted and the Panel could therefore proceed to a decision on this element of the Policy. Nevertheless, even if the Panel were to consider the e-mails sent by Respondent to the Center, the Panel’s decision would be unchanged given that the e-mails do not address this issue.

Accordingly, the Panel is satisfied that the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In this case, Complainant does not allege with specificity that bad faith exists pursuant to any particular factor set forth paragraph 4(b) of the Policy. However, it appears as if Complainant alleges that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy. In support thereof, Complainant cites, among other decisions under the Policy, Ty, Inc. v. O.Z. Names, WIPO Case No. D2000-0370, for the proposition that “the diversion of the Domain Name to a pornographic site” where “the Domain Name itself has no pornographic or erotic connotations” is evidence of bad faith.

As further evidence of bad faith, Complainant notes the timing of Respondent’s registration of the Disputed Domain Name, that is, that it was registered on the same day that Complainant announced its EARTH REWARDS credit card program. In support thereof, Complainant cites, among other cases, PepsiCo, Inc. v. Charlie Chang, WIPO Case No. D2007-0491 (“It is abundantly clear that the sole reason for the registration of the domain name shortly after the announcement of the product launch was to take undue advantage of the fame and notoriety of the Complainant’s trademark and the publicity surrounding the Complainant’s new product.”).

The Panel finds unbelievable Respondent’s statements that it did not register the Disputed Domain Name in bad faith, given that the Disputed Domain Name was registered on the same date as Complainant’s announcement regarding the trademark at issue and that -- despite Respondent’s statement on September 1, 2007, that the Disputed Domain Name was directed to a pornographic website “in error” -- the Disputed Domain Name is still being directed to a pornographic website at “www.alexmovies.com” even as of the date of this decision, November 5, 2007.

In light of the above, the Panel is convinced that Complainant has proven the third element of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <myearthreward.com> be transferred to Complainant GE Money Bank.1


Douglas M. Isenberg
Sole Panelist

Dated: November 5, 2007


1 Although the Complaint does not specifically request transfer to one or other of the two Complainants, the Panel believes the Disputed Domain Name should be transferred to Complainant GE Money Bank (as opposed to Complainant General Electric Company) because, based on U.S. Serial No. 78-848,981 cited by Complainant, it appears as if GE Money Bank rather than General Electric Company is claiming rights in and to the EARTH REWARDS trademark.