WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
General Electric Company v. Prabish Thomas/Green Energy LLC
Case No. D2007-1866
1. The Parties
Complainant is General Electric Company, of United States of America, represented by Kilpatrick Stockton, LLP, United States of America.
Respondent is Prabish Thomas/Green Energy LLC, of United Arab Emirates, self represented.
2. The Domain Names and Registrars
The disputed domain names <gesolar.com>, <gesolar.net>, <gesolar.org>, <gesolar.info>, <gesolar.mobi>, <gesolardubai.com>, <gesolarnigeria.com>, <gesolarnigeria.net>, <gesolarpakistan.com>, <gesolarpakistan.net>, <gesolarsystem.com>, <dubaigesolar.com>, and <gogesolar.com> are registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2007. On December 17, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain names <gesolar.com>, <gesolar.net>, and <gesolar.org>. On December 17, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that Respondent Green Energy LLC is listed as the registrant for those three (3) domain names 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 Respondent of the Complaint, and the proceedings commenced December 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 13, 2008. The Response was filed with the Center on January 12, 2008.
On February 1, 2008, the Complainant filed by email a request for permission to submit the accompanying Reply to address allegedly materially misleading and unsupported statements contained in Respondent’s Response and to include ten (10) additional domain names registered by Respondent Prabish Thomas that use and incorporate Complainant’s GE Marks in this proceeding: <gesolar.info>, <gesolar.mobi>, <gesolardubai.com>, <gesolarnigeria.com>, <gesolarnigeria.net>, <gesolarpakistan.com>, <gesolarpakistan.net>, <gesolarsystem.com>, <dubaigesolar.com>, and <gogesolar.com>.
In response to this request, Respondent filed an objection on February 4, 2008 and asked the Panel to decline Complainant’s request for allowing supplementary filings.
The Center appointed Knud Wallberg, Frederick M. Abbott and Sir Ian Barker as panelists in this matter on February 8, 2008. The Panel finds that it was properly constituted. Each member of 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.
Having reviewed the case file and in accordance with Rules, paragraph 10(a), the Panel made the following Procedural Order (“the Order”) on February 20, 2008:
1. In a Reply of February 1, 2008, Complainant requested that the domain names <gesolar.info>, <gesolar.mobi>, <gesolardubai.com>, <gesolarnigeria.com>, <gesolarnigeria.net>, <gesolarpakistan.com>, <gesolarpakistan.net>, <gesolarsystem.com>, <dubaigesolar.com> and <gogesolar.com> be added to this proceeding.
The Panel has considered the Complainant’s request having regard to, inter alia, the considerations set out in General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334. For reasons similar to those given by the panel in that case, the Panel hereby grants Complainant’s request, subject – in the particular circumstances of this case – to payment by the Complainant of any additional fees required by the WIPO Arbitration and Mediation Center (the “Center”). The Complainant is accordingly requested to pay any such additional fees indicated by the Center, in accordance with Annex D to the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.
2. The Panel also therefore orders that the Center obtain registrar verification for the domain names <gesolar.info>, <gesolar.mobi>, <gesolardubai.com>, <gesolarnigeria.com>, <gesolarnigeria.net>, <gesolarpakistan.com>, <gesolarpakistan.net>, <gesolarsystem.com>, <dubaigesolar.com> and <gogesolar.com> from the registrar of those domain names.
3. Following registrar verification for the domain names <gesolar.info>, <gesolar.mobi>, <gesolardubai.com>, <gesolarnigeria.com>, <gesolarnigeria.net>, <gesolarpakistan.com>, <gesolarpakistan.net>, <gesolarsystem.com>, <dubaigesolar.com> and <gogesolar.com>, the Panel further orders that the Center notify the Respondent that the said domain names have been added to the proceeding and allow the Respondent 20 days, in which to provide a Response in relation to these domain names as well as the other parts of the Reply from the Complainant.
4. The Panel’s projected decision date concerning all thirteen domain names is extended accordingly, due within 14 days from receipt of Respondent’s Response, or within 14 days from Respondent’s default, should a Response not be submitted.
In accordance with paragraph 2 of the Order, Complainant paid the requested additional fees whereafter, the Center in accordance with paragraph 2 of the Order transmitted its request for registrar verification with respect to the additional domain names to the registrar, Network Solutions LLC, by email on February 18, 2008. On February 20, 2008, the registrar, Network Solutions LLC, responded by email, confirming that it was the registrar of the additional domain names, that Respondent Prabish Thomas is listed as the registrant and providing the contact details.
On February 22, 2008, in accordance with paragraph 3 of the Order, the Center notified Respondent of the addition of the new domain names to the proceeding and invited Respondent to file a response no later than March 13, 2008.
Respondent filed a Supplementary Response with the Center by email on March 12, 2008.
The Registrant of the disputed domain names is either Prabish Thomas or Green Energy LLC. In the Complaint, Complainant states that on information and belief, Prabish Thomas (registrant of the domain names <gesolar.com> and <gesolar.org>) and Green Energy LLC (registrant of <gesolar.net>) are unified in their control of the three domain names listed in the Complaint, such that the two entities may be considered one and the same Respondent for purposes of this administrative proceeding. In paragraph 7 of the Response, Respondent confirms that Mr. Prabish Thomas is the Managing Director of GREEN ENERGY LLC and is also the Managing Director of GESOLAR FZ LLC, a sister concern of GREEN ENERGY LLC. The management and control of both entities thus vest with him and both Respondents are throughout the Response referred to as “Respondent”. The Panel therefore finds that the two entities shall be considered to be one and the same Respondent for purposes of this administrative proceeding.
4. Factual Background
Complainant is a major multinational company which provides a wide range of goods and services, including power generation technology, electricity, lighting and other energy related services. Complainant operates in more than 100 countries and employs hundreds of thousands of individuals worldwide.
Complainant has used the mark GE in commerce since 1899 and as a result of extensive use and promotion since then it has become a famous mark and Complainant is commonly known to the trade and to consumers worldwide as simply GE.
In addition, Complainant has named and promoted a number of its business units using the GE name and mark in combination with another term or terms. Complainant operates business units under the names GE ENERGY, GE INFRASTRUCTURE, GE MONEY, GE HEALTHCARE, GE INDUSTRIAL, and GE COMMERCIAL FINANCE.
Moreover, since at least as early as 2004, Complainant has used the designation GE SOLAR TECHNOLOGIES to designate a business unit of the GE ENERGY division. Complainant’s GE SOLAR TECHNOLOGIES business unit, as well as the products and services offered by GE ENERGY in connection with its solar initiatives, are sometimes referred to in the industry and the trade as simply GE SOLAR.
Complainant is also the owner of numerous trademark registrations for the mark GE, either alone or in combination with other terms (the “GE Marks”), in over 100 countries throughout the world, including but not limited to the United Arab Emirates, the United States of America, the countries of the European Community, including the United Kingdom of Great Britain and Northern Ireland, as well as Australia and New Zealand.
Complainant has also registered and uses the domain name <ge.com> (registered August 5, 1986) to deliver information concerning Complainant and its products and services. Complainant further owns and operates a wide network of domain names and websites dedicated to Complainant’s various divisions and business units, including by way of example, <gepower.com>, <geenergy.com>, <gewater.com>, <geappliances.com>, <gelighting.com>, <gesupply.com>, <gesecurity.com>, <geplastics.com>, <gemoney.com>, and <geindustrial.com>.
Respondent has established itself as a provider of solar and renewable energy products in the Middle East and Africa and offers products using technology particularly tailored for this region. GREEN ENERGY LLC was established in August 2005 in the United Arab Emirates. Respondent started a new business entity for its solar energy products under the name GESOLAR FZ LLC in August 2007. The name GESOLAR was derived from the first two letters of its parent company GREEN ENERGY LLC along with the word “solar”, which signifies that it is engaged in the area of solar energy. Respondent’s company GESOLAR has business interests in Africa and New Zealand and has incorporated companies in these countries under the names GESOLAR ENERGY NIGERIA LIMITED and GREEN ENERGY NEW ZEALAND LIMITED.
The turnover of Respondent’s business using the GESOLAR trademark was USD 1.3 million for the period June 2006 – June 2007 and Respondent has expended an amount of approximately USD 60,000 towards advertisements and promotion of its GESOLAR mark for the same period.
5. Parties’ Contentions
Complainant makes the following contentions:
Identical or Confusingly Similar to Mark in which Complainant has Rights
Respondent’s domain names are confusingly similar to Complainant’s well-known GE Marks, as they fully incorporate the mark GE exactly and in its entirety, with the addition of the word “solar”.
In determining similarity between the domain names and Complainant’s GE Marks, the addition of the word “solar” fails to alleviate confusion, particularly in view of the fame of the GE mark.
Furthermore, given the renown of the GE Marks, as well as Complainant’s extensive use of the GE designation in combination with other terms, including the term “solar”, the relevant consumers, on seeing the domain names, will reasonably believe that they are related to Complainant. Consumers who come across the domain names and/or search the Internet for Complainant or Complainant’s solar products or services by using Complainant’s names and marks may be directed to the domain names and associated websites, thereby creating a likelihood of confusion. For these reasons, Respondent’s domain names are identical or confusingly similar to Complainant’s GE Marks.
The legal issues and facts involved with regard to the additional domain names are identical in nature to those previously addressed since each of the additional domain names contains the designation GESOLAR.
The only variations are the addition of generic words (“system” or “go”) and geographic indicators (“Dubai”, “Nigeria”, or “Pakistan”). These insignificant variations fail to reduce the confusing similarity between the additional domain names and Complainant’s GE Marks. The addition of geographic indicators (“Dubai”, “Nigeria”, or “Pakistan”) to Complainant’s GE Marks in the additional domain names are of no import, as they merely suggest to Internet users that the additional domain names are related to Complainant or Complainant’s worldwide presence and foreign distribution capabilities. “The addition of the name of a place to a service mark … is a common method for specifying the location of business services provided under the service mark. The addition of a place name generally does not alter the underlying mark to which it is added.” America Online Inc. v Dolphin@Heart, WIPO Case No. D2000-0713.
The additions of generic indications (“system” or “go”) are similarly of no consequence, as they merely suggest to Internet users that the domain names are related to Complainant or its goods and services.
Respondent’s Rights or Legitimate Interests
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 incorporating Complainant’s GE Marks. Respondent is not an authorized distributor of Complainant’s products, and there has never been any business relationship whatsoever between Complainant and Respondent. Complainant does not sponsor or endorse Respondent’s activities in any respect and has not provided its consent to Respondent’s use and exploitation of the GE Marks in the domain names and on their affiliated websites.
Respondent’s lack of any legitimate interest is further established by the fact that Respondent appears to have registered and is using the domain names solely for commercial gain. Respondent has sought to profit by using the domain names to promote itself and its alleged products and services by piggybacking on the goodwill associated with Complainant’s exceptionally famous GE Marks.
Respondent’s apparent use of GE as a short form for “green energy” is completely pretextual in nature. It was not until after Complainant commenced use of and began to promote its GE SOLAR products and services that Respondent began using the designation GESOLAR. Prior to that time, Respondent used the company name “Green Energy” to promote its products and services, and a simple Internet search reveals that Respondent is not commonly known by the name “GE”. The only evidence of use of the designation GE for “Green Energy” are self-serving statements by Respondent posted on its own websites. Such statements in and of themselves do not create instant common knowledge that Respondent is known by the name “GE” or that Respondent has the right to infringe Complainant’s world famous GE mark.
Moreover, Respondent has attempted to strengthen the false association between Respondent and Complainant by highlighting the letters “ge” in the GESOLAR logo on its websites. Respondent seeks to substantiate itself as a large, legitimate company with the backing of the world-famous GE name, in order to market and sell its competing solar products and services. Such use of domain names based on Complainant’s GE Marks to promote goods and services unrelated to Complainant and to trade upon the goodwill associated with Complainant and its GE Marks is not a legitimate interest or use.
The products that Respondent is purportedly offering for sale on its websites at, such as solar and LED products, are, in fact, products that Complainant has offered under its GE Marks for many years. Respondent’s use of the domain names to promote the sales of such competing products thus constitutes trademark infringement and unfair competition—clearly not a legitimate interest or use.
Registered and Used in Bad Faith
Respondent has registered and is using the domain names in bad faith for commercial gain and to benefit from the goodwill and fame associated with Complainant’s GE Marks, and from the likelihood that Internet users will mistakenly believe the domain names and associated websites are connected with Complainant.
Respondent’s bad faith registration of the domain names is established by the fact that the domain names completely incorporate Complainant’s GE Marks and were acquired long after the GE Marks became well-known.
Respondent’s bad faith use of the domain names is further evidenced by the fact that Respondent has sought to profit from the domain names by using them to create an affiliation with Complainant. Respondent’s use of Complainant’s GE Marks bolsters the reputation of Green Energy LLC by creating an affiliation with the famous GE brand. Respondent enhances this affiliation by highlighting the letters “ge” in the designation GESOLAR on its websites. Yet, notably, Respondent did not begin to use the designation GESOLAR until late 2006, after Complainant adopted and began to use the name and mark GE SOLAR TECHNOLOGIES, commonly known as GE SOLAR. Prior to that time, on information and belief, Respondent used the company name “Green Energy” to promote its products and services.
Moreover, Respondent’s bad faith is demonstrated by its active use of most of the domain names in dispute to promote products that are directly competitive with products sold under Complainant’s GE Marks, such as solar and LED products. This offering of products competitive with Complainant’s products manifests Respondent’s clear intention to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s products. The use and registration of a domain name by a direct competitor in an effort to sell competitive products is evidence of bad faith.
Respondent’s bad faith is further established by Respondent’s repeated failure to respond to Complainant’s efforts to halt Respondent’s use of the domain names. Respondent has thus failed to provide any response to Complainant’s attempts to resolve this matter. Such non-responsive behavior is evidence of bad faith on the part of Respondent.
Respondent’s registration of multiple domain names incorporating Complainant’s marks further demonstrates Respondent’s pattern of registration in bad faith.
Identical or Confusingly Similar to Mark in which Complainant has Rights
Respondent claims that Complainant lacks rights in the GESOLAR mark for the reason that Complainant has provided no evidence of use of the trademark GESOLAR being used on its products in the stream of commerce.
It is well established under paragraph 4(a)(i) that Complainant must have trademark rights which antedate the date of registration of a domain name. This is particularly important in the present context as there is no evidence that Complainant has registered GESOLAR on the principal register of the United States Patent and Trademark Office. Complainant is put to strict proof of having acquired any rights in the term GESOLAR. Complainant has merely stated that the term was used to describe Complainant’s solar energy unit from sometime in the year 2004 without any degree of certainty as to when it acquired rights. Proof regarding the time of acquiring rights is determinative of “rights and interests” in UDRP cases. Actual proof of use of the trademark such as Complainant’s sales turnover using the mark, or invoices showing use of the mark or filing for trademark registration which are essential to prove its trademark rights have not been filed by Complainant. It is clear that Complainant has not acquired any trademark rights in the term GESOLAR and in the disputed domain names.
Respondent further states that Complainant, in order to overcome this deficiency in its case has based its Complaint on the GE Mark. The GE Mark is an inherently weak mark for the reason that the conditions for registration clearly state that no claim can be made by Complainant for the letters “g” and “e”. There are several business entities and companies which have successfully adopted the exact same letters “ge” to signify and symbolize their business entities. Such instances include Global Executive, and many others have been using the trademark comprising of the letters GE in areas of business which compete with Complainant. The letters “G” and “E” are not distinctive of any one entity and no monopoly can be claimed to the letters. Similarly, there are several domain names which use the letters GE which are registered and owned by third parties other than Complainant.
Respondent denies that it has ever tried to create an affiliation with Complainant. If Respondent had any intention of doing so it would have done so when it initiated its business and not after having established itself as GREEN ENERGY LLC. It is the success of its own company GREEN ENERGY LLC that has motivated Respondent to adopt the trademark GESOLAR. Respondent has used the mark in commerce and the consuming public associate GESOLAR with Respondent.
Respondent has not held itself out as General Electric or used the logo of Complainant and has always maintained its individual unique identity and its own logo. Further, Complainant has not filed any evidence to substantiate its allegation of any confusion. Considering that the territorial markets for Complainant’s products and Respondent’s products are different it is unlikely that such confusion could arise.
It is therefore clear that Complainant does not have trademark rights in the term “gesolar” and therefore its allegation that the domain names are identical or confusingly similar to its mark is not tenable. The Complaint fails on this ground alone. Further, Complainant has not filed any evidence to show that the disputed domain names are confusingly similar to a mark in which Complainant has rights. Complainant has not been able to meet the requirements under paragraph 4(a)(i).
Whether Respondent has Rights or Legitimate Interests in Respect of the Domain Names
Respondent strongly denies the statements made by Complainant that it lacks rights or legitimate interests in the domain names. Respondent uses its mark and the disputed domain names for a bona fide offering of goods and services. Respondent’s domain names reflect its trademark and the name of its corporate entities. Respondent has demonstrated that it has common law trademark rights in its mark by virtue of its use in commerce since 2006. Respondent has filed applications for trademark registration in some jurisdictions where it is actively using its mark GESOLAR.
The domain names of Respondent are a variant of its own name, which is derived from the first two initials of its parent company and the generic term “solar” to indicate its area of business. It is common practice for people and organizations to register domain names which are based on initials and a name, acronyms or other variants of their name.
Under Paragraph 4(c)(i) of the Policy Respondent can demonstrate its rights or legitimate interests in the domain name, if it shows that, before any notice of the dispute, Respondent has used or prepared to use the name in connection with a bona fide offering of goods and services.
The Policy paragraph 4(c)(ii) states that, if Respondent is commonly known by the domain names as a business or other organization, it shall have legitimate rights in the domain names. Respondent has demonstrated that as a business entity, it is commonly known as GESOLAR. The provisions of paragraph 4(c) have been specifically incorporated in the Policy to protect rights of bona fide users who are either prior users of the domain name or are bona fide concurrent users. Complainant has failed to establish that Respondent has no rights in the disputed domain names.
Respondent states that it is also making legitimate noncommercial use of the domain names. The websites put up by Respondent are being used to disseminate information to its customers and the general public regarding environmental issues and the benefits of using green energy. Such use constitutes noncommercial use or fair use.
Respondent values its trademark and the websites linked to its domain names as it has invested valuable resources in developing these. It is respectfully submitted that Respondent is not deterred by Complainant’s threat to oppose its trademark application. Complainant is unlikely to succeed in the trademark opposition due to Complainant’s lack of use of the mark in commerce. Respondent shall not hesitate to defend its trademark rights as it has valid rights in the mark.
Whether the Domain Names Have Been Registered and Are Being Used in Bad Faith
Respondent denies that it has registered or used the disputed domain names in bad faith or that it has tried to create an affiliation with Complainant or its mark. Respondent’s domain name <gesolar.com> was registered in the year 2002. Given the fact that Complainant has failed to state with particularity when it commenced using the mark in commerce, it is impossible to prove bad faith registration based on a trademark that was not in existence at the time the disputed domain name was registered. Complainant has not provided any evidence that its consumers associate GESOLAR exclusively with Complainant or that it has a secondary meaning. Searches for the term would not have shown that Complainant owns GESOLAR.
The domain name <gesolar.com> became available for anyone to purchase on public auction. Respondent acquired the domain name in an open auction from SnapNames.com. This is indicative that any claim to the disputed domain name was abandoned by Complainant due to its own inaction and failure to make a bid at the appropriate time and obtain the domain name. There is no evidence that Respondent registered or acquired the disputed domain name to capitalize on Complainant’s trademark so there can be no finding of bad faith.
Complainant has not demonstrated that Respondent, at the time of registration of the disputed domain name knew or should have known of the existence of Complainant’s mark GESOLAR. There is no evidence suggesting that the disputed domain name <gesolar.com> was chosen by Respondent with the intent to profit or otherwise abuse or infringe Complainant’s trademark rights. Further, the existence of multiple users of “GE” incorporating marks weakens Complainant’s stand.
Respondent may be in the similar area of business as Complainant without intending to take advantage of any rights Complainant has. Respondent has been successful as GREEN ENERGY LLC and it is misapprehension that Respondent uses the fame of Complainant’s mark. Complainant’s customers looking for the Complainant’s services would go to the main “www.ge.com” website or the GE ENERGY site, and customers looking for Respondent GREEN ENERGY LLC or GESOLAR will be directed to Respondent’s website.
Respondent denies Complainant’s allegation that its mark has been appropriated. There are several marks that incorporate the letters “ge”. The letters “ge” are used by Respondent as a variant of its own name Green Energy LLC. It is respectfully submitted that the Solar business is the mainstay of Respondent and the name and trademark was adopted in good faith.
There is no evidence in the record that the Complainant obtained a registered trademark in any country. Further, there is nothing in the record to suggest that Complainant has common law rights, even assuming, though not admitting that its common law rights could have come into existence in 2004 at the earliest, when Complainant claims it launched its solar energy business, this is more than two years after the domain name <gesolar.com> was registered in 2002. Further, there is no evidence that Respondent had advance knowledge of Complainant’s mark.
Respondent submits that it did not respond to the earlier correspondence and letters sent by Complainant because Respondent did not think it necessary to reply to the groundless threats sent by Complainant. Further Complainant has apparently not taken any action against other companies, some of them in the United Kingdom of Great Britain and Northern Ireland, whose names use the letters “ge”.
Respondent denies the allegations of Complainant that it has a pattern of registration of domain names in bad faith. Respondent has no history of registering domain names that infringe trademark rights. Neither has Respondent ever been a party to a domain name dispute. The allegation by Complainant that Respondent has exhibited a pattern of registering domain names and is using them in bad faith is unfounded. The registration of domain names for a legitimate business cannot be termed a pattern of cybersquatting or use in bad faith. Respondent’s registration of domain names relevant to its business cannot be termed a pattern of cybersquatting.
Regarding Additional Domain Names Added to the Dispute
Respondent respectfully requests the Panel to reject the baseless allegations of bad faith registration and bad faith use of the additional disputed domain names made by Complainant in the Supplemental Filing dated February 1, 2008.
Bad faith is found in domain name disputes only in instances where Respondent intentionally deceives consumers to believe that Respondent’s website is in some way connected or associated with Complainant. Respondent’s website does not falsely suggest any connection with Complainant; hence the allegations of bad faith registration and use of the domain names made by the Complainant in the Supplemental filing and in the Complaint is groundless and unsubstantiated. It is submitted that Respondent’s motives are important in determining bad faith in registering and using domain names. Respondent has stated in its Response that it has registered domain names as part of its business expansion in various geographic areas where it has business interests. The geographic locations in Respondent’s domain names reflect the specific jurisdictions where Respondent has business interests; such jurisdictions include “Dubai” and “Nigeria”. Respondent has filed documents as evidence of its business in these areas, and it is therefore denied that the domain names with geographic identifiers are registered and used in bad faith by Respondent as alleged by Complainant. For all the reasons stated above the Panel should find the allegations of bad faith made by Complainant are groundless.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, Complainant must prove that each of the three following elements is satisfied:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.
A. Identical or Confusingly Similar
The Panel is satisfied on the evidence that Complainant has registered rights in the GE Marks throughout the world. Complainant has further shown some use of the composite name GE SOLAR but has not furnished evidence that this use has amounted to unregistered trademark rights.
In determining similarity between the domain names and Complainant’s GE Marks, the addition of the word “solar” and of the other generic words (“system” or “go”) or geographic indicators (“Dubai”, “Nigeria”, “Pakistan”) fails to alleviate confusion, particularly in view of the fame of the GE Marks. Complainant is one of the world’s leading suppliers of power generation equipment, including solar power-related equipment, operating under the GE Marks. There is a strong likelihood that Internet users will confuse the disputed domain name with the goods and services of Complainant in its customary and well-known field of business activity.
Also, the inclusion of the various gTLD denominations shall be disregarded for the purpose of these proceedings.
The Panel finds that the disputed domain names are confusingly similar to Complainant’s registered trademarks and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Respondent’s Rights or Legitimate Interests
Complainant has not licensed or other wise authorized or permitted Respondent to use its GE Marks as a trademark, company name or domain name.
On the other hand Respondent claims to have independent rights to the GESOLAR name by virtue of its United Arab Emirates and New Zealand company names GREEN ENERGY LLC and the name of a new business entity established in the United Arab Emirates called GESOLAR FZ-LLC as well as the Nigerian company name GESOLAR ENERGY NIGERIA LIMITED.
The company name, GREEN ENERGY, does not correspond to any of the disputed domain names, since it differs materially from them, in particular in that the domain names include the letters “ge” which are liable to be taken as the Complainant’s trademark. Use by Respondent of this name and any rights which it may have in it do not confer rights or legitimate interests in Respondent as regards the domain names in dispute.
The Panel is satisfied that such use as Respondent has made of the name GESOLAR has been for the purpose of unfairly exploiting the goodwill associated with Complainant’s GE Marks to promote Respondent and its products. Complainant had an extensive reputation under the GE Marks long before Respondent registered or acquired the disputed domain names and started to use the names “GREEN ENERGY” and “GESOLAR”.
The Panel notes that Complainant has filed an opposition against Respondent’s application to register the GESOLAR mark in the United Arab Emirates and has objected to any and all uses of the GESOLAR name before Respondent registered the United Arab Emirates company GESOLAR FZ-LLC in August 2007 and GESOLAR ENERGY NIGERIA LIMITED in September 2007.
Under these circumstances such use and registration of the name “GESOLAR” is unfair and deceptive, and the use is not a “bona fide offering” giving rise to rights or legitimate interests within the meaning of the second requirement of the Policy: See e.g., Mentor ADI Recruitment Ltd. (trading as Mentor Group) v. Teaching Driving Ltd, WIPO Case No. D2003-0654 and Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946.
In all the circumstances, the Panel concludes that Respondent has no recognizable rights or legitimate interests in respect of disputed domain names.
C Registered and Used in Bad Faith
In relation to Respondent’s registration and use of the contested domain names in bad faith as required under the Policy, the decisive moment in time is the time when the Respondent acquired the domain names either by transfer or by registration. In this respect the Panel notes the following:
- The disputed domain name <gesolar.com> was first registered on July 29, 2002 but was acquired by the Respondent on September 5, 2005.
- The disputed domain name <gesolar.net> was registered on August 17, 2005.
- The disputed domain names <gesolar.org> and <gesolar.info> were registered on November 15, 2006.
- The disputed domain name <gesolar.mobi> was registered on May 23, 2007.
- The disputed domain names <gesolarnigeria.com>, <gesolarpakistan.com> and <gesolarpakistan.net> were registered on July 4, 2007.
- The disputed domain names <gesolardubai.com>, <gesolarsystem.com> and <gogesolar.com> were registered on November 12, 2007.
- The disputed domain name <dubaigesolar.com> was registered on November 27, 2007.
- The disputed domain name <gesolarnigeria.net> was registered on January 24, 2008.
As mentioned above Complainant had an extensive reputation under the GE Marks long before Respondent registered or acquired the disputed domain names and started to use the names “GREEN ENERGY” and “GESOLAR”. Some of the domain names were registered at a time when Respondent had registered the United Arab Emirates company GESOLAR FZ-LLC and GESOLAR ENERGY NIGERIA LIMITED, but since the Panel has found that these registrations are not bona fide and therefore cannot be used as a defense by Respondent for the purpose of these proceedings, the Panel finds that also these domain names have been registered in bad faith.
All the disputed domain names, except <gesolar.org> <gesolar.mobi> are active and appear to have the same content. <gesolar.org> and <gesolar.mobi> both resolve to an “under construction” site.
Further, the Panel is (as indicated above) satisfied by the evidence that Respondent has deliberately sought to exploit the goodwill associated with Complainant’s GE Marks to promote Respondent and its products by making its websites at the disputed domain names appear to be affiliated with, sponsored by, or operated by Complainant.
In this context, the Panel considers that by using the disputed domain names, Respondent has intentionally attempted to attract Internet users to its websites at the disputed domain names by creating a likelihood of confusion with Complainant’s GE Marks, and also to reinforce the confusion of Internet users accessing Respondent’s website. Respondent has thereby sought commercial gain, in particular by promoting the sale of its solar energy products as if they are the well-known products of Complainant.
In accordance with paragraph 4(b)(iv) of the Policy, this constitutes evidence that these domain names were registered and are being used in bad faith.
The Panel concludes that the domain names <gesolar.com>, <gesolar.net>, <gesolar.org>, <gesolar.info>, <gesolar.mobi>, <gesolardubai.com>, <gesolarnigeria.com>, <gesolarnigeria.net>, <gesolarpakistan.com>, <gesolarpakistan.net>, <gesolarsystem.com>, <dubaigesolar.com>, and <gogesolar.com> have been registered and are being used in bad faith.
D. Reverse Domain Name Hijacking
Respondent has asked that a finding be made against Complainant of Reverse Domain Name Hijacking.
Paragraph 15(e) of the Rules provides inter alia:
If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
It follows from the findings above that the Panel finds that the Complaint is justified and well founded, and consequently there is no basis for finding Reverse Domain Name Hijacking on the part of Complainant.
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 names, <gesolar.com>, <gesolar.net>, <gesolar.org>, <gesolar.info>, <gesolar.mobi>, <gesolardubai.com>, <gesolarnigeria.com>, <gesolarnigeria.net>, <gesolarpakistan.com>, <gesolarpakistan.net>, <gesolarsystem.com>, <dubaigesolar.com>, and <gogesolar.com> be transferred to Complainant.
Frederick M. Abbott
Sir Ian Barker
Dated: April 4, 2008