The Complainant is General Electric Company of Fairfield, Connecticut, United States of America, represented by Cantor Colburn LLP, United States of America.
The Respondent is Estephens Productions of Stone Mountain, Georgia, United States of America.
The disputed Domain Name <geentertainment.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2009. On October 26, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 26, 2009, the Registrar transmitted by email 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” or “UDRP”), 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 October 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 19, 2009.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on December 2, 2009. 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.
The Complainant is a New York business corporation with headquarters in Fairfield, Connecticut, United States of America. The company's stock is publicly traded on the New York Stock Exchange. Known as the “General Electric Company” since 1892, the Complainant is a leading multinational technology, entertainment, and financial services company. Through its NBC Universal subsidiary, the Complainant produces films and television programming exhibited or broadcast worldwide and in some cases distributed online as well. Collectively, the GE group earned revenues of more than USD18 billion in 2008, with some 320,000 employees serving customers in more than 100 countries. In 2009, Fortune magazine listed the Complainant as the twelfth largest corporation in the world.
The Complainant holds numerous trademark registrations for marks consisting of the letters “GE”, either in block lettering or in stylized lettering, including United States Trademark Registration Numbers 35089, 1272822, 2804187, 2612853, and 2615488. A GE mark has been used since 1899, and the oldest of the currently registered marks was first registered in 1900. The record in this proceeding includes data on extensive and long-term sales and advertising under the GE mark, as well as brand recognition studies that indicate that GE is one of the best recognized marks in the United States and internationally. A 2009 Business Week/Interbrand report, for example, lists GE as the fourth most valuable brand in the world, and the 2009 Financial Times/Millward Brown survey ranks GE eighth among the world's “Top 100 Brands”.
In addition to the marks that display only the letters GE, the Complainant owns trademark registrations for marks comprised of the letters “GE” followed by relevant descriptive terms, such as GE CAPITAL, GE ACCESS, GE SELECTIONS, GE MONEY, GE FOUNDATION, and GE HYDRO. The Complainant operates a website at “www.ge.com” and several other websites associated with domain names composed of “GE” plus a descriptive word, such as <geenergy.com>, <geappliances.com>, <gemoney.com>, and <geindustrial.com>.
The Respondent is a limited liability company registered in the State of Georgia, United States of America. The Respondent operates a website at “www.estephensproductions.com” promoting its “E.S.P. Studios” in Atlanta, Georgia, a facility that the Respondent rents to customers, such as local musicians and producers, to make audio or video recordings. At the bottom of every page of the website is a logo and link for “G.E. Entertainment” and the tag line, “Proud to be the home studio of G.E. Entertainment, LLC.”
The same logo appears on the website associated with the Domain Name, which the Respondent registered on April 24, 2006. The website is headed “G.E. Entertainment” and “Global Executives Entertainment”. The Complainant furnished a printout from the business entities database operated by the Georgia Secretary of State showing that “G.E. Entertainment, LLC” has been registered as a legal entity since July 2006. According to the “About Us” page on the G.E. Entertainment website, G.E. Entertainment is “an independent record label and production company based in Atlanta, Georgia”, founded by Eric Stephens in 2006. “E.S.P. Studios” is named as the “home” of G.E. Entertainment, and the E.S.P. Studios logo and link are displayed at the bottom of each page of the G.E. Entertainment website associated with the Domain Name. It appears that Mr. Stephens is the founding principal of both companies.
The G.E. Entertainment website promotes several “rap” vocalists, whose music the company records. Music CDs can be purchased through the website, which also links to Apple's iTunes online music store, where customers can purchase the same recordings as downloadable MP3 files. G.E. Entertainment also arranges and promotes live appearances by these artists.
The Complainant discovered the Respondent's websites and sent a cease-and-desist letter. It appears from the Complaint that the Complainant's representative contended that the Domain Name infringed on the Complainant's trademark rights and that a banner appearing on the G.E. Entertainment website, “We bring music to life and life to music”, compounded the likelihood of confusion by mimicking an advertising slogan used for many years by the Complainant, “We bring good things to life”. The Respondent declined to transfer or cease using the Domain Name, although the banner slogan to which the Complainant objected no longer appears on the G.E. Entertainment website.
The Complainant argues that the Domain Name is confusingly similar to its GE mark and that the Respondent has no rights or legitimate interests in the name.
The Complainant asserts that the Respondent selected the Domain Name in bad faith and “has embarked on a campaign of exploiting the GE name and mark” for commercial gain. The Complainant cites the banner slogan that formerly appeared on the Respondent's website as evidence that the Respondent sought to mislead Internet users as to source or affiliation, as well as the Respondent's use of a company name that “highlighted” the letters “GE”.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the Domain Names, the Complainant must demonstrate each of the following:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
The Complainant holds registered GE trademarks, both in the form of standard-character marks and as figurative marks in which the letters “GE” are the prominent feature.
The Domain Name includes the GE mark in its entirety and adds the dictionary word “entertainment”. This generic addition does not avoid confusing similarity with the mark, particularly since the Complainant has subsidiaries in the entertainment business.
The Panel concludes that the Domain Name is confusingly similar to the Complainant's GE mark for purposes of the first element of the Complaint, which requires only a simple comparison of the Domain Name and the mark.
The Complainant asserts, without contradiction, that the Complainant has not authorized the Respondent's use of any domain name that is confusingly similar to the Complainant's GE mark.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondent could nevertheless demonstrate rights or legitimate interests in the Domain Name, including the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent did not submit a Response in this proceeding. Nevertheless, it is evident from a perusal of the Respondent's websites and the Respondent's company registration details submitted by the Complainant that the Domain Name corresponds to the Respondent's company name, G.E. Entertainment LLC. (The periods following the letters “G” and “E” cannot be included in a domain name for technical reasons, and the abbreviation for the legal form of the company is not distinctive or, indeed, common in the selection of domain names.) Moreover, the Domain Name is used precisely for a website advertising that company's products and services. If the Complainant believes that the Respondent's company name and logo infringe the GE mark, it may seek a judicial remedy. For purposes of the UDRP, however, the reflection of the Respondent's company name in the Domain Name satisfies paragraph 4(c)(ii) of the Policy, and the Respondent's actual use of the Domain Name is consistent with paragraph 4(c)(i).
The Complainant cites UDRP decisions effectively presuming that there are no rights or legitimate interests in a domain name based on an especially famous and distinctive trademark. See Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397 (“given that Complainant's trademark is distinctive and famous to the point where it may not be used by other persons even in fields or industries unrelated to Complainant's activities, one would be hard pressed to find a person who may show a right or legitimate interest in a domain name containing Complainant's trademark”). This reasoning is less persuasive when the mark is less distinctive, however. The GE mark, while undeniably famous, simply consists of two letters of the alphabet that might well be used legitimately by others as an abbreviation.
The Complainant cites General Electric Company v. LaPorte Holdings, Inc., WIPO Case No. D2005-0076 for the proposition that the GE is mark is so well-known and universally recognized that it is “near impossible that Respondent could put forth any circumstances that might establish a right or legitimate interest in Respondent in respect of the Domain Names.” See also General Electric Company v. Momm Amed la, WIPO Case No. D2000-1727. But in neither of these cases was the respondent known by a name corresponding to the domain name at issue or using the domain name appropriately in connection with its business under that name, as is the Respondent in this proceeding.
The Complainant implies that the company name and logo were themselves designed as part of a scheme to confuse the public, a scheme furthered by a misleading domain name. That issue is addressed below in considering the Complainant's arguments on bad faith.
The Policy, paragraph 4(b), sets out a non-exhaustive list of circumstances evidencing bad faith in the registration and use of a domain name, including the following:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant relies on this provision of the Policy and suggests that the Respondent chose its company name and logo, as well as the Domain Name, to mislead consumers and “piggyback” illegitimately on the fame of the GE mark. If there were persuasive evidence of such a motive, it might conceivably reveal the Respondent's claimed rights and legitimate interests to be fictitious.
The Complainant has not adduced such persuasive evidence, however. The Domain Name, as discussed above, reflects the Respondent's company name and is used to promote the Respondent's legitimate business. It is by no means obvious, as the Complainant asserts, that anyone choosing a company name and logo prominently featuring the letters “GE” must be targeting the GE mark, no matter the nature of the business. The slogan formerly used in a banner on the Respondent's website (“We bring music to life and life to music”) is appropriate to the Respondent's business, which explicitly emphasizes the work of high-energy vocalists whose music and lyrics represent their “street” experience. This slogan is also sufficiently different from an advertising slogan formerly used by the Complainant (“We bring good things to life”) that it is not self-evidently a misleading imitation.
Moreover, the website associated with the Domain Name is clearly focused on Atlanta-area rappers whose music is recorded and promoted by the Respondent. The website sells rap music CDs and MP3 downloads of recordings by a total of nine young performers (one is only 14 years old). It chronicles their live performances at night clubs and football tailgate parties. In short, the Respondent does not appear to compete with the Complainant for the kinds of goods and services sold under the GE mark, such as kitchen ovens, light bulbs, commercial financing, aircraft engines, gas turbines, and medical imaging systems.
It is true that the Complainant currently owns a major entertainment group, but from the record in this proceeding it appears that the Complainant's entertainment products and services are marketed under the NBC and Universal names and a variety of marks associated with particular broadcasting and cable channels, websites, and production studios. The Complainant's most recent annual report lists 23 “brands” used in its “Media and Entertainment” business. Not one of them includes the letters “GE”.
Thus, it is hardly obvious, as the Complainant insists, that the Respondent chose the names G.E. Entertainment and Global Executives Entertainment, or the Domain Name <geentertainment.com>, in a blatant effort to capitalize on the GE mark. In fact, it is not at all clear why that mark, most commonly associated with home appliances and industrial equipment, would prove to be an irresistible attraction to adolescents devoted to rap music.
The Panel is unpersuaded that the Respondent's apparently legitimate interests in the Domain Name, as described in the preceding section, are merely a sham, concealing a bad-faith effort to mislead Internet users for commercial gain. The Panel concludes, therefore, that the Complainant has not established the second and third elements of the Complaint.
For all the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Dated: December 17, 2009