WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
General Electric Company v. Marketing Total S.A
Case No. D2007-1834
1. The Parties
The Complainant is General Electric Company, of Fairfield, United States of America, represented by Kilpatrick Stockton, LLP, of the United States of America.
The Respondent is Marketing Total S.A, of the West Indies, Saint Kitts and Nevis.
2. The Domain Names and Registrars
The disputed domain names are <gegeneralelectric.com>,<generalelecctric.com>, <generalelectriccapitalassurance.com>,<generalelectricc.com>, <generalelectricdishwasher.com>, <generalelectricdryers.com>, <generalelectriclamps.com>, <generalelectriclights.com>, <generalelectricmicrowave.com>, <generalelectricmicrowaveovens.com>, <generalelectricpr.com>, <generalelectricpump.com>, <generalelectricuniversalremote.com>, <generalelectricusa.com>, <generalelecttric.com>, <genwralelectric.com>, <www-generalelectric.com>, the registrations for which are divided between DomainDoorman, LLC, Capitoldomains, LLC and BelgiumDomains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2007. On December 13, 2007, the Center transmitted by email to DomainDoorman, LLC, Capitoldomains, LLC, BelgiumDomains, LLC, a request for registrar verification in connection with the domain names at issue. On December 13, 2007, DomainDoorman, LLC, Capitoldomains, LLC, BelgiumDomains, LLC transmitted by email to the Center their verification response confirming that the Respondent is listed as the registrant and providing the contact details (in relation to the identity of the Respondent, see further the discussion below). 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 December 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2008.
The Center appointed James A. Barker as the sole panelist in this matter on January 18, 2008. 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
In the absence of a Response, the following facts are not contested.
The Complainant is one of the world’s leading multinational technology, industrial, financial and services companies, providing a wide array of products and services, including, by way of example, aircraft jet engines, electricity, lighting, entertainment, finance, medical imaging equipment, motors, plastics, silicones, railway locomotives, security and industrial automation. A recent study conducted by a leading global strategy and technology consulting firm, Booz Allen Hamilton, named the Complainant, commonly known as ‘GE’, as one of the world’s 10 most enduring institutions of the last 100 years.
The Complainant has registered and uses the domain names <ge.com> (registered on August 5, 1986) and <generalelectric.com> (registered on September 12, 1995) to deliver information concerning the Complainant and its products and services.
The Complainant owns and operates a wide network of web sites dedicated to its other various business units, including by way of example, “www.geae.com”, “www.gecas.com”, “www.gefanuc.com”, and “www.gelighting.com”.
The Complainant is also the owner of numerous trademark registrations throughout the world, for GENERAL ELECTRIC and GE, both as word marks and as stylized marks for a wide variety of goods and services. The fame of the Complainant’s marks has been recognized in numerous panel decisions. For example, see General Electric Company v. Normina Anstalt a/k/a Igor Fyodorov, WIPO Case No. D2000-0452; General Electric Company v. Charles Kasinga, WIPO Case No. D2000-0389; General Electric Company v. Momm Amed la, WIPO Case No. D2000-1727; General Electric Company v. LaPorte Holdings, Inc., WIPO Case No. D2005-0076.
The Respondent has been a respondent in numerous prior panel proceedings. These included, for example, Wal-Mart Stores Inc. v. Marketing Total S.A., WIPO Case No. D2007-0419; Debevoise & Plimpton LLP v. Marketing Total S.A., WIPO Case No. D2007-0451; MasterCard International Incorporated v. Keyword Marketing, Inc., WIPO Case No. D2007-1138; Sanofi-Aventis and Aventis Inc. v. Web Advertising, Corp. and Keyword Marketing, Inc., Publix Asset Management Company v. Click Cons. Ltd., NAF Claim No. FA0612000874479; Yakira, L.L.C. d/b/a Ecko Unltd. v. Caribbean Online International Ltd., WIPO Case No. D2007-1262; Société des Bains de Mer et du Cercle des Étrangers à Monaco v. Maison Tropicale S.A., WIPO Case No. D2007-0604.
The Complainant provides evidence that all the disputed domain names (on November 29, 2007) reverted to simple ‘portal’ or ‘landing’ websites, with various links including a number in each case relating to the Complainant and in other cases referring to what would appear to be competitors of the Complainant.
5. Parties’ Contentions
The Complainant claims that “Keyword Marketing, Inc.”, “Web Advertising, Corp.”, “Click Cons. Ltd”, “Caribbean Online International Ltd”, “Maison Tropicale S.A.”, and “Wan-Fu China, Ltd”, as well as the named Registrars of the disputed domain names, are alter egos of the Respondent.
The Complainant contends that the disputed domain names are all confusingly similar to its famous marks. To the extent there are differences, these only arise from the addition of generic terms or misspellings, which do not serve to distinguish the Complainant’s marks.
The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant’s marks are so well-known that there can be no legitimate use by the Respondent. The Respondent is using the disputed domain names to misdirect Internet traffic, which cannot amount to a right or legitimate interest for the purpose of the Policy.
For somewhat similar reasons, the Complainant contends that the disputed domain names were registered and are being used in bad faith. The Complainant contends that the Respondent is a known cybersquatter who has engaged in a pattern of registering domain names containing the trademarks of third parties to misdirect Internet traffic.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For the Complaint to succeed in its entirety, the Panel must be satisfied that there is sufficient evidence that the variously named registrants of the disputed domain names can be treated as a single Respondent.
If that is established, under paragraph 4(a) of the Policy, the Complainant must then prove that:
(i) the disputed 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 disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
These issues are discussed as follows.
A. Identity of Respondent
The disputed domain names are registered under 7 different names:
- <gegeneralelectric.com>, <generalelectricuniversalremote.com> and <generalelectricmicrowaveovens.com> are registered in the name of the Respondent;
- <generalelectricdishwasher.com>, <generalelectricdryers.com>, <generalelectricpump.com> are registered in the name of “Keyword Marketing, Inc.”;
- <generalelectricc.com> is registered in the name of “Web Advertising, Corp”;
- <generalelectricusa.com> and <generalelectriccapitalassurance.com> are registered in the name of “Click Cons. Ltd”;
- <generalelectriclamps.com> and <generalelectriclights.com> are registered in the name of “Caribbean Online International Ltd”;
- <generalelectricpr.com>, <generalelecctric.com>, <genwralelectric.com>, and <www-generalelectric.com> are registered in the name of “Maison Tropicale S.A.”;
- <generalelecttric.com> and <generalelectricmicrowave.com> are registered in the name of “Wan-Fu China, Ltd”.
If these entities were, in fact, separate legal entities the Policy would usually require the Complainant to initiate separate proceedings against each (absent a successful request for the consolidation of multiple disputes under paragraph 10(e) of the Rules). Neither the Policy nor the Rules otherwise make explicit provision for proceedings against legally separate respondents to be combined. Some Panels have partially dismissed complaints to the extent that they included additional respondents. (For example, see Boehringer Ingelheim Pharma GmbH & Co. KG v. Domains by Proxy, Inc / Pradeep Dadha / Jonathan Valicenti, WIPO Case No. D2006-0465.)
However, the mere fact of registrants being differently named has, in various previous cases, not prevented a finding that there is one proper Respondent, in circumstances which indicate that the registrants may be regarded as the same entity in effect. (For example, see Société des Hôtels Meridien v. Spiral Matrix / Kentech Inc., WIPO Case No. D2005-1196, and the cases cited immediately below in relation to the Respondent.)
The Panel finds that the circumstances in this case indicate that the 7 named registrants are, essentially, the same. As noted by the Complainant, several registrants share identical mailing addresses, and previous panels have found that some or all of these entities function as aliases for the Respondent. For example, panels have found that Maison Tropicale S.A., Caribbean Online International Ltd., Click Consulting Ltd., Web Advertising Corp., and Marketing Total S.A. are all one and the same entity. See, e.g., Diamonique Corporation v. Maison Tropicale S.A., WIPO Case No. D2007-1093; see also Educational Testing Service v. Caribbean Online International Ltd., Keyword Marketing, Inc., Maison Tropicale S.A. and Wan-Fu China Ltd., WIPO Case No. D2007-0500. In addition, panels have found that Keyword Marketing Inc. and Web Advertising, Corp. (found to be essentially the same as the Respondent) are the same. See Edmunds.com, Inc. v. Web Advertising, Corp. / Keyword Marketing, Inc., WIPO Case No. D2006-1380; Sanofi-Aventis and Aventis Inc. v. Web Advertising, Corp. and Keyword Marketing, Inc., WIPO Case No. D2007-0678. The Complainant also notes that the domain names at issue point to nearly identical web pages.
For these reasons, the Panel finds that the variously named registrants are properly treated as a single Respondent in this case: for convenience, named as “Marketing Total S.A.”
Respondent’s Relationship with Registrars
The Complainant further contends that the Registrars and the Respondent are also the same entity. The Panel finds that the evidence supports this contention, for the reasons set out immediately below, noting also that no evidence to the contrary was provided by the Respondent.
The Complainant notes that those Registrars share identical mailing addresses, phone numbers, and fax numbers, and host nearly identical Internet home pages. The Complainant also notes that a recent article in the Washington Post reported that computer manufacturer Dell Inc. has filed suit against the same three Registrars and all of the Respondent’s alter ego companies. Dell’s suit alleges that the Respondent’s alter ego companies were in fact established by the Registrars to act as shell entities to register a multitude of domain names for purposes of cybersquatting and domain ‘tasting’. As noted in paragraphs 125 and 126 of the Plaintiff’s Complaint in that suit (available at http://www.domainnamenews.com/legal-issues/dell-computer-vs-trademark-infringing-domainers/1323):
“…The practice of registering and deleting domain names within 5 days that do not generate sufficient traffic to turn a profit in order to avoid paying for the registration is commonly referred to as ‘tasting’.”
“…Defendants repeatedly register, delete, and re-register domain names [between different notional entities] to use the domain names for free and to avoid detection by Plaintiff and other trademark owners. [This practice] is known as ‘kiting’.”
The association between the Respondent and the Registrars in that suit appears to be based on the alleged involvement of the Respondent (under its various names) and the Registrars in ‘tasting’ and ‘kiting’ relating to the same domain names. That is, there is evidence from that suit that the Respondent in this present case (under one or more of its aliases) and the Registrars were together involved in transferring domain name registrations between themselves every five days, to avoid the registration fee.
The capacity for domain name ‘tasting’ (and therefore ‘kiting’) arises from an ICANN policy to allow a five-day period, following the initial registration of a domain name, when the registration may be deleted at no cost to a registrar. As stated by ICANN, the five-day policy was originally introduced so registrars could avoid costs if a domain name was mistyped or misspelled during the registration process. Such policy currently applies to domain name registrations in the .com, .net, .org, .info, .name, .pro, and .biz domains1.
This five-day policy has, however, encouraged the practice of ‘tasting’ and ‘kiting’, particularly by a number of tasters in relation to a very large number of domain names. These domain names frequently revert, as in this case, to portal or landing websites which provide merely a list of links for the purpose of generating ‘click through’ revenue to the registrant. As long as there is no, or a minimal, registration fee, a registrant can make a profit with only a small number of ‘click throughs’. As noted about this practice by the Panel in Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415:
“the end result is that many domain names are in a constant state of tasting and re-registration, all without anyone ever having to pay the very modest registration fees for the domain names.”
Among other problems, the obvious result of this practice is to expand the potential for cybersquatting as well as for corresponding court litigation. Whether or not to accommodate this situation, ICANN announced on January 29, 2008 that it was looking to effectively end domain tasting with a proposal to start charging the annual ICANN fee on registrar domain registrations. (See http://www.icann.org/announcements/announcement-29jan08.htm)
An additionally difficult issue in this case, is that the Registrar is simultaneously the Respondent. To the extent that the Respondent/Registrar has engaged in cybersquatting, this poses challenges to the integrity and workability of the Policy. It is a circumstance that creates a conflict, in that the entity responsible for enforcing the Policy in accordance with these proceedings (the Registrar) is also the entity against which the proceedings are brought (the Respondent).
Further, this circumstance may create doubt around the validity of the registration agreement, through which the Policy is given effect. This is because it is not clear that a single entity (the Registrar) can validly make a registration agreement with itself. To the extent there is such doubt, the only practical remedy may arise through the Registrar’s agreement with Verisign, which administers the “.com” domain registry. Under clauses 2.13 of Verisign’s Standard Registry-Registrar Agreement, the Registrar agrees to comply with ICANN standards, policies, procedures, as well as applicable statutes and regulations limiting the domain names that may be registered. Under clause 6.15(a) of that Agreement, the Registrar warrants that is duly incorporated and of good standing, and remains accredited by ICANN. Broader questions of registrar accreditation policy and the consequences thereof aside, those clauses may provide a remedy against a Registrar that itself engages in cybersquatting, or which adopts aliases to shield its identity. But, any such remedy is not directly available to a Complainant under the Policy. Accordingly, and taking into account the further information in the penultimate paragraph of the present decision, in this case the Panel has requested (below) that a copy of this decision be forwarded to Verisign and ICANN, for these to consider any necessary action to ensure the proper implementation of the Policy.
However, for the purpose of these proceedings, and because this has not been put in issue by either party, the Panel has proceeded on the basis that there is a valid and subsisting registration agreement.
B. Identical or Confusingly Similar
Having established that the Respondent is a single entity in fact, the Complainant must next establish that the disputed domain names are identical or confusingly similar to its marks.
While none of the disputed domain names are identical to the Complainant’s marks, all of them include the Complainant’s GENERAL ELECTRIC mark its entirety, and either add the Complainant’s GE mark (e.g. <gegeneralelectric.com>), add common terms (e.g.<generalelectricdishwasher.com>, <generalelectricdryers.com>), are obvious misspellings of the Complainant’s mark (e.g. <generalelectricc.com>), or add a two letter combination with no obvious association (<generalelectricpr.com>). Taking into account the fame of the Complainant’s marks, the Panel finds that none of these various differences distinguish those marks.
It follows that the Panel finds that the disputed domain names are confusingly similar to the Complainant’s marks. This result also appears consistent with previous panel findings (a sample of which were cited above) under the Policy, in relation to the Complainant’s marks.
For these reasons, the Complainant has established that the disputed domain names are confusingly similar to its marks, for the purpose of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The disputed domain names are obviously connected with the Complainant and have been used to direct Internet traffic to portal websites, which include links relating directly to the Complainant and its business. These circumstances strongly suggest that the Respondent has registered and used the disputed domain names to misdirect Internet traffic looking for the Complainant. Such uses go against a finding that the Respondent has rights or legitimate interests in the disputed domain names. The Respondent has provided no evidence to the contrary.
For these reasons, the Complainant has established that the Respondent lacks rights or legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
All the evidence in this case suggests that the activities of the Respondent, in registering and using domain names, is extensive. This further suggests that the Respondent may register domain names in bulk, as part of some automated process. It might be argued from this that the Respondent did not have an actual intention to act in bad faith. It is important to note that this does not prevent a finding of bad faith.
The circumstances of this case suggest that it was the Respondent’s intention to bulk-register domain names that had some value in directing Internet traffic to its portal websites. Domain names that include, or are confusingly similar to, trademarks naturally have more value for this purpose. There is no evidence in this case that the Respondent took any measures to avoid exploiting the value of others’ trademarks. The Respondent must have been aware of, and therefore intended the possibility of such exploitation to arise. At the very least, the Respondent would have been aware of this possibility by the various prior proceedings successfully brought against it under the Policy (referred to above). This suggests that the Respondent either deliberately ignored, or actively intended to exploit, the value of whatever marks it might register as domain names.
The Respondent’s likely state of mind when it registered and then used the disputed domain names therefore supports a finding of bad faith. This finding also appears to the Panel to be consistent with a number of recent panel decisions, finding bad faith in circumstances where respondents automatically registered domain names for similar purposes as the Respondent in this case. (See e.g. Ranbaxy Laboratories Ltd v. Jucco Holdings, WIPO Case No. D2007-1562; Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448.)
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, <gegeneralelectric.com>,<generalelecctric.com>, <generalelectriccapitalassurance.com>,<generalelectricc.com>, <generalelectricdishwasher.com>, <generalelectricdryers.com>, <generalelectriclamps.com>, <generalelectriclights.com>, <generalelectricmicrowave.com>, <generalelectricmicrowaveovens.com>, <generalelectricpr.com>, <generalelectricpump.com>, <generalelectricuniversalremote.com>, <generalelectricusa.com>, <generalelecttric.com>, <genwralelectric.com>, <www-generalelectric.com> be transferred to the Complainant .
A report dated December 22, 2007 (see http://www.domainnamenews.com/legal-issues/registrar-belgium-domains-locked-out/1351) states that at least one of the Registrars in this case (BelgiumDomains LLC) has been ‘locked out’ by Verisign. The reported effect of this is that the locked out Registrar cannot administer domain names registered by its customers.
Accordingly, to the extent that Verisign may be acting (even temporarily) as the Registrar-in-fact of all or any of the disputed domain names, the Panel requests that this decision be copied to Verisign, and also to ICANN as the accrediting authority, for any appropriate action.
James A. Barker
Dated: February 1, 2008
1 The Panel notes that the Public Interest Registry, which manages the .org domain, has announced that it will implement an excess deletion fee of five cents in attempt to curb abuse of the five-day grace period. (See http://www.publicinterestregistry.org/Publications/eNewsletter.aspx?id=8)