WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
General Electric Company v. Yushi
Case No. D2008-0518
1. The Parties
Complainant is General Electric Company, Fairfield, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.
Respondent is Yushi, Longyou, China ; yunhui, Zhejiang GE-eles Co., Ltd, Che’ao Industrial Zone,Northern Baixiang Town,Wenzhou City, Zhejiang Province, of China.
2. The Domain Name and Registrar
The disputed domain name <ge-elec.com> is registered with WebNIC.cc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2008. On April 4, 2008, the Center transmitted by email to WebNIC.cc a request for registrar verification in connection with the domain name at issue. On April 7, 2008, WebNIC.cc transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on April 15, 2008. The Center verified that the Complaint together with the amendment to 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 April 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2008. The Response was filed with the Center on April 17, 2008.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on May 8, 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
Complainant is General Electric Company based in the United States of America and has a company history which dates back to 1878. Today, Complainant is one of the world’s leading multinational technologies, industrial, financial and services company, providing a wide array of products and services, including appliances, electrical, aircraft jet engines, lighting, entertainment, finance, medical imaging equipment, motors, railway, locomotives, security and industrial automation.
Complainant has used the GE and the GENERAL ELECTRIC marks (the GE marks) in commerce for over a century, since as early as 1899. Complainant continues to use and advertise the GE marks extensively in connection with a wide variety of goods and services, including financial products and services, lighting, industrial, electrical, transportation, power, security, appliance, transmission and medical equipment. As a result of Complainant’s extensive use of the GE mark, Complainant is commonly known as to the trade and to consumers worldwide as simply GE.
Complainant is the holder of a substantial number of trade mark registrations on the Principal Register of the United States Patent and Trade Mark Office (USPTO) for GE and GENERAL ELECTRIC, both as word marks and as stylized marks for a wide variety of goods and services. In addition, Complainant owns a number of U.S. trade mark and service mark registrations for GE in connection with other terms. These include, GE HYDRO, GE MONEY, GE FOUNDATION, GE FREEDOM, GE EXTRA, GE LEGACY, and GE ACCESS. Complainant is also the owner of numerous trade mark registrations for the mark GE, either alone or in combination with other terms, in over 100 countries throughout the world, including but not limited to China, Hong Kong, SAR of China, the countries of the European Community, Malaysia, Taiwan, Province of China, Australia and New Zealand.
Complainant has also registered and uses the domain name <ge.com> (registered August 5, 1986) to deliver information about 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 <gelighting.com>; <geengergy.com>; <gewater.com>; <geappliances.com>; <gepower.com>; <gesupply.com>; <gesecurity.com>; <geplastics.com>; <gemoney.com> and <geindustrial.com>.
Respondent is Yushi, an alias used by an individual by the name of Yu Yunhui. The website of the disputed domain name displays a company called Zhejiang GE-elec Co.Ltd. also known as Zhejiang Longyou Yushi GE-Elec Co. Ltd. and is promoted as the manufacturer and supplier of electrical and lighting products and supplies. Respondent is the owner of the another domain name <tyecn.com> which is used for a website promoting the Zhejiang Longyou Yushi Ge-Elec Co. Ltd., also referred to as Yushi Ge-Elec Co. Ltd. and which provides links back to the website at the disputed <ge-elec.com> domain name. Respondent manufactures and sells a variety of electrical and lighting products including circuit breakers, relays, distribution boxes, fuses, control switches, switch boards and other electrical components as well as a variety of lighting products such as general purpose, fluorescent, outdoor and specialty light bulbs under several company names such as Zhejiang Longyou Yushi Common Electrica Co. Ltd., Zhejiang Longyou Yushi Ge-Elec Co. Ltd. and Yu shi Ge-Elect International Co. Ltd.
It appears that Respondent has a history of filing trade mark applications in China for marks copying or consisting of marks owned by well-known manufacturers of electrical supplies and power distribution products. These include applications for (i) the mark CRABTREE, which is owned by Crabtree Electrical Accessories; (ii) the logo owned by Schneider Electric and (iii) the logo “TYE” which is almost identical to the logo owned by the Tye Manufacturing Company Ltd. Respondent has also filed applications based on Complainant’s trade marks and logos including (i) GE CIRCUIT BREAKERS and (ii) a circular monogram logo which is reminiscent of Complainant’s widely known logo. All of these applications have since been invalidated by the China Trade Mark Office.
5. Parties’ Contentions
Identical or Confusingly Similar
Complainant asserts that the disputed domain name is identical and or confusingly similar to Complainant’s well known GE marks, as it fully incorporates the mark GE exactly and in its entirety. The mere addition of the word “elec” (a short from of “electric”) fails to alleviate confusion, particularly in view of the fame of the GE and GENERAL ELECTRIC marks. Rather, the use of the word “elec” after GE (and separated by a dash from GE) suggests to web users that the disputed domain name is related to Complainant and its GE and General Electric products and services. Indeed, given that Complainant is one of the world’s leading suppliers of electrical components and lighting products, and offers numerous products and services making use of these products, the addition of the aptly related term “elec” to Complainant’s famous GE name and mark adds to the confusing similarity between the domain name and the GE marks.
Rights or Legitimate Interests
Complainant asserts that Respondent has no legitimate interest in the disputed domain name. Complainant further asserts that as Complainant’s GE marks are so well-known and recognized, there can be no rights or legitimate use by Respondent and the burden of proof is on Respondent to establish rights or legitimate interests in the domain name. In any event, Complainant contends that Respondent cannot demonstrate or establish rights or legitimate interest in the disputed domain name for the following reasons:
1. 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.
2. Respondent is not an authorized distributor or manufacturer of Complainant’s products, and there has never been any business relationship whatsoever between Complainant and Respondent.
3. 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 disputed domain name and on its affiliated website.
4. Respondent has registered the disputed domain name and is using it solely for commercial gain and has sought to profit by using the disputed domain name to promote itself and its alleged electrical products and services by piggy backing on the goodwill associated with Complainant’s exceptionally famous GE marks.
5. Respondent has blatantly attempted to create a false association between Respondent and Complainant by highlighting the letters “ge” in not only the disputed domain name, but in the various company names used by Respondent to sell its electrical products, by featuring the mark GE standing alone on its websites, by filing trade mark applications for GE related trade marks and logos and by its use and depictions of the <ge-elec.com> domain name in links its has established on various websites. It is clear that Respondent is using the disputed domain name and GE marks to substantiate itself as a large, legitimate company in order to market and sell its competing electrical products and services. Such use of the disputed domain name is not a legitimate interest or use. To conclude otherwise would mean that a respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the Policy.
Registered and Used in Bad Faith
Complainant contends that Respondent has registered and is using the disputed domain name 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 disputed domain name and associated websites are connected with Complainant.
Respondent’s bad faith registration of the disputed domain name is established by the fact that the disputed domain name completely incorporates Complainant’s GE marks and was acquired long after the GE marks became well known.
Respondent’s bad faith use of the disputed domain name is evidenced by the following:
1. Respondent has sought to profit from the disputed domain by using it to create an aura of affiliation with Complainant and the goodwill associated with the GE marks. Respondent enhances this affiliation by making repeated uses of the GE mark throughout its website, company names and promotional materials, and by offering products that purport to be GE electrical and lighting products and supplies.
2. Respondent uses the disputed domain name to promote products that are directly competitive with products sold under Complainant’s GE marks, such as electrical and lighting 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 clear evidence of bad faith.
3. Respondent has wholly failed to identify itself, choosing instead to conceal itself through various aliases and by registering and using a number of company names in connection with the disputed domain name. Such use of concealed contact information and use of aliases is further evidence of Respondent’s bad faith.
In response to Complainant’s allegations, Respondent answers as follows:
1. That Respondent’s company is 浙江龙游余氏常用电气有限公司 in Chinese and “常用电气” is “General Electric” in English which is shortened to “GE-Elec”.
2. That Respondent’s company was registered on August 15, 2005. It has achieved certain sales volumes and has a well known reputation in the market.
3. That Respondent has never engaged in any illegal business or activities.
4. That Respondent uses the disputed domain in a reasonable and legal way without other commercial intention.
5. That the disputed domain name is independent and there is no relation with Complainant’s domain name <ge.com>. Respondent argued that if “ge.com” is keyed into a search engine, the disputed domain name <ge.elect.com> does not appear.
6. That Respondent’s company is located in China and Complainant’s GE company is located in the United States of America and they are different.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, Complainant must establish that each of the three following elements is satisfied:
1. the domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights;
2. Respondent has no rights or legitimate interests in respect of the domain name; and
3. the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with Complainant to establish that all these three elements are satisfied in this proceeding.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, 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 of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
Complainant has produced substantial evidence to demonstrate that it has registered trade mark rights in the GE mark in many countries throughout the world including China. There is little doubt with regards to the fame and notoriety of Complainant GE marks. The Panel accepts the evidence adduced by Complainant and finds that Complainant has trade mark rights in the GE marks and continues to have such rights.
The disputed domain name comprises an exact reproduction of Complainant’s trade mark GE with the addition of the word “elec” and the gTLD “.com”. In assessing the degree of similarity between Complainants’ mark and Respondent’s domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements.
The element “ge” is the dominant and the distinctive element of Complainant’s marks and it has been reproduced in its entirety in the disputed domain name. The Panel accepts Complainant’s contention that the addition of the English word “elec” does not prevent the disputed domain name from being identical or confusingly similar and is not sufficient to render the disputed domain name distinctive from the trade marks of Complainant. In fact, as the generic word “elec” aptly refers to Complainant’s core business, it therefore does not alter the fundamental character of the domain name and does not change the overall impression of it being a domain name connected to or associated with Complainant and its GE marks. As a result of the fame of Complainant and its GE marks and the fact that Respondent offers a competing products and services on his websites, the Panel finds that Respondent’s domain name might well be regarded by many Internet users as a domain name associated with or connected to Complainant’s business and heightens the confusion. Furthermore, the addition of a gTLD such as “.com” to an otherwise identical or confusingly similar replication of Complainant’s trade mark does not serve to distinguish Respondent’s domain name from Complainant’s trade mark. This is well established by previous UDRP cases.
The Panel therefore finds that the disputed domain name <ge-elec.com> is confusingly similar to a trade mark or service mark in which Complainant has rights.
The Panel thus finds for Complainant on the first part of the test.
B. Rights or Legitimate Interests
Based on the following reasons the Panel finds that Complainant has established a prima facie case of Respondent’s lack of rights or legitimate interests to the domain name:
1. Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the word “ge-elec” in its business operations;
2. There was no evidence on the record to show that Complainant has licensed or otherwise permitted Respondent to use its trade mark or to apply for or use any domain name incorporating the trade mark;
3. There is no indication whatsoever on the record that Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services;
4. Complainant and its GE marks enjoy a worldwide reputation with regard to its multinational electrical, technology and other business. Consequently, in the absence of contrary evidence from Respondent, the GE marks are not those that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.”
Respondent has responded by saying that “GE-Elec” is the short form of “General Electric” which is a translation of its company’s name in Chinese 浙江龙游余氏常用电气有限公司. The Panel is not persuaded by Respondent’s explanation. Respondent’s company name in Chinese may be represented in numerous ways in the English language. The intentional adoption of “GE” in its company’s representation without a satisfactory explanation suggests that Respondent has no rights or legitimate interests in the disputed domain name. Furthermore, the intentional adoption of Complainant’s registered trade mark GE may infringe Complainant’s trade mark rights and could not confer Respondent with any legitimate rights or interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trade mark or service mark or to a competitor of complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.
The Panel concludes based on the case file that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.
Firstly, the Panel finds that Complainant enjoys a worldwide reputation in its GE marks with regard to its multinational electrical, technology and other business. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcend national borders. Therefore, the Panel finds that it is not conceivable that Respondent would not have had actual notice of Complainant’s trade mark rights at the time of the registration of the domain name. The Panel’s finding is further buttressed by the fact that Respondent is a competitor of Complainant and sells competing products on the website to which the disputed domain name resolves upon. Consequently, it is pertinent for Respondent to provide a satisfactory explanation of its choice in the disputed domain name. However, the response provided by Respondent is weak and does not hold water. Thus, the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with Complainant and its products.
Complainant has also adduced evidence to prove that by using confusingly similar disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website offering similar and competing products and services. Given the fame of Complainant’s GE marks, the compelling conclusion is that Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant’s famous marks, intended to ride on the goodwill of Complainant’s marks in an attempt to exploit, for commercial gain, Internet traffic destined for Complainant. Consequently, Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with Complainant’s GE trade marks and this constitutes a misrepresentation to the public that his website is in one way or the other associated or connected with Complainant’s. In the absence of substantiating evidence to the contrary, the choice of the disputed domain name and the conduct of Respondent as far as the website on to which the domain name resolves are indicative of registration and usage of the disputed domain name in bad faith.
The Panel finds for Complainant on the third part of the test.
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, <ge-elec.com> be transferred to Complainant.
Susanna H.S. Leong
Dated: May 22, 2008