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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
General Electric Company v. Pars International Computer, Inc.
Case No. D2000-0368
1. The Parties
1.1 The Complainant is General Electric Company ("General Electric"), a corporation organized under the laws of the State of New York, USA, having its principal place of business in Fairfield, Connecticut, USA.
1.2 The Respondent is Pars International Computer, Inc., a corporation located at 22445 Foothill Blvd., Hayward, California 94541 USA.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is <1-800-ge.com>, which domain name is registered with Network Solutions, Inc. ("NSI"), based in Herndon, Virginia, USA.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on May 2, 2000, and the signed original was received on May 4, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated May 7, 2000.
3.2 On May 7, 2000, a Request for Registrar Verification was transmitted to the registrar, NSI requesting it to: (1) confirm that the domain name at issue is registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.
3.3 On May 11, 2000, NSI confirmed by email that the domain name <1-800-ge.com> is registered with NSI, and that the Respondent is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 On May 11, 2000, the WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Uniform Rules, and the Supplemental Rules. The required fees were paid on time and in the required amount by the Complainant.
3.5 On May 13, 2000, the WIPO Center received electronically a Supplemental Filing by Complainant. On May 15, 2000, hardcopy of the Supplemental Filing was received by the WIPO Center.
3.6 No formal deficiencies having been recorded. On May 17, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of June 5, 2000, by which the Respondent could file a Response to the Complaint.
3.7 On June 5, 2000, the WIPO Center received electronically a Response. On June 7, 2000, hardcopy of the Response was received by the WIPO Center.
3.8 On June 15, 2000, the WIPO Center received hardcopy of a Reply from Complainant.
3.9 On July 19, 2000, the WIPO Center received electronically a Sur-Reply from Respondent.
3.10 On July 11, 2000, the WIPO Center appointed Richard W. Page to serve as Chair, and Clark W. Lackert and Neil A. Smith to serve as co-panelists.
3.11 The acceptance and consideration of the Reply and Sur-Reply is discretionary with the Panel. The Panel has decided not to accept or consider the Reply and Sur-Reply and, therefore, bases its Decision on the Complaint together with Supplement and the Response.
4. Factual Background
4.1 Through its more than 120-year history, General Electric has become one of the best known companies in the world. General Electric offers a vast array of quality services and goods through dozens of separate and diverse business units. The company currently employs approximately 340,000 people in over 100 countries. Its revenues in 1999 totaled $112 billion. Furthermore, General Electric has spent, over the years, billions of dollars on advertising and marketing its goods and services around the globe in connection with its world-renowned GE trademark (the "GE Mark"). The company also has allocated considerable funds to promote its Internet-related products and services under the GE Mark, such as its e-commerce services and its fully integrated online distribution system. General Electric’s website can be accessed through various of its domain names including <www.ge.com>.
4.2 The GE Mark is famous and was registered with the United States Patent and Trademark Office ("USPTO") as early as 1900. Furthermore, General Electric owns hundreds of other United States trademark and service mark registrations that contain the GE Mark.
4.3 On January 13, 1999, Respondent registered with NSI the domain name <1-800-ge.com>. The website at www.1-800-ge.com currently states "Email the Webmaster" and displays a generic graphic indicating that site is "under construction".
4.4 Aside from <1-800-ge.com>, Respondent has registered at least 50 other domain names, many of which contain the "1-800" prefix combined with other famous trademarks, including 1-800-cadillac.com, 1-800-bmw.com, 1-800-bmwcars.com, 1-800-amazon.com and 1-800-lincoln.com.
4.5 None of these factual allegations is contested by Respondent.
4.6 Respondent declares that the "ge" in its domain name is meant to refer to "great earth." Respondent declares, without further supporting evidence, that the intended use of the domain name is for a free community forum website for environmental issues, that the content for the website has been prepared over the last nine months and, furthermore, that the sponsoring group has 23 founding members.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered as a domain name which is identical or confusingly similar to the GE Mark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
5.2 Respondent contends that its domain name causes no confusion and that the domain name has been registered and is being used in good faith.
6. Discussion and Findings
6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
6.2 Since both the Complainant and Respondent are domiciled in the United States, and since United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
6.3 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
(ii) that the Respondent has no rights or legitimate interest in respect of the domain name; and,
(iii) the domain name has been registered and is being used in bad faith.
6.4 The prefix "1-800" as used in the United States evokes the impression of a toll-free telephone number. Combining this prefix with "ge" creates the impression that this domain name is associated with a toll-free telephone number for General Electric. Respondent’s argument that five more letters or numbers are necessary to form a complete telephone number in the United States is not persuasive. The "1-800-ge" phrase is sufficient to make association with a toll-free number for General Electric. The domain name at issue is confusingly similar to the GE Mark. Therefore, the requirement of Paragraph 4(a)(i) is met.
6.5 Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interest in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011. In addition, Respondent has posted no content on the intended website nor has it shown demonstrable plans for the declared intended use of the domain name or website. Respondent has shown no rights or legitimate interest in the domain name. Therefore, the requirement of Paragraph 4(a)(ii) is met.
6.6 Complainant's allegations fall within the example of bad faith registration set forth in Paragraph 4(b)(ii) which provides that evidence of bad faith registration and use includes circumstances showing:
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct.
6.7 The Panel finds that Respondent is engaged in a pattern of conduct in which it adds a "1-800" prefix to well-known or famous trademarks or service marks. This pattern of registration precludes the Complainant from reflecting its trademark in the corresponding "1-800" domain name. Therefore, the bad faith requirement of Paragraph 4(a)(iii) is met.
6.8 The Panel further finds that the "1-800" leader indicates a toll-free medium, that the Internet enjoys a toll-free status of free communications and that the parallel adoption of "1-800" domain names is often identical to "vanity" telephone numbers. See Futuredontics, Inc. v. Applied Anagramics, Inc., 45 U.S.P.Q.2d 2005 (CD Cal 1998), affirmed 1999 U.S. App. Lexis 26257 (Ninth Cir. 1999); Desknet Systems, Inc. v. Desknet, Inc., 42 U.S.P.Q.2d 1954 (SDNY 1997); Securacomm Consulting, Inc. v. Securacom, Inc., 984 F.Supp. 286 (DCNJ 1997) rev’d 166 F.3d 182 (Third Cir. 1999). Based upon these finding the Panel concludes that the bad faith requirement of Paragraph 4(a)(iii) is met.
6.9 The Examples in Paragraph 4(b) are intended to be illustrative, rather than exclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
6.10 In Telstra it was established that registration together with "inaction" and other facts can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent Panels. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042; Sanrio Co. Ltd. and Sanrio, Inc. v. Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Stralfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoSpace.com, Inc. v. Ofer, WIPO Case No. D2000-0075.
6.11 Telstra established that whether "inaction" could constitute bad faith registration and use could only be determined by analyzing the facts in a given case.
6.12 In the case at hand, Respondent has posted no content on the website and has produced no demonstrable plans to create such a website. Respondent’s declared intention to activate the website within two weeks of a ruling by this Panel is not sufficient to constitute action taken to implement the website. The Policy speaks of use of, or demonstrable preparations to use, before any notice to the registrant. Mere intentions to do something after this Panel’s decision are not helpful to the Respondent.
6.13 The Respondent has engaged in a pattern of registrations using trademarks which is inconsistent with its declared intention to create a free community forum on environmental issues. The pattern is consistent with speculation in domain names.
6.14 To quote a prior Panel decision, "[B]ecause Respondent is contributing no value-added to the Internet -- it is merely attempting to exploit a general rule of registration -- the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it." Educational Testing Service v. TOEFL, ICANN Case No. D2000-0044. Accordingly, the Panel finds that the practice of speculation in "1-800" domain names including famous trademarks here constitutes bad faith.
6.15 The inaction and speculation of Respondent are additional grounds for finding that the registration and use of the domain name <1-800-ge.com> is in bad faith, pursuant to Paragraph 4(a)(iii).
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical or confusingly similar to the GE Mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <1-800-ge.com> be transferred to the General Electric Company.
Richard W. Page
Clark W. LackertNeil A. Smith
Dated: July 25, 2000