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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

General Electric Company v. John Bakhit

Case No. D2000-0386

 

1. The Parties

The Complainant is General Electric Company, a corporation organized in the State of New York, United States of America (USA), with place of business in Fairfield, Connecticut, USA.

The Respondent is John Bakhit, with address in Loveland, Ohio, USA.

 

2. The Domain Name(s) and Registrar(s)

The disputed domain name is "general-electric.com".

The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.

 

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

a) Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on

May 4, 2000, and by courier mail received by WIPO on May 8, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On May 11, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc. On May 11, 2000, WIPO completed its formal filing compliance requirements checklist.

b) On May 15, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail and courier mail. Notification was also transmitted via e-mail and courier mail to Respondent’s Technical Contact.

c) On June 5, 2000, WIPO transmitted notification to Respondent of its default in responding to the complaint by via e-mail and courier mail.

d) On June 7, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On June 7, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

e) On June 8, 2000, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by June 22, 2000. On June 8, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondent’s default in responding to the complaint). The proceedings have been conducted in English.

 

4. Factual Background

Complainant is the holder of a substantial number of trademark registrations on the Principal Register at the USPTO for the words "General Electric". Registrations include No. 320,304, dated December 25, 1934, covering, inter alia, dynamo electric machines; No. 867,114, dated March 25, 1969, covering, inter alia, materials for electricity transmission; No. 865,189, dated February 25, 1969, covering, inter alia, silicon sealants; No. 1,448,350, dated July 21, 1987, covering, inter alia, electric lightbulbs; No. 865,205, dated February 25, 1969, covering, inter alia, metals and alloys; No. 533,699, dated November 21, 1950, covering, inter alia, lubricating oils; No 1,183,819, dated December 2, 1981, covering, inter alia, electric toothbrushes; No. 871,259, dated June 17, 1969, covering, inter alia, turbines, and; No. 373,916, dated December 26, 1939, covering, inter alia, shut-off valves. (Complaint, para. 13 and Exhibit 4.) These registrations are valid and subsisting. The "General Electric" mark has been used in commerce since at least 1934 (based on the foregoing registrations), and continues to be used in commerce. The "General Electric" mark has been widely advertised and is well known.

Complainant has registered and uses the domain name "generalelectric.com" (Complaint, para. 12).

Network Solutions’ WHOIS database query response (Complaint, Exhibit 1) indicates that "Bakhit, John," with Administrative Contact at "Bakhit, John", is registrant of the domain name "GENERAL-ELECTRIC.COM". The record of this registration was created on March 9, 2000, and was last updated on March 9, 2000 (id.).

As of April 25, 2000, an Internet user who entered the web address "www.general-electric.com" would be directed to a web page headed "Domain For Sale", followed by the text, "This Could Be Your Home Page. If you are interested in this domain name, Please contact me at the above e-mail address." (Complaint, Exhibit 5). The indicated e-mail address "smic@aol.com" is the same as that listed for Respondent (as Administrative Contact) on the record of registration for the disputed domain name (id., Exhibits 1 & 5).

The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions’ dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)). Respondent has not contested that it is properly before this Administrative Panel.

 

5. Parties’ Contentions

A. Complainant

Complainant states that it widely advertises the "General Electric" trademark and uses it in connection with electronic commerce-related business (Complaint, para. 12).

Complainant states that it is the holder of numerous trademark and service mark registrations for "General Electric", and that "the GENERAL ELECTRIC Mark is unquestionably one of the most famous marks on Earth." (Id., para. 13)

Complainant provides evidence of its trademark registrations (id., para 14 and Exhibit 4)(see Factual Background, supra).

Complainant states:

"15. On or before March 9, 2000, the Respondent, John Bakhit, acquired the domain name general-electric.com. (Footnote 1: Before Mr. Bakhit acquired general-electric.com, the registrant information for the domain name was listed in the NSI WhoIs database as ‘If you want this domain name, please contact me.’ The administrative contact was listed as Antonio Ben Espinoza, who apparently sold general-electric.com to the Respondent, Mr. Bakhit, after General Electric Co. sent a cease-and-desist letter to Mr. Ben Espinoza.) … The web site currently posted at general-electric.com is a single page that states ‘Domain For Sale. This Could Be Your Home Page. If you are interested in this domain name, Please contact me at the above e-mail address.’ … This patent attempt to sell general-electric.com -- a domain name clearly designed to confuse consumers searching the Internet for information about General Electric Co. -- is undeniably a bad faith attempt to profit from the GENERAL ELECTRIC Mark.

"16….

"17. It is indisputable that general-electric.com is identical or confusingly similar to the GENERAL ELECTRIC Mark. The domain name not only contains the famous GENERAL ELECTRIC Mark, but it also is nearly identical to generalelectric.com, which is owned and used by General Electric Co. to direct traffic to its web site….

"18. …

"19. Mr. Bakhit has no rights or legitimate interests whatsoever with respect to general-electric.com. His name has no resemblance whatsoever to the GENERAL ELECTRIC Mark. Furthermore, General Electric Co. has never granted Mr. Bakhit the right to use the GENERAL ELECTRIC Mark, either in connection with a bona fide offering of goods and services or for any other reason. In fact, Mr. Bakhit is using the domain name solely for an illegitimate purpose -- i.e., to post a web site that is nothing more than an advertisement for the sale of general-electric.com…

"20. …

"21. Mr. Bakhit cannot prove any of the above legitimate interests…

"22. Section 4(b) of the ICANN Policy lists four non-exclusive categories of evidence, any of which alone ‘shall be evidence of the registration and use of a domain name in bad faith.’ …

"23. The facts of this case clearly show that Mr. Bakhit acquired general-electric.com in bad faith. First, the only realistic purpose behind acquiring general-electric.com would be to create a likelihood of consumer confusion that ultimately diverts Internet users seeking the General Electric Co. web site.

"24. Second, the most reasonable conclusion is that the facts support the ‘intent to sell’ requirement of 4(b)(i), because Mr. Bakhit undoubtedly sees the enormous value to General Electric Co. of avoiding consumer confusion of general-electric.com with the GENERAL ELECTRIC Mark. He clearly understands that the greatest value of general-electric.com would be in selling it to General Electric Co., which is particularly evident because the web site posted at general-electric.com announces blatantly to the world in large, bold and italicized red type, ‘Domain For Sale’ …

"25. Furthermore, by posting ‘Domain For Sale. This Could Be Your Home Page’ on the general-electric.com web site, Mr. Bakhit not only acquired but also ‘is using’ the domain name in bad faith. In fact, even a completely dormant domain name can satisfy the § 4(b) ‘use’ requirement…

"26. For the above reasons, there is no doubt that general-electric.com was acquired and is being used in bad faith." (Complaint)

Complainant requests that the Panel ask the Registrar to transfer the domain name

"general-electric.com" from Respondent to it (id., para. 27).

B. Respondent

Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion 1. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO. There is ample evidence in the form of air courier receipts and confirmations of the sending of e-mail that Respondent was notified of the Complaint and commencement of the proceedings (see Procedural History, supra).

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, para. 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainant’s undisputed representations (id., para. 14(b)).

Complainant is the holder of multiple trademark registrations regarding various classes of products for "General Electric" in the United States and is using that mark in commerce (see Factual Background, supra). Complainant’s registration of the trademark on the Principal Register at the PTO establishes a presumption of validity of the mark in U.S. law 2. The Panel determines that Complainant has rights in the trademark "General Electric". Based on the December 25, 1934, date of Complainant’s registration of the trademark "General Electric" (the earliest of those submitted in this proceeding by Complainant), and without prejudice to whether Complainant may hold earlier-arising rights in the mark, the Panel determines that Complainant’s rights in the trademark arose prior to Respondent’s registration, on March 9, 2000, of the disputed domain name "general-electric.com" 3.

Respondent has registered the domain name "general-electric.com". This name is identical to Complainant’s trademark "General Electric", except that (1) the domain name adds a hyphen between the words "General" and "Electric", (2) the domain name adds the generic top-level domain name ".com", and (3) the domain name employs lower case letters, while the trademark is used with initial capital letters.

Insofar as domain names are not case sensitive, and the use of hyphens between terms is common practice among domain name registrants, the Panel concludes that use of the lower case letter format in "general-electric.com", and the addition of the hyphen between the words "General" and "Electric" to form that name, are differences without legal significance from the standpoint of comparing "general-electric.com" to "General Electric" 4. Similarly, the addition of the generic top-level domain (gTLD) name ".com" is likewise without legal significance since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific service provider as a source of goods or services 5.

For purposes of this proceeding, it is unnecessary to decide whether, in light of these factors, Respondent’s domain name is "identical" to Complainant’s trademark, since Respondent’s domain name "general-electric.com", is without doubt confusingly similar to Complainant’s trademark "General Electric".

Complainant has met the burden of proving that Respondent is the registrant of a domain name that is identical or confusingly similar to a trademark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.

There is no evidence on the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain name "general-electric.com", other than that it has registered this domain name and has used it in a manner hereafter determined to be in bad faith. If mere registration of the domain name was sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration. Construing the Policy so as to avoid an illogical result, the Panel concludes that mere registration does not establish rights or legitimate interests in the disputed domain name so as to avoid the application of paragraph 4(a)(ii) of the Policy. Similarly, bad faith registration and use of a domain name does not establish rights or legitimate interests in the name so as to avoid a determination of the absence of rights or legitimate interests under paragraph 4(a)(ii) of the Policy.

The Panel determines that Respondent has no rights or legitimate interests in the disputed domain name. Thus, the Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.

The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are that the domain name has been registered or acquired by a respondent "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent’s] documented out-of-pocket costs directly related to the domain name" (Id., para. 4(b)(i)).

Respondent has offered the disputed domain name for sale on its website. In an earlier administrative proceeding, this sole panelist considered a similar offer of sale made to the public at large 6. This sole panelist first observed that an offer for sale to the public at large was not the subject of the express language of paragraph 4(b)(i) of the Policy, since that paragraph expressly refers to offers to the complainant or its competitor. However, this sole panelist said:

"This does not, however, end our inquiry regarding the element of bad faith, since the Policy indicates that its listing of bad faith factors is without limitation. Thus we must still ask whether a general offer for sale in the circumstances of this case constitutes bad faith use of the domain name.

"The value which Respondent seeks to secure from sale of the domain name is based on the underlying value of Complainant’s trademark. This value is grounded in the right of Complainant to use its mark to identify itself as a source of goods or services. Respondent has failed to establish any legitimate domain name-related use for Complainant’s trademark, in a context in which such legitimization might be possible. The Respondent having failed to present any such justification, the Panel may reasonably infer that Respondent neither intended to make nor has made any legitimate use of Complainant’s trademark in connection with the … domain name.

"… [Respondent] has made no use of the domain name other than to offer it for sale at a price that is likely to substantially exceed its out-of-pocket costs of registration, and the price that the domain name commands would largely be based on the trademark of the Complainant. Although a supplemental, as opposed to competitive, user of the domain name might be willing to pay the price sought by Respondent, there is no reason based on the record to award this price to Respondent. The Respondent was the first-to-register, and in circumstances of legitimate registration and use this may secure its right to the domain name. However, because 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." 7

Similarly in the instant proceeding, Respondent has sought to profit from the mere registration as a domain name of a well-known trademark. Its use to direct Internet users to a website offering it for sale merely constitutes advertisement of a bad faith offer. There is no evidence on the record of this proceeding that persuades the Panel that Respondent had a purpose for registering the disputed domain name other than for the purpose of selling it for a price in excess of its out-of-pocket costs directly related to the name. The Panel determines such registration and use to be in bad faith.

The Panel determines that Respondent has registered and used the domain name

"general-electric.com" in bad faith within the meaning of paragraph 4(b)(i) of the Policy. Complainant has thus established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.

The Panel will therefore request the registrar to transfer the domain name "general-electric.com" to Complainant.

 

7. Decision

Based on its finding that the Respondent, John Bakhit, has engaged in abusive registration of the domain name "general-electric.com" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name "general-electric.com" be transferred to the Complainant, General Electric Company.

 


 

Frederick M. Abbott
Sole Panelist

Dated: June 22, 2000


Footnotes

1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.

2. 2.15 USCS § 1057(b). See, e.g., Avery Dennison v. Sumpton (9th Cir. 1999), 189 F.3d 868.

3. Respondent apparently acquired the disputed domain name from a prior registrant. There is no evidence on the record of this proceeding as to when the prior registrant may have registered the name.

4. See Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1055 (9th Cir. 1999).

5. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498, (2d Cir. 2000), citing Brookfield, id. For purposes of its decision, the Panel need not address whether ".com" may be capable of acquiring secondary meaning in another context.

6. ETS v. TOEFL, supra note 1.

7. Id.

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0386.html

 

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