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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

General Electric Company v. Charles Kasinga

Case No. D2000-0389

 

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 Charles Kasinga, with an address in Huntington Beach, California, USA.

 

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

The disputed domain names are "generalelectric.net" and "general-electric.net".

The registrar of the disputed domain names is Network Solutions, Inc., with a 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 5, 2000, and by courier mail received by WIPO on May 8, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. Complainant requested the appointment of a three-member Administrative Panel. On May 8, 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, telefax and courier mail. According to WIPO’s transmission report, telefax transmission was successful. Notification was also transmitted via e-mail, telefax 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 via e-mail and courier mail.

d) On June 30, 2000, WIPO notified Complainant and Respondent of the appointment of a three-member Administrative Panel (the "Panel") in this case. Each member of the Panel furnished WIPO an executed Statement of Acceptance and Declaration of Impartiality and Independence. Mr. Lackert was selected by WIPO from a list of candidates furnished by the Complainant. Mr. Page was selected by WIPO from its roster of neutral panelists. The Presiding Panelist was also selected by WIPO from a roster of neutral panelists.

e) On June 30,WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by July 14, 2000. Members of the Panel received an electronic file in this matter via e-mail and a hard copy file via courier mail from WIPO.

f) On July 11 and 12, 2000, the three members of the Panel deliberated via e-mail and reached a unanimous decision in this matter.

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. 867,114, dated March 25, 1969, covering, inter alia, materials for electricity transmission; No. 320,304, dated December 25, 1934, covering, inter alia, dynamo electric machines; 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. 14 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. 13).

Network Solutions’ WHOIS database query response (Complaint, Exhibit 1) indicates that "Kasinga, Charles," with Administrative Contact at "Kasinga, Charles", is registrant of the domain names "GENERALELECTRIC.NET" and "GENERAL-ELECTRIC.NET". The record of each registration was created on February 6, 1998. The record for "GENERALELECTRIC.NET" was last updated on February 6, 1998. The record for "GENERAL-ELECTRIC.NET" and was last updated on February 10, 2000 (id.).

As of April 26, 2000, the websites identified by the domain names "generalelectric.net" and "general-electric.net" displayed standard form Network Solutions’ "under construction" web pages.

The results of a Network Solutions’ WHOIS database query indicate that Respondent has registered at least fifty (50) domain names (search aborted after fifty registrations were listed), several of which are identical or confusingly similar to trademarks or service marks held by third parties. Respondent’s registrations include "cokecola.net" "coke-cola.net", "magickingdom.net" and "magic-kingdom.net".

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. 13).

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. 14)

Complainant provides evidence of its trademark registrations (id., paras. 14-15 and Exhibit 4) (see Factual Background, supra).

Complainant states:

"16. On February 6, 1998, Respondent, Charles Kasinga, registered with NSI the domain names generalelectric.net and general-electric.net.…. These cybersquatting registrations are an obvious bad faith attempt to capitalize on the GENERAL ELECTRIC Mark. Specifically, by simply replacing the ‘.com’ with a ‘.net’ in each of the domain names, Mr. Kasinga intends to divert Internet traffic seeking information about General Electric Co. The web sites at generalelectric.net and general-electric.net display a generic graphic indicating that the sites are under construction…. Therefore, the only real value of such domain names would be for Mr. Kasinga eventually either: (i) to post his own web site at the domain names with the intent of improperly attracting Internet users seeking information about General Electric Co.; (ii) to sell the domain names to another entity that has the same intent (such cybersquatting domain names containing famous trademarks such as the GENERAL ELECTRIC Mark are often used to divert traffic to pornography-related sites); or (iii) to sell the domain names to General Electric Co. for a profit.

"17. Mr. Kasinga’s bad faith intent is highlighted by the fact that he is also a serial cybersquatter. He has registered at least 50 other domain names, a number of which, like those at issue here, contain famous trademarks already used by their owners in domain names, but which differ only by having a ‘.net’ ending instead of a ‘.com’ ending. For example, Mr. Kasinga has registered the domain names cokecola.net, coke-cola.net, magickingdom.net and magic-kingdom.net….

"18. On or about February 4, 2000, General Electric Co. sent a letter to Mr. Kasinga demanding that he cease and desist use of the domain name generalelectric.net…. To date, Mr. Kasinga has failed to respond to this letter.

"19. The above facts decisively demonstrate that ownership of generalelectric.net and general-electric.net must be transferred to General Electric Co. Specifically, as explained below, the …. factors required by § 4(a) of the ICANN Domain Name Dispute Resolution Policy (‘ICANN Policy’) have been satisfied …

"20. It is indisputable that generalelectric.net and general-electric.net are identical or confusingly similar to General Electric Co.’s trademarks. The domain names contain the GENERAL ELECTRIC Mark and simply replace a ‘.com’ ending with a ‘.net’ ending. They are therefore clearly intended to confuse consumers searching for information related to General Electric Co. Such likelihood of consumer confusion has led numerous United States Federal courts to transfer ownership, or enjoin the use, of domain names that are identical or are confusingly similar to registered trademarks….

"21. Accordingly, under the ICANN Policy, generalelectric.net and general-electric.net constitute domain names that are identical or confusingly similar to the GENERAL ELECTRIC Mark.

"22. Mr. Kasinga has no rights or legitimate interests whatsoever with respect to generalelectric.net and general-electric.net. His name has no resemblance whatsoever to ‘General Electric.’ Furthermore, General Electric Co. has never granted Mr. Kasinga 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. Kasinga is not using the domain names to post any legitimate web site, but rather to post an ‘under construction’ site…

"23. To overcome the above evidence and show the requisite legitimate rights or interests in the domain name under § 4(c) of the ICANN Policy….

"24. Mr. Kasinga cannot prove any of the above legitimate interests. First, as mentioned previously, there is currently no web site posted at either generalelectric.net or general-electric.net, let alone one in connection with a bona fide offering of goods or services. Furthermore, Mr. Kasinga was put on notice of General Electric’s rights by the February 4, 2000 cease-and-desist letter. If any evidence were to be produced that he intends to post a legitimate web site using these domain names in the future, such evidence would be irrelevant. See ICANN Policy, § 4(c)(i). Second, Mr. Kasinga has not been commonly known by any name that even remotely resembles the domain names or the GENERAL ELECTRIC Mark. Id. at § 4(c)(ii). Third, he is not making a legitimate non-commercial or fair use of the domain names. Id. at § 4(c)(iii).

"25. For these reasons, Mr. Kasinga has no legitimate interests in either generalelectric.net or general-electric.net.

"26. 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.’ Therefore, General Electric Co. need show only one….

"27. The facts of this case clearly show that Mr. Kasinga has registered the domain names at issue in bad faith. First, the only realistic purpose behind registering generalelectric.net and general-electric.net would be to create a likelihood of consumer confusion that ultimately in the diversion of Internet traffic from General Electric Co.’s web site to another site anytime an Internet user mistakenly types in .net rather than .com. See ICANN Policy § 4(b)(iv).

"28. Second, Mr. Kasinga is indisputably a serial cybersquatter who has engaged in a pattern of bad faith registrations…. he has registered over 50 other domain names, a number of which are conceptually identical to those at issue, such as cokecola.net, coke-cola.net, magickingdom.net. In short, he is trying to trade on three of the most famous and valuable marks on Earth—COCA-COLA, DISNEY and GENERAL ELECTRIC.

"29. Third, the most reasonable conclusion is that these facts also satisfy the ‘intent to sell’ requirement of § 4(b)(i), because Mr. Kasinga undoubtedly sees the enormous value to General Electric Co. of avoiding consumer confusion of generalelectric.net and general-electric.net with the GENERAL ELECTRIC Mark. He clearly understands that the greatest value of generalelectric.net and general-electric.net would be in selling them to General Electric Co., which is particularly evident as the cybersquatter is stockpiling other valuable famous trademarks in the .net top-level domain. This not very subtle form of extortion naturally is a part of a cybersquatter’s general strategy, as such would create profit either by using the domain name to divert traffic, or by selling the domain name to the trademark owner under the threat of such diversion.

"30. Furthermore, Mr. Kasinga’s registering generalelectric.net and general-electric.net also constitutes ‘using’ these names in bad faith. In fact, even completely dormant domain names such as generalelectric.net and general-electric.net can satisfy the § 4(b) ‘use’ requirement.…

"31. For the above reasons, there is no doubt that generalelectric.net and general-electric.net were registered and are being used in bad faith." (Id.)

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

"generalelectric.net" and "general-electric.net" from Respondent to it (id., para. 32).

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. 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 fax and 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. 15(a)).

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 1. 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 February 26, 1998, of the disputed domain names "generalelectric.net" and "general-electric.net".

Respondent has registered the domain names "generalelectric.net" and "general-electric.net". These name are identical to Complainant’s trademark "General Electric", except that: (1) the domain name "generalelectric.net" eliminates the space between "General" and "Electric"; (2) the domain name "general-electric.net" adds a hyphen between the words "General" and "Electric"; (3) the domain names each add the generic top-level domain name ".net", and (4) the domain names each employ lower case letters, while the trademark is generally used with initial capital letters.

Insofar as domain names are not case sensitive, and insofar the elimination of spacing between terms and the use of hyphens between terms is dictated by technical factors and is common practice among domain name registrants, the Panel concludes that use of the lower case letter format in "generalelectric.net" and "general-electric.net", the elimination of the space between "General" and "Electric" to form "generalelectric.net", and the addition of the hyphen between the terms "General" and "Electric" to form "general-electric.net", are differences without legal significance from the standpoint of comparing "generalelectric.net" and "general-electric.net" to "General Electric" 2 . Similarly, the addition of the generic top-level domain (gTLD) name ".net" is likewise without legal significance since use of a gTLD is required of domain name registrants, ".net" is one of only several such gTLDs, and ".net" does not serve to identify a specific enterprise as a source of goods or services 3.

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

Complainant has met the burden of proving that Respondent is the registrant of domain names that are 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 names "generalelectric.net" and "general-electric.net" other than that it has registered the domain names, and has used them in connection with the posting of "under construction" web pages. If mere registration of domain names 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 domain names so as to avoid the application of paragraph 4(a)(ii) of the Policy.

Respondent has furnished no evidence of any legitimate use or preparation to use the disputed domain names. There is no evidence on the record of this proceeding of any such legitimate use or preparation to use by Respondent, other than Respondent’s posting of a Network Solutions’ standard format "under construction" page at the addresses identified by the disputed domain names. The Panel does not regard this limited use as of legal significance for the purpose of deciding this proceeding. Absent evidence to the contrary, the posting of a standard format "under construction" web page is effectively no more than a part of the registration process, and for the purpose of this proceeding the Panel treats it as such 4. Registration, standing alone, does not establish rights or legitimate interests in a domain name in the sense of paragraph 4(a)(ii) of the Policy.

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

The third element that must be proven by Complainant to establish Respondent’s abusive domain name registration is that Respondent has registered and is using the disputed domain names in bad faith. The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Most relevant to the current proceedings: a respondent has registered 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 [the respondent has] engaged in a pattern of such conduct" (id., para. 4(b)(ii)).

Respondent has registered the domain names "generalelectric.net" and "general-electric.net". As a consequence, Complainant is unable to reflect its trademark "General Electric" in corresponding domain names 5. Absent any contrary indication from Respondent, the Panel infers that Respondent intended the logical consequences of its acts, and that it registered the disputed domain names "in order to prevent" Complainant from using its trademarks in corresponding domain names 6.

Complainant has provided evidence that Respondent has registered several other domain names that are confusingly similar to trademarks held by third parties. For example, "cokecola.net" and "coke-cola.net" registered by Respondent 7 are confusingly similar to the trademark "coca cola" registered by the Coca Cola Company 8. The domain names "magickingdom.net" and "magic-kingdom.net" are registered by Respondent 9. "Magic Kingdom" is a registered trademark of the Walt Disney Company 10.

The Panel is satisfied that Respondent has engaged in a pattern of conduct intended to prevent trademark holders from using their marks in corresponding domain names.

The Panel determines that Respondent has registered and used the domain names "generalelectric.net" and "general-electric.net" in bad faith within the meaning of paragraph 4(b)(ii) 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 direct the registrar to transfer the domain names "generalelectric.net" and "general-electric.net" to the Complainant.

 

7. Decision

Based on its finding that the Respondent, Charles Kasinga, has engaged in abusive registration of the domain names "generalelectric.net" and "general-electric.net" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain names "generalelectric.net" and "general-electric.net" be transferred to the Complainant, General Electric Company.

 


 

Frederick M. Abbott
Presiding Panelist

Clark W. Lackert Richard W. Page
Panelists

Dated: July 14, 2000


 

Footnotes:

1. 15 USCS § 1057(b). See, e.g., Avery Dennison v. Sumpton (9th Cir. 1999), 189 F.3d 868.

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

3. 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 ".net" may be capable of acquiring secondary meaning in another context.

4. This is by no means to suggest that the posting of an "under construction" web page is indicative of a wrongful intention, either by Respondent or by any other party that may choose to post one. In the context of this proceeding, it is an act without legal significance.

5. Respondent’s registration of domain names corresponding to Complainants’ mark, in connection with similar registrations corresponding to the marks of others, is indicative of an intent to profit from the sale of the domain names, or to use the names to divert Internet traffic to websites unaffiliated with Complainant. The "warehousing" of domain names corresponding to the marks of third parties does not constitute bad faith solely because it prevents those third parties from registering the names.

6. The Panel recognizes that Complainant has successfully registered the domain name "generalelectric.com." This does not alter the fact that Complainant is precluded by Respondent’s conduct from registering other domain names directly corresponding to its trademark.

7. Factual Background, supra.

8. See http://www.thecocacolacompany.com (site visited by presiding panelist, June 22, 2000).

9. Factual Background, supra.

10. See http://asp.disney.go.com/disneyworld (site visited by presiding panelist, July 8, 2000).

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0389.html

 

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