WIPO Arbitration
and Mediation Center
ADMINISTRATIVE PANEL DECISION
General Electric Company v. Japan, Inc.
Case No. D2001-0410
1. The Parties
Complainant is General Electric Company ("GE"). Complainant’s address
is 3135 Easton Turnpike, Fairfield, CT 06431, USA. Respondent is Japan,
Inc. ("Japan, Inc.").
Respondent’s address is 495 Ashford Avenue, Ardsley, NY 10502, USA.
2. The Domain Name and Registrar
This dispute concerns the following domain name: <japan-ge.com> ("Domain
Name"). The registrar with which the domain name is registered is Network
Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complaint
by e-mail and in hard copy on March 22, and March 26, 2001, respectively. The
Center verified that the Complaint satisfies the formal requirements of the
ICANN 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). Complainant made the required payment to the Center. The formal date
of the commencement of this administrative proceeding is March 28, 2001.
Issuance of Complaint
The Complaint indicates that NSI WHOIS ("NSI") records for the Domain
Name lists Respondent Japan, Inc. at the following address: 495 Ashford Avenue,
Ardsley, NY 10502, USA. Complainant sent a copy of the Complaint by e-mail
to Respondent. Japan, Inc. is the Administrative and Billing contact for the
Domain Name.
Confirmation of Registration Details
On March 27, 2001, the Center transmitted, via e-mail to NSI, a request for
registrar verification in connection with this case. On March 28, 2001, NSI
transmitted by e-mail to the Center, their verification response confirming
the domain name <japan-ge.com> is registered through NSI and that Japan
Inc. is the Registrant and the Administrative Contact.
Notification of Complaint
On March 28, 2001, the Center transmitted to the Respondent, Notification of
Complaint and Commencement of the Administrative Proceeding. The Center advised
that the Response was due by April 16, 2001.
Filing of Response
On April 17, 2000, Respondent filed a Response by e-mail.
Supplemental Submissions
Complainant submitted to the Center a Reply to Respondent’s Response, dated
May 10, 2001, and Respondent submitted an Objection to that Reply,
dated May 11, 2001. The Center furnished to the Panel electronic files
of these supplemental submissions.
Constitution of Administrative Panel
On May 18, 2001, the Center notified the parties via e-mail that the Administrative
Panel would consist of Professor Frederick M. Abbott and M. Scott Donahey and
Mr. David Everett Wagoner as the Presiding Panelist.
Compliance with the formalities of the Policy and the Rules
Upon review of the file, the Panel concludes that the Center has fully complied
with the formalities of the Policy and Rules, that Respondent was given adequate
notice of this proceeding, and that Respondent has been accorded due process.
4. Factual Background
(1) Since long prior to Respondent’s registration of the domain name, Complainant
GE has continuously owned and used the name and mark "GE" and a stylized
GE monogram logo (collectively, the "GE Marks") in connection with
GE’s products and services. A large number of Complainant’s GE Marks is registered
with government authorities in the United States. A Representative listing of
the GE Marks that Complainant has registered with the United States Patent and
Trademark Office is set forth in paragraph 11(a) of the Complaint.
(2) GE has spent billions of dollars in advertising and promoting the GE Marks
in connection with its products and services throughout the United States, and
GE has sold hundreds of billions of dollars worth of these products and services
under and in connection with the GE Marks throughout the United States.
(3) By virtue of GE’s long use, widespread advertising and enormous sales,
the GE Marks have become well-recognized and famous in the U.S.
(4) The Complainant owns and has registered the domain name <ge.com>
and it maintains an active web site at <ge.com>. Complainant also owns
and has registered the domain name <gejapan.com> and it maintains an active
web site at <gejapan.com>.
(5) In addition, Complainant owns and operates numerous domain names using
"GE" as part of their name, in combination with a geographic name,
such as <ge-china.com>, <ge-hongkong.com>, <ge-asia.com>,
<ge-australia.com>, <ge-israel.com>, <ge-romania.com>, and
many others, some of which are maintained as active websites, such as <ge-china.com>.
(6) Respondent is the business of selling gas turbines, components, spare parts,
and related equipment, some of which were originally manufactured by Complainant
and others by Complainant’s competitors. Respondent registered the domain name
for use in connection with these sales activities.
(7) The website operated at <japan-ge.com> states as follows:
Japan Inc. is an independent company dealing in the purchase and sale of Industrial
Gas Turbines, Generators, Process and Pipeline Compressors.
Our services include major component and parts support.
We hold an extensive inventory of General Electric, Westinghouse, Rolls-Royce
& Ruston turbines, components and spare parts.
Please contact us both for your needs, and disposal of your excess equipment.
(8) On or about March 21, 2000, Counsel for the Complainant, Patrick Murphy,
sent a letter to Respondent by certified mail, demanding that it cease and desist
its use of the domain name. On or about April 14, 2000, Respondent responded
to Mr. Murphy, rejecting Complainant’s demand for reasons reflected in
its response to the complaint in this proceeding.
5. Parties’ Contentions
A. Complaint
The Complaint alleges that the Domain Name is nearly identical and confusingly
similar to the GE Marks, that Respondent registered the Domain Name in bad faith
for the purpose of capitalizing on the famous GE Marks and profiting from the
international and domestic goodwill GE has built up in its famous trademarks
and that Respondent has no rights or legitimate interests in respect of the
Domain Name.
B. The Response
Respondent alleges that the domain name is not identical or confusingly similar
to any trademark held by Complainant, that Respondent has legitimate interests
in respect of the Domain Name since Respondent is using the domain name in connection
with a bona fide offering of goods prior to notice of the dispute and Respondent’s
use is a fair use and that Respondent has neither registered nor used the domain
name in bad faith.
6. Discussion and FindingsAs a preliminary matter, the Panel does not accept the supplemental Reply to
Respondent’s Response submitted by Complainant. The Panel has discretion to
accept supplemental submissions. However, in the present proceeding, Complainant’s
Reply does not address facts asserted by Respondent that Complainant should
not reasonably have been aware of when preparing in its initial submission.
Neither does Complainant’s Reply address legal arguments from Respondent that
Complainant may not have reasonably foreseen. There is insufficient basis for
the Panel to accept Complainant’s supplemental submission.
Paragraph 4(a) of the Policy directs that Complainant must prove, with respect
to the domain name in issue, each of the following:
(1) The domain name in issue is identical or confusingly similar to the Complainant’s
trademarks or service marks; and,
(2) The 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(b) of the Policy sets out four illustrative circumstances, any
one of which for purposes of Paragraph 4(a)(iii), shall be evidence of the registration
and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any
one of which, if proved, shall demonstrate Respondent’s rights or legitimate
interests to the domain name for purposes of Paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar Domain Name
Complainant has proved that Respondent’s Domain Name is confusingly similar
to trademarks or service marks in which GE has rights.
The addition of the word "Japan" to "GE" has no trademark
significance and does not eliminate a likelihood of confusion with Complainant’s
trademarks or service marks. For example, in NIKE, Inc. v. Jaeik Jung
(WIPO Case No. D2000-1471; decided December
30, 2000), the Panel, in assessing the registration of the domain name <nike-europe.com>
(and other variants thereof), stated as follows:
All of the additions to the trade marked word are for the geographical suffix
or prefix "europe" or its close variant ("euro"). Geographical additions do
not alter the underlying meaning of a domain name, so as to avoid confusing
similarity. This has been held in many UDRP cases (citing cases).
Likewise, in Inter-IKEA v Polanski (WIPO
Case No. D2000-1614; decided January 22, 2001), in connection with the domain
name<ikeausa.com>, the panel stated:
Given the fame of the IKEA mark and also the activities of the Complainant
in Poland, including a furnishing outlet in Krakow, it is inconceivable that
the Respondent was unaware of the Complainant before registering <ikeausa.com>.
Furthermore, it can be considered to be common knowledge of Internet users that
the abbreviation "USA" stands for "The United States of America". It can therefore
reasonably be excluded beyond any doubt that the Respondent created a fantasy
name, which happened to consist of the word ‘ikea’ and the letters ‘usa.’ (emphasis
added).
Respondent is using the Domain Name in connection with sale of GE turbines,
components and spare parts, as well as in connection with the sale of equipment
manufactured by GE’s competitors. By creating a Domain Name that uses the mark
GE together with Respondent’s name, Respondent is improperly confusing consumers
into believing that they have reached GE’s website for Japan, or -- in the alternative
-- creating a false impression that Respondent is associated or affiliated with
GE.
B. Respondent’s Rights or Legitimate Interests in the Domain Name
In the alternative to asserting that the Domain Name is not confusingly similar
to Complainant’s well-known GE mark, Respondent claims fair use rights in Complainant’s
mark on grounds that it is a reseller of used GE power generation equipment.
As such, Respondent asserts that it is legitimately using the GE mark for purposes
of advertising the availability of properly trademarked goods to the public.
A reseller of trademarked goods that is unaffiliated with or unauthorized by
a trademark holder may well have certain fair use rights regarding the mark,
depending upon the specific context of the use. If resellers were unable to
refer to marks they would not be able to properly identify their resale goods
to the public. There is a substantial body of judicial authority in the United
States and elsewhere that establishes this fair use right, and Respondent has
cited some of that authority to the Panel. (Footnote
1) However, this fair use right is carefully bounded by the requirement
that a reseller not make use of the mark in a way that is likely to confuse
consumers as to an affiliation between the trademark holder and the reseller
(Footnote 2) Courts have generally disallowed the use
by an unaffiliated reseller of another party’s trademark on a sign identifying
a business, unless the signage expressly includes language sufficient to notify
the consumer that the business is not affiliated with or authorized by the trademark
holder. (Footnote 3)
In the instant proceeding:
(1) Respondent registered the Domain Name without the consent or approval of
GE.
(2) Respondent is not commonly known by the Domain Name. Respondent is doing
business in New York State under the name "Japan Inc."
(3) Although "Japan" is Respondent’s name, as of the date of the
filing of this Complaint, Respondent has not filed a trademark application with
the USPTO for "Japan."
(4) The Domain Name is being used to offer GE products for resale. Respondent
has no license or agreement with GE to distribute its products or act on its
behalf or use its trademarks. Respondent’s use of the Domain Name as a principal
identifier of its business on the Internet implies that Respondent is affiliated
with GE or is otherwise acting with the consent of GE. There is nothing in the
Domain Name to suggest in any way that Respondent is independent of GE. Instead,
Respondent has used the GE mark in the Domain Name in a manner directly comparable
with the way that GE uses its mark in domain names identifying its websites.
(5) Respondent’s website identified by the Disputed Domain name (that uses
Complainant’s mark) in fact offers for resale the products of a number of manufacturers
whose products compete with Complainant’s products. Respondent is not in this
sense fairly using Complainant’s mark because it is using the mark to direct
consumers to competing products.
On the basis of the foregoing factors, the Panel finds that Respondent has
no rights or legitimate interests in the Domain Name.
C. Domain Name Registered and Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used
in bad faith.
The Domain Name is designed to imply that there is an affiliation between Respondent
and Complainant or that GE endorses Respondent’s activities even though no such
affiliation or endorsement exists. ICANN panels have addressed such situations
in several instances and have consistency held that it is bad faith to misrepresent
an affiliation with a third party where none exists. In a case with similar
facts, Caterpillar Inc. v. Matthew Quin (WIPO
Case No. D2000-0314; decided June 12, 2000), the panel found for Complainant,
holding:
The second element which the Complainant is required to prove is that the Respondent
has no rights or legitimate interest in respect of the domain names in dispute.
The domain names in dispute suggest some affiliation or connection of the Respondent
with the Complainant when there is no such affiliation or connection. ... Companies
or individuals seeking spare parts for Caterpillar equipment would enter the
disputed domain names expecting to contact Caterpillar Inc. or one of its distributors.
In fact, the company or person entering the disputed domain name ends up at
a web page not affiliated or associated with the Complainant. The Respondent
has no rights or legitimate interest in respect of the disputed domain names.
Similarly, in Amway Corp. Inc. v. Business Internet Connection and Rex Mehta
(WIPO Case No. D2000-1118; decided November
26, 2000), the panel held that:
While Mr. Mehta contends that he is an IBO [Independent Business Operator]
of Amway and, thus, authorized to sell Amway goods, Complainant asserts that,
even if such is true, Mr. Mehta is not authorized to use the AMWAY mark in a
domain name. Based on this unrebutted assertion, the Panel concludes that Mr.
Mehta's status as an Amway IBO does not provide him "rights or legitimate interests"
in the domain name.
See also Caterpillar, Inc. v. DES-CATE Sociaded Limitada (NAF 96077;
decided December 26, 2000), (rejecting the right of a registrant to use the
mark of the complainant simply because it was selling parts of the complainant).
Regardless of the nature of Respondent’s business and its dealing with products
of GE, it is unauthorized to use the GE Marks in connection with its business
or imply that there is an affiliation, association, or endorsement of its business
by GE through its use of the Domain Name. Respondent’s Domain Name is likely
to confuse consumers to believe that they have reached a website of GE, given
GE’s extensive number of domain names that include a geographic designation,
such as <ge-china.com> and <ge-asia.com>.
The Panel stresses that independent resellers under appropriate circumstances
have rights to make use of trademarks to properly identify resale goods. There
may be circumstances in which such use would be appropriate in a domain name.
Here, however, the geographical indicator <japan-ge.com> clearly suggests
an affiliation with GE. On the website identified by the Domain Name, Respondent
sells products from various manufacturers. The use of the trademark GE in the
second level domain is not properly descriptive of Respondent's business, and
is not a fair use of Complainant’s mark.
7. Decision
In light of the foregoing, the Panel decides that:
(1) The Domain Name registered by Respondent and at issue here is confusingly
similar to Complainant’s trademarks,
(2) The Respondent has no rights or legitimate interests in respect of the
Domain Name at issue, and
(3) The Domain Name at issue has been registered and is being used in bad faith
by Respondent.
Accordingly, the Panel decides that the Registration of the Domain Name set
forth in paragraph 2 of this Decision shall be transferred to Complainant.
Frederick M. Abbott
Panelist
M. Scott Donahey
Panelist
