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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
General Electric Company v. FORDDIRECT.COM, INC.
Case No. D2000-0394
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 FORDDIRECT.COM, INC., with place of business in Fort Lauderdale, Florida, USA.
2. The Domain Name(s) and Registrar(s)
The disputed domain names are "gecapitaldirect.com" and "gecaldirect.com".
The registrar of the disputed domain names 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 by courier mail received in hardcopy by the WIPO Arbitration and Mediation Center ("WIPO") on May 8, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On May 10, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc. On May 12, 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. Notification was also transmitted by the same methods 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, telefax 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 service mark registrations on the Principal Register at the USPTO for the letter and word combination "GE CAPITAL" (Registration No. 1679637, dated March 17, 1992, covering, inter alia, consumer and commercial credit services) and for the letters "GECAL" (Registration No. 1993420, dated August 13, 1996, covering automobile leasing). The "GECAL" mark is registered in the name of Complainant’s subsidiary, General Electric Capital (Complaint, para. V and Exhibit C). These registrations are valid and subsisting. The GE CAPITAL mark has been used in commerce since at least 1992 (based on the foregoing registration), and the GECAL mark has been used in commerce since at least 1996 (based on the foregoing registration). Complainant’s marks continue to be used in commerce.
Network Solutions’ WHOIS database query response (Complaint, Exhibit A) indicates that "FORDDIRECT.COM, INC.", with Administrative Contact at "FORDDIRECT.COM, INC.", is registrant of the domain names "GECAPITALDIRECT.COM" and "GECALDIRECT.COM". The records of these registrations were created on September 14, 1999, and October 22, 1999, respectively. These records were last updated on September 14, 1999, and October 22, 1999, respectively (id.).
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), many of which are identical or confusingly similar to trademarks or service marks held by third parties. Respondent’s registrations include "amazondirect.com", "lycosdirect.com", "ticketmasterdirect.com", "janusfunddirect.com" and "samsclubdirect.com".
There is no evidence on the record of this proceeding that Respondent has used the disputed domain names in connection with active websites.
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
Complainant indicates that it is the holder of the registered service marks "GE CAPITAL" and "GECAL", and that such registrations are prima facie evidence of the validity of the marks (Complaint, para. V) (see Factual Background, supra).
Complainant states that it " has invested substantial sums in advertising, marketing, and promotions under its GE CAPITAL and GECAL marks and sold many millions of dollars worth of products and services under those marks. As a result, the strong and distinctive GE CAPITAL and GECAL marks have become famous and well-known." (Complaint, para. V)
"Complainant’s first burden under the Policy is to show that Respondent has registered a domain name that is identical or confusingly similar to Complainant’s trademarks. Respondent registered the domain names www.gecapitaldirect.com on or around September 14, 1999, and www.gecaldirect.com on or around October 22, 1999, but no web site was ever erected at those addresses. In light of the foregoing, there can be no dispute that Respondent has registered domain names that are identical to Complainant’s registered trademarks, and therefore, Complainant has satisfied its first required burden.
"Respondent has no trademark or other intellectual property rights in the domain names. Respondent has no record of prior use of the GE CAPITAL or GECAL names in connection with the bona fide offering of goods or services, nor is there any indicia of demonstrable plans to make use of the domain name for a bona fide offering of goods or services…. Nor is Complainant aware of any state or federal trademark registration owned by Respondent. Finally, Respondent has not used the GE CAPITAL or GECAL names in connection with any web site or other activity where bona fide noncommercial or fair use of the GE CAPITAL or GECAL marks is made. As such, Respondent cannot be deemed to have any legitimate interests or rights in the domain names.
"Respondent’s registration of the domain names www.gecapitaldirect.com and www.gecaldirect.com is awash with evidence of bad faith intent. Indeed, Respondent’s apparent business model, the hoarding or warehousing of domain names that contain famous marks, is, by itself, sufficient indicia of Respondent’s bad faith….
"Respondent has registered well over 50 domain names most of which it has no prior rights to and which it certainly knew to be either identical or confusingly similar to registered famous names and marks of others, including www.lycosdirect.com, www.ticketmasterdirect.com, www.etoysdirect.com, www.janusfunddirect.com, and www.samsclubdirect.com. And, as with the domain names at issue here, there is no evidence to suggest that Respondent’s registration of these other domain names was for a bona fide commercial or noncommercial purpose….
"Respondent’s registrations prevent Complainant from using the www.gecapitaldirect.com and www.gecaldirect.com domain names corresponding to Complainant’s registered trademarks. Respondent had constructive notice of Complainant’s registrations as a matter of United States trademark law. 15 U.S.C. ' 1072. As a result, Respondent cannot rely on lack of knowledge as a defense to its conduct; it knew or should have known that its registration of www.gecapitaldirect.com and www.gecaldirect.com prevented Complainant from using its registered trademarks in corresponding domain names. The circumstances therefore show that Respondent is engaged in a pattern of conduct involving the speculative registration of domain names for profit.
"This evidence of bad faith on Respondent’s part combined with its lack of legitimate rights or interests in the GE CAPITAL or GECAL names render its registration of domain names, www.gecapitaldirect.com and www.gecaldirect.com, that are identical to Complainant’s famous federally registered trademarks an infringement of Complainant’s trademark rights and a violation of the Policy. Consequently, Complainant maintains that Respondent’s registration and use of the domain names should be held to be in bad faith." (Complaint, para. V).
Complainant requests that the Panel ask the Registrar to transfer the domain names "gecapitaldirect.com" and "gecaldirect.com" from Respondent to it (id., para. VI).
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 and telefax, 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 service mark registrations for "GE CAPITAL" and "GECAL" in the United States and is using those marks in commerce (see Factual Background, supra). Complainant’s registration of the service marks on the Principal Register at the PTO establishes a presumption of validity of the marks in U.S. law. 2
The Panel determines that Complainant has rights in the service marks "GE CAPITAL" and "GECAL". Based on the March 17, 1992, and August 13, 1996, dates of Complainant’s registration respectively of the service marks "GE CAPITAL" and "GECAL", and without prejudice to whether Complainant may hold earlier-arising rights in the marks, the Panel determines that Complainant’s rights in the service marks arose prior to Respondent’s registrations, on September 14, 1999, and October 22, 1999, respectively, of the disputed domain names "gecapitaldirect.com" and "gecaldirect.com".
Respondent has registered the domain names "gecapitaldirect.com" and "gecaldirect.com". These names are identical to Complainant’s service marks "GE CAPITAL" and "GECAL", except that (1) "gecapitaldirect.com" eliminates the space between "GE" and "Capital", (2) the domain names each add the generic top-level domain name ".com", (3) the domain names each employ lower case letters, while the service marks are used with capital letters ("GECAL") and capital letters combined with initial capital letters ("GE Capital"), and (4) each domain name adds the word "direct" following Complainant’s mark, without a space between terms.
Insofar as domain names are not case sensitive, and the elimination of the spacing between words in domain names is dictated by technological factors and common practice among domain name registrants, the Panel concludes that use of the lower case letter format, and elimination of the space between the words "GE" and "Capital" to form "gecapitaldirect.com", are differences without legal significance from the standpoint of comparing "gecapitaldirect.com" and "gecaldirect.com" to "GE Capital" and "GECAL", respectively 3. 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 4.
Each of the disputed domain names adds the word "direct" to Complainant’s service mark. In each case there is no space between the mark and the added word. The absence of a space is dictated by technological factors and customary practice among domain name registrants and users. Complainant has rights in each of the marks that precede the words "direct". Respondent does not, by adding a common descriptive term or adjective following each word or letter mark, create a new or different mark in which it has rights or legitimate interests, nor does it alter the underlying mark held by Complainant. For purposes of determining whether the disputed domain names are identical or confusingly similar to Complainant’s service marks, the Panel disregards the descriptive term that Respondent has tacked on to the marks 5. The panel determines that "gecapitaldirect.com " and "GE Capital" are confusingly similar in the sense of paragraph 4(a)(i) of the Policy. The panel determines that "gecaldirect.com " and "GECAL" are confusingly similar in the sense of paragraph 4(a)(i) of the Policy.
Complainant has met the burden of proving that Respondent is the registrant of domain names that are identical or confusingly similar to service marks 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 "gecapitaldirect.com" and "gecaldirect.com", other than that it has registered these domain names and has used them in a manner hereafter determined to be in bad faith. 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 the disputed domain names so as to avoid the application of paragraph 4(a)(ii) of the Policy. Similarly, bad faith registration and use of domain names does not establish rights or legitimate interests in the names.
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 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 [the respondent has] engaged in a pattern of such conduct" (id., para. 4(b)(ii)).
Respondent has registered the domain names "gecapitaldirect.com" and "gecaldirect.com". As a consequence, Complainant is unable to reflect its trademarks "GE Capital" and "GECAL" in corresponding domain names 6. 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.
Complainant has provided evidence that Respondent has registered a substantial number of other domain names that are confusingly similar to trademarks held by third parties. For example, "amazondirect.com" registered by Respondent 7 is confusingly similar to the trademark "amazon.com" registered by Amazon.com, Inc 8. The domain name "lycosdirect.com" is registered by Respondent 9. "Lycos" is the registered trademark of Carnegie Mellon University 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 "gecapitaldirect.com" and "gecaldirect.com" 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 "gecapitaldirect.com" and "gecaldirect.com" to the Complainant.
Based on its finding that the Respondent, FORDDIRECT.COM, has engaged in abusive registration of the domain names "gecapitaldirect.com" and "gecaldirect.com" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain names "gecapitaldirect.com" and "gecaldirect.com" be transferred to the Complainant, General Electric Company.
Frederick M. Abbott
Dated: June 22, 2000
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. See Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1055 (9th Cir. 1999).
4. 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.
5. This process of analysis is different from that which would be used if Respondent had altered the words or letters that comprise Complainant’s marks. Under different circumstances, a multifactored analysis involving the visual and aural impression of the different words or letters on a consumer would be more appropriate. Compare this sole panelist’s decision in Aurora Foods Inc. v. David Paul Jaros, Case No. D2000-0274, decided June 7, 2000.
6. Respondent’s registration of domain names corresponding to Complainants’ marks, 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 is not registration and use in bad faith solely because it prevents those third parties from registering and using the names.
7. Factual Background, supra.
8. See http://www.amazon.com (site visited by Panel, June 22, 2000).
9. Factual Background, supra.
10. See http://www.lycos.com (site visited by Panel, June 22, 2000).