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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
General Electric Company v. Basalt Management
Case No. D 2000-0925
1. The Parties
Complainant: General Electric Company
3135 Easton Turnpike
Fairfield, Connecticut 06431
Respondent: Basalt Management
Wapenveld, na 8191 JH
2. The Domain Name(s) and Registrar(s)
Domain Name: "generalelectricsex.com"
Registrar: Network Solutions Inc.
3. Procedural History
The Complaint was received by WIPO by email on August 3, 2000, and in hardcopy form on August 2, 2000. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that "generalelectricsex.com" ("the Domain Name") was registered through Network Solutions Inc. and that Basalt Management is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.
On August 18, 2000, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was September 6, 2000. By letter dated August 24, 2000, the Respondent responded to the Complaint.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision is November 5, 2000.
4. Factual Background
The Complainant is the proprietor of a large number of trade mark registrations around the world (including US and Benelux registrations) for the word mark GENERAL ELECTRIC. The Complainant is also the proprietor of the domain name "generalelectric.com" which connects to its website at "www.generalelectric.com".
On June 6, 2000, the Respondent registered the Domain Name and other domain names such as "cocacolasex.com", "budweisersex.com", "chevroletsex.com.".
On a date prior to June 28, 2000, and subsequently on July 26, 2000, the Complainant visited the site to which the Domain Name is connected and found that it contained hardcore pornography.
On June 28, 2000, the Complainant’s attorneys wrote to the Respondent drawing the Respondent’s attention to the Complainant’s rights in and to the Domain Name and inviting the Respondent to cease and desist use of the Domain Name and cancel the registration.
On June 30, 2000, the Respondent replied to the Complainant by email, an extract of which reads as follows: -
"We were very surprised to learn from you that there apparently exists a brand-name called General Electric. In Europe this name is not commonly known. Our sitename has nothing to do with the company that you represent but points to a very common European verb: electric-sex. As there also expressions as: electric-love or electric-events. The word electric is commonly used to give expression to something fabulous. We point out that the sitename is generalelectricsex and not General Electric sex."
In the same email the Respondent enquired if the Complainant wished to acquire the Domain Name and expressed willingness to consider any offer.
5. Parties’ Contentions
The Complainant contends that by virtue of its long use, widespread advertising and enormous sales, the General Electric marks have become well-recognized and famous, both in the U.S. and overseas, including in The Netherlands, and represent goodwill of extraordinary value. The Complainant further contends that the Domain Name comprises the trade mark GENERAL ELECTRIC and the word "sex" and that by virtue of the similarity between the Domain Name and the trade mark there is an obvious risk of confusion as to source, sponsorship et cetera.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name and points to a number of matters in support of that contention. It has not granted the Respondent any permission to use its trade mark. The Respondent has used other famous trade marks in conjunction with the word "sex" for domain names it has registered (see above). The Respondent’s email quoted above is disingenuous and indicative of the fact that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant contends that the Respondent registered and is using the Domain Names in bad faith. In support the Complainant repeats the matters set out above. It contends that the only reason the Respondent selected the Domain Name and the other similar domain names comprising a famous trade mark in conjunction with the word "sex" was to attract people to the Respondent’s pornographic sites. The Complainant also cites the Respondent’s willingness to sell the Domain Name as an indication of bad faith in that the Respondent is seeking to capitalise on the fame of the Complainant’s trade mark.
The Respondent’s response, which is contained in its letter to WIPO of August 24, 2000, is as follows: -
"1) According to Benelux law regarding registration and possession of Trademarks it is allowed to registrate (sic) and own any domain-name, even if there are similarities with existing names or trademarks, as long as this domain-name is not used.
2) On the 28th of June 2000,, the day we received the first E-mail from complainant and learnt at first of the complainant (Mr.Patrick Murphy) we removed all materials of above mentioned website because we didn’t want to break any laws or regulations. As follows there is only a registration and no use of the name.
3) As we wrote to complainant (see Annex I of your complaint) we think the names general and electric are very common words and often used to express curtain emotions. Because a domain-name us usually a one-word-name we Regis traded those two names in one. Let us also point out that the complainants name is hardly known in Europe."
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) 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.
Identical or confusing similarity
The Domain Name comprises three elements, namely "generalelectric", which is the Complainant’s trade mark, the word "sex", which is descriptive of the content of the Respondent’s website and ".com" which is generic.
Arguably, nobody is likely to believe that companies of the standing of the Complainant, Coca-Cola, Chevrolet et cetera are in any way associated with websites, which incorporate their principal trade marks in conjunction with the word "sex". Accordingly, it may be that "confusion" of that kind is only a remote risk. However, in the circumstances of this case where, notwithstanding the Respondent’s denial, it is plain that the Respondent selected the Domain Name with the Complainant very much in mind, what the Respondent has done would in most jurisdictions constitute a tort. In the Panel’s home jurisdiction, the UK, the Respondent would be vulnerable to a trade mark infringement action under Section 10(3) Trade Marks Act 1994 on the grounds that it has used the Complainant’s trade mark without due cause and has thereby taken undue advantage of or caused detriment to the distinctive character or repute of the trade mark. For the purposes of that section the court would certainly regard the Domain Name as being sufficiently similar to the trade mark in which the Complainant has rights.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
Rights or legitimate interest of the Respondent
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purpose of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of the Respondent.
The Complainant has made out a prima facie case. The Respondent has not sought to claim that it has any rights or legitimate interests in respect of the Domain Name beyond the first-come-first-served rights that a registrant legitimately acquires when it registers a truly generic name. Notwithstanding the Respondent’s denial that it was aware of the Complainant’s trade mark when it registered the Domain Name, a denial which does the Respondent no credit whatever, the Panel has no evidence before it to suggest any reason why the Respondent might have any rights or legitimate interests in the Domain Name. Indeed, the circumstances surrounding the registration of the Domain Name, namely the simultaneous registration of a number of "-sex.com" suffixed domain names containing the famous trade marks of others ("cocacolasex.com" and "chevroletsex.com" appear to have been registered by the Respondent on the same day that the Domain Name was registered), indicate the contrary.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith. The Complainant relies upon sub paragraphs (i) and (iv).
Subparagraph (i) concerns circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling the Domain Name registration to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket expenses. For this the Complainant relies upon the Respondent’s email of June 30, 2000, where the Respondent comments that if the Complainant wishes to acquire the Domain Name, the Respondent is willing to consider offers. The Panel rejects this claim. There is no evidence to suggest that sale of the Domain Name was the Respondent’s primary purpose at time of registration, even if one assumes that nothing short of an excessive sum of money would be acceptable as a purchase price.
Subparagraph (iv) concerns use of the Domain Name with the intent for commercial gain to attract Internet users to the Respondent’s website "by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location".
As already indicated, the Panel doubts that people are likely to believe that a site, which by its name indicates a pornographic site, is a site of or sponsored by or affiliated with or endorsed by the Complainant.
However, the circumstances set out in paragraph 4 are non-exhaustive. In the Panel’s view, on June 6, 2000, the Respondent deliberately selected the Domain Name (and the other domain names referred to) because it thought that the use of these famous trade marks would attract visitors to its sites. It could be that the use of these trade marks means that the websites to which the names are attached feature in web searches for the trade marks. It could simply be that the juxtaposition of a famous trade mark in conjunction with the word "sex" is thought to be likely to excite a special interest in the way that the Respondent’s other domain names such as "1000000girls.com" and "1000000sexygirls.com" do not. Whatever the reason, clearly the Respondent saw a commercial benefit to be gained by using the Complainant’s trade mark and in a manner (namely connected to a pornographic site) which could only tarnish the distinctiveness and repute of the trade mark.
In the Panel’s view this constitutes registration in bad faith and use in bad faith of the Domain Name.
In the result, the Panel having found that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered in bad faith and is being used in bad faith, the Complaint succeeds.
The Panel directs that the Domain Name "generalelectricsex.com" be transferred to the Complainant.
Dated: October 25, 2000