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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
General Electric Company v. Dr. Elliot Fishman
Case No. D2001-0934
1. The Parties
Complainant is the General Electric Company, Medical Systems Division, which according to its Complaint, is a corporation incorporated under the laws of the State of New York, U.S.A., with a place of business in Waukesha, Wisconsin, U.S.A.
The Respondent is Dr. Elliot Fishman, 8 Stream Court, Owings Mills, Maryland, U.S.A. According to his Response, he is a professor of radiology and oncology employed by the Johns Hopkins University Hospital in Baltimore, State of Maryland, U.S.A.
2. The Domain Names and Registrar
The dispute is with respect to the following related domain names (hereafter "the domain names"):
The registrar with which these domain names are registered is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA, U.S.A. 20170 (hereafter "the registrar").
3. Procedural History
The procedures for resolving Complaints like this one are governed by the Uniform Domain Name Dispute Resolution Policy (hereafter "The Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (hereafter "The Rules"), as well as the Supplemental Rules of the WIPO Arbitration and Mediation Center (hereafter "The Supplemental Rules").
The current dispute lies within the scope of the Policy, so that this WIPO Administrative Panel does have proper jurisdiction to hear and decide this dispute. The terms and conditions of the registration agreement between the Registrar and the Respondent clearly incorporate the Policy, so that Respondent as notified of the existence of the Policy’s provisions for domain name dispute resolution. The Policy contains in its Paragraph 4(a) the elements to be pleaded in order for a mandatory administrative proceeding such as this one to be held: Complainant must allege that a (i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; that (ii) Respondent has no rights or legitimate interests in the domain name; and that (iii) Respondent’s domain name has been registered and is being used in bad faith. See the Policy, Paragraph 4(a). In order to successfully make its case, the Complainant must prove each of these three elements.
An electronic and hard copy of the complaint were filed on July 19 and July 23, 2001. A request for Registrar Verification was made to the Registrar of the domain names on July 24, 2001, and such Verification was made on July 26, 2001. On July 27, 2001, a request was made by the Center to Complainant to amend its Complaint on the matter of jurisdiction of U.S. state courts for any proceedings lodged in court following the decision of this Panel on this matter. On July 31 and August 3, 2001, the Complainant duly amended its Complaint via email and hardcopy versions respectively. On August 6, 2001, the Center notified the Registrar and Respondent of the filing of the Amended Complaint with the Center. On August 27, 2001, the Center received a Response to the Complaint in the form of an email from Respondent.
The Panel consists of a single Panelist pursuant to Complainant’s request, and the Panelist was duly appointed by the Center. A Statement of Acceptance and Impartiality and Independence was submitted to the Center by the Panelist on September 21, 2001, and the Panelist was appointed by the Center on September 24, 2001. A decision on the Complaint is due within 14 days of the appointment of the Panel under Paragraph 15(b) of the Rules.
There have been no further submissions by either side as of the date of this decision.
4. Factual Background
Complainant states that for a long time prior to Respondent’s registration of the domain names that are the subject of the Complaint, Complainant has both actively used and duly registered with the United States Patent and Trademark Office the names, trademarks and service marks "GE" in connection with its medical products and services. See Complaint, pages 6-7 and Annexes to the Complaint in support thereof. And although Complainant does not indicate it has registered "GE Medical" as a trade name, it does state that Complainant has actively and continuously used this name in commerce for many years, which is the primary prerequisite under United States trademark law for establishing rights in a mark or trade name, with registration being optional to further enhance these rights.
In addition, Complainant alleges that from its several years of widespread use, the "GE" trademark and "GE Medical" name have become part of a class of "famous marks" worldwide as related to medical products and services. See Complaint, page 7, bottom paragraph.
Respondent has not attempted to deny either of these claims of Complainant relating to Complainant’s ownership of intellectual property rights in the trademarks and service marks "GE" for international classes of medical products and services.
5. Parties’ Contentions
In its Response, Respondent states that it has given up its claims to all the domain names in question in this case except for <gemedical.com>. Respondent claims that the term "gemedical" is a slang expression.
Complainant avers that (1) the domain names are confusingly similar to Complainant’s "GE" product name and to its "GE Medical" trade name referred to in Section 4 of this decision; (2) the Respondent has no rights or legitimate interests in the trademarks, service marks and trade name at issue; and (3) the domain names were registered and are being used in bad faith.
The Panel notes that these elements are often intertwined and not separate. For instance, bad faith by Respondent (element 3) may often be proven by its attempt to create confusion (element 1) between Respondent and Complainant’s activities.
In respect of these elements, Complainant alleges that Respondent:
(1) has deliberately created websites with domain names confusingly similar to the Complainant’s product names and trade name;
(2) has demonstrated no intellectual property or other rights, or any positive commercial or other legitimate interest in these domain names; and
(3) as acts illustrating bad faith, has deliberately failed to develop its websites for any legitimate purpose, and has also failed to enter into or carry out a settlement agreement with Complainant to transfer the domain names to Complainant for a fee.
As a result, Complainant asks this Panel to issue a decision to the effect that the domain names be transferred to Complainant, in accordance with Paragraph 4(i) of the Policy.
6. Discussion and Findings
Based on the facts and contentions referenced above, the Panel finds as follows:
a. Respondent has conceded rights to all the domain names in question with the exception of <gemedical.com>. Therefore this Panel will focus its analysis on this latter domain name, although the scope of its decision shall apply to all the domain names originally cited in this case.
b. Complainant has adequately demonstrated its own intellectual property rights in the trademark and service mark "GE" in the relevant trademark product/service international classes, by both active commercial use and registration of these marks.
The Panel notes that U.S. trademark law puts a premium on active commercial use of a mark, as opposed to registration alone, in order to acquire rights in that mark. In this sense, Complainant has also demonstrated its intellectual property rights in the name "GE Medical", which it has actively used in commerce for many years.
Respondent’s only challenge to the allegations of fact by Complainant in Section 4 of this Decision, is that the term "GE Medical" is somehow considered "slang". See Response of August 27, 2001, page 1. However, the Respondent offers absolutely no evidence in support of his contention. Therefore the Panel accepts Complainant’s allegations regarding its rights in the "GE Medical" name as true.
c. As regards proof of element (1) in Paragraph 5 above, the confusion element, the Panel agrees that the mere insertion of hyphens, single spaces or other purely grammatical items will not serve to avoid confusion between legitimate trademarks, service marks or trade names on one hand, and domain names with a similar look on the other.
The Panel will accept Complainant’s assertion that the suffixes "ct" and "mr" are well-known abbreviations in the medical field standing for "Computed Tomography" and "Magnetic Image Resonance" respectively – terms which are used in the domain names and which directly relate to Complainant’s relevant spheres of commercial activities. In this case, rather than avoiding confusion, the use of these suffixes by Respondent instead creates further confusion of its registered domain names with Complainant’s own marks and trade names.
For these reasons the Panel finds that the element of confusion does exist between the domain name at issue and Complainant’s mark and trade name.
d. As regards proof of element (2) above, the lack of legitimate interest or rights in the trade name, Respondents have failed to assert any such interest or right. Therefore, the Panel finds that Respondents do not have any such interest or right.
e. As regards proof of element (3) above, the registration and use in bad faith by Respondents of the domain names, several WIPO Panels have concluded that Complainant must prove both bad faith registration of the domain name by Respondent and bad faith use as well. This Panel concurs.
Paragraph 4(b) of the Policy cites, without limitation, various examples of both registration and usage of a domain name in bad faith. Complainant has cited the WIPO Case No. D2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows. In that case, the Panel found that a number of factors, coupled with its registration of the highly famous Australian mark "Telstra", constituted bad faith registration by negative inference.
The Panel made it clear in that case that "bad faith" is not an abstract concept, but must be defined according to the circumstances of each case.
The Panel in this present case agrees.
(i) Bad faith registration of the domain name by deliberately creating confusion with Complainant’s Name and/or activities.
Referring back to the discussion above on the relationship between the bad faith element and the confusion element, the Panel finds that here, Complainant’s product and service names "GE" and "GE Medical" are so widely known to the public and professionals in the medical field that they approach or exceed the degree of notoriety of the Australian mark "Telstra", the largest company listed on the Australian stock exchange and largest provider of telecommunication and information services in Australia.
In the Telstra case, the likelihood of confusion between Complainant’s own website and Respondent’s domain name was very high and readily exploitable by Respondent, since Complainant had registered the domain names <telstra.com>, <telstra.net>, and <telstra.com.au> among others, while Respondent had registered <telstra.org>. In the present case, the Respondent has registered the names <gemedical.com>, <ge-ct.com>, <ge-mr.com>, <generalelectricct.com>, and <generalelectricmr.com>, creating further confusion with Complainant’s marks, names, and commercial activities.
(ii) Bad faith registration of the domain names illustrated by similar acts by Respondent with respect to other famous marks.
Complainant alleges (Complaint, page 12) and Respondent does not deny, that Respondent has also registered, among a very large number of its domain names, at least three domain names containing the trademarks of Siemens, a well-known competitor of Complainant in the same medical imaging field as is the subject of this dispute. Complainant cites Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer (WIPO Administrative Decision D2001-0032) in support of the proposition that bad faith registration can be proven by prior acts of a respondent in registering domain names confusingly similar to famous marks. This Panel agrees.
(iii) Bad faith use of the domain name by non-development of the name over a period of time.
The Panel visited Respondent’s <gemedical.com> website on September 27, 2001, and found an "Under Construction" banner there, without any further development. Complainant made a similar visit with the same results back in June 2001, according to its Complaint. Respondent apparently registered this domain name quite a while ago. The site has been fallow for quite some time now, and so it is not clear when "Under Construction" may materialize into something useful, if ever.
In his Response, Respondent argues that he has been "too busy" to develop this site in a useful manner. However the Panel finds this assertion totally unacceptable, given the time elapsed without any development and Respondent’s own statement that he employs a special web designer for purposes such as these.
Respondent also argues that his use of the <gemedical.com> domain name is a legitimate one for educational purposes because he and his group have a mission to raise awareness in the medical community. However this claim is not borne out by the facts, which once again show Respondent’s failure to develop this site for the purposes he claims, even though his group does have staff dedicated to web development.
(iv) Bad faith use of the domain names by failing to complete settlement negotiations to transfer the names to Complainant for an agreed-upon fee.
Both Complainant and Respondent have cited the breakdown in their negotiations to illustrate bad faith and lack of legitimate intellectual property rights in the domain names by the other side.
It is a settled principle of law virtually everywhere in the United States, that the existence as well as the details of negotiations to settle a case are inadmissible as evidence in any litigation pertaining to that case. The well-founded policy behind this legal principle is to encourage the parties to settle their own disputes without fear that these efforts could be used against them in a court of law.
Although this case is a WIPO Administrative Proceeding rather than court litigation, it does involve two parties from the U.S. and therefore, this Panel will apply the principle of law and corresponding policy cited above. As a result, the Panel completely rejects the arguments put forth by both Complainant and Respondent in regard to their settlement negotiations, finding this line of argument inadmissible.
(f) Based upon the set of facts presented in subparagraphs (i) – (iii) in Section 6 above, this Panel finds that Complainant has proven bad faith registration and use by Respondent.
Based upon the Panel’s findings from Section 6 above, and under its authority vested by Paragraph 4(i) of the Policy, the Panel concludes that there is strong evidence of Complainant’s legitimate rights in the marks and names in question, the lack of such interest by Respondent in them, confusion between these marks and names versus the domain names currently held by Respondent, and bad faith by Respondent in his registration and use of the domain names. Therefore, this Panel’s order is for the Registrar to immediately transfer the domain name registrations to Complainant as soon as possible.
Paul E. Mason
Dated: September 27, 2001