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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
General Electric Company v. CSMRW and Colm Sheehy a.k.a. CSMRW
Case No. D2001-0967
1. The Parties
The Complainant is General Electric Company, a New York corporation of 3135 Easton Turnpike, Fairfield, Connecticut 06431, United States of America.
The Respondent is Colm Sheehy (a.k.a. CSMRW) of Herbert Grove, Castleroy, Limerick, Ireland.
2. The Domain Name and Registrar
The disputed domain name is <gewoodchester.com>.
The Registrar with which the domain name is registered is Register.Com, Domain Registrar, 575 8th Avenue, 11th Floor, New York, NY 10018, United States of America.
3. Procedural History
On July 30, 2001, a Complaint was received by the WIPO Arbitration and Mediation Center ("WIPO Center") for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999.
On August 6, 2001, the Registrar responded to a request for Registrar Verification and confirmed the details of the Respondent, that the Policy applied to the domain name and that the current status of the name was "active".
On August 7, 2001, the WIPO Center transmitted a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent by email and courier.
No Response was received from the Respondent and on August 29, 2001, the Center sent a Notification of Respondent Default to the Respondent.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, that the Complaint was properly notified to the Respondent in accordance with the Rules, and that the Administrative Panel was properly constituted.
On September 19, 2001, the Panel received a request for a stay of the decision pending negotiations between the parties. A 30 day stay was granted by the Panel on September 20, 2001. The period of stay expired on October 20, 2001.
4. Factual Background
A. The Complainant
The Complainant has asserted and provided evidence in support of the following facts. Unless stated otherwise, the Panel finds these facts established.
The Complainant is engaged in the manufacture, advertising, distribution and sale of a wide variety of products and services to the general public and to diverse businesses and industries throughout the United States and many other countries. Among the most familiar of its products and services are car loans, equipment leasing, personal loans, aircraft engines, household appliances and lighting. The Complainant claims it owns "myriad registrations" for its GE trademark in connection with an extensive number of goods and services. A series of 14 trademark registrations for the mark GE in the United States are attached to the Complaint.
In 1997, GE Capital Services, a wholly owned subsidiary of the Complainant, acquired Woodchester Investments Plc and began using the name GE Capital Woodchester. Prior to its acquisition by GE Capital Services, Woodchester Investments was a well-known provider of auto, equipment and consumer finance loans in Ireland. The Complainant claims that GE Capital Woodchester is Ireland’s leading independent finance provider.
On June 6, 2000, the Complainant discovered and visited the <gewoodchester.com> website. At that time, the website consisted of a single page displaying the message "FINANCE ASSISTANCE FOR BUYING OR LEASING MOTOR VEHICLES MAY SOON BE AVAILABLE ON THIS WEBPAGE". The webpage directed interested visitors to email the Respondent at <email@example.com>. Accompanying this message, at the bottom of the webpage, were three links to other websites where domain names were offered for sale.
On June 14, 2000, the Complainant sent the Respondent a letter advising the Respondent of the Complainant’s ownership of the GE trademark and instructing the Respondent to cease and desist from further use of the GE trademark. The Respondent did not respond to that letter.
Subsequently, the <gewoodchester.com> website was modified to consist of a single webpage that read "Coming Soon! We recently registered our domain name at .... Register.Com the first step on the web". At the base of the webpage were a number of links to additional services, one of which was entitled "Appraise Your Domain Name".
On November 9, 2000, the Complainant searched the <greatdomains.com> website, on which the domain name <gewoodchester.com> was listed. Users were invited to "make unsolicited offers" for the domain name.
On July 12, 2001, the Complainant visited the website <www.afternic.com>. The Respondent was offering the domain name <gewoodchester.com> for sale for an asking price of $100,000 and a minimum bid of $25,000.
At the time of the Complaint, the website at <gewoodchester.com> consisted of a single webpage picturing a cartoon figure dancing. The text on the site stated:
"George Ernest Woodchester
I’m the COOLEST
guy on the web ...
I am George
My friends call me WOODY ... you can call
me woody if you like ... I’d like that!
WOODY ROCKS!! WOODY ROCKS!!
WOODY ROCKS!! WOODY ROCKS!!
Do You Wanna Rock With Woody??!!"
The bottom of the webpage contained a link to the email address <firstname.lastname@example.org> as well as a link entitled "woody" that took the user to <http://members.afternic.com/csmrw99> showcase", a website through which the Respondent was seeking to sell domain names, including the domain name <gewoodchester.com>.
Another link at the bottom of the webpage, "Woody 2", directed users to <www.vsupermall.com>, a domain name registered by CSMRW. The link "Woody 3" directed users to a site called <www.irishbrokerlink.com>, which the Complaint describes as "another Colm Sheehy venture". According to the Complainant, that site ostensibly offered "Irish finance companies a place to advertise their businesses".
This Complaint was filed on July 30, 2001.
B. The Respondent
No response to the Complaint has been received from the Respondent.
5. Parties’ Contentions
A. The Complainant
The Complainant contends that the various incarnations of the <gewoodchester.com> website and the repeated linking of the webpage to pages where the domain name could be purchased, make it clear that the Respondent has no legitimate use for the domain name and that it was registered in bad faith.
It submits that the Complainant’s trademarks and name are widely known and have a strong reputation throughout the world. The GE trademark is used throughout Ireland, where the Respondent resides, including being used as part of the trade name GE Capital Woodchester.
The Complainant contends that the Respondent is actually and constructively aware of its rights in the domain name. It claims that not only did the Respondent receive a letter informing him of those rights, but that it is clear from the Respondent’s initial website design (which indicated that "financial assistance" would soon be available on that website) and the website’s latest link to <irishbrokerlink.com> that the Respondent chose the domain name precisely because it would benefit from the Complainant’s goodwill and trademarks.
It says that the June 2000 posting on the website informing users that "finance assistance for buying or leasing motor vehicles may soon be available on this page" was clearly designed to attract users to the website by creating a likelihood of confusion with the Complainant’s GE trademark and to falsely suggest GE Woodchester’s sponsorship, affiliation or endorsement of the Respondent’s website.
The Complainant says that the links to websites offering domain names for sale, including this particular domain name, indicated the Respondent’s intent to sell the domain name for monetary gain in excess of his out-of-pocket expenses.
B. The Respondent
The Respondent did not file a Response.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used by the Respondent in bad faith.
Identical or Confusingly Similar to a Trademark or Service Mark in which the Complainant has Rights
The Complainant is the registered owner of the well-known trademark GE in the United States in a number of diverse classes. It has not provided any evidence that it is the registered owner of the trademark GE in Ireland, where the Respondent resides. However, the Panel is prepared to find that the mark is well-known there and in many other countries.
The Complainant has not contended that it is the registered owner of the trademark WOODCHESTER, but has provided evidence that its wholly owned subsidiary GE Capital Woodchester acquired a company called "Woodchester Investments Plc" which the Panel finds was itself a very well-known provider of auto, equipment and consumer finance loans in Ireland. The merged company "GE Capital Woodchester" is Ireland’s leading independent finance provider.
Paragraph 4(a) of the Policy is not limited to registered trademarks
The Panel considers that the domain name is confusingly similar to the Complainant’s registered trademark GE and its unregistered trademark WOODCHESTER, which have been used in combination by the Complainant’s subsidiary in Ireland.
No Legitimate Rights or Interest in the Disputed Domain Names
The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interest in the domain name. These circumstances are:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not provided the WIPO Center with any submissions on which the Panel could base a finding in its favour pursuant to paragraph 4(c).
There is no suggestion that the Respondent has a legitimate interest in respect of the disputed domain name, nor is there any evidence whatever that the Respondent is affiliated with the Complainant or otherwise authorized to use the Complainant’s mark.
The Panel further finds that the belated use of the name George Ernest Woodchester and a cartoon character on the website as at the date of Complaint does not create or demonstrate any legitimate right or interest in the disputed domain name. It agrees with the Complainant that this is a ruse on the part of the Respondent and arose after the Respondent had been placed on notice of the Complainant’s objection to the domain name.
The Panel finds that the Complainant has demonstrated that the Respondent has no legitimate rights or interest in the disputed domain name under paragraph 4(a)(ii) of the Policy.
Domain Name has been Registered and is Being Used in Bad Faith
Paragraph 4(b) of the ICANN Policy states:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, 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."
It should be noted that the circumstances of bad faith are not limited to the above.
The Panel notes that the Respondent is domiciled in Ireland and would therefore very likely have been well aware of the entity GE Capital Woodchester and the fact that it is a leading finance provider in Ireland. In Document Technologies, Inc. v International Electric Communications, Inc. WIPO Decision no D2000-0270 it was held that the Respondent’s knowledge of the Complainant’s trademark at the time of registration of the domain name suggested bad faith. The combination "GE" and "Woodchester" is an unusual one and it defies belief (and coincidence) that the Respondent has independently conceived this combination. Furthermore the Respondent has not chosen to defend the Complaint or to put forward any evidence of an independent right to the use of these two trademarks in combination. The Panel is entitled to and does draw adverse inferences from this failure to defend or deny the Complaint
The evidence demonstrates that the Respondent intended to sell the disputed domain name for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name, and this is evidenced by the fact that the domain name was listed on the domain name auction site <www.afternic.com>.
The Panel also finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The link from the website <gewoodchester.com> to the <irishbroker.com> site indicates that the Respondent intended to attract users to another of his sites by creating a likelihood of confusion with the Complainant’s trademark.
The Policy requires the Complainant to show that the Respondent has registered/acquired and is using the domain name in bad faith. The evidence shows that the Respondent was using the website for a period from June 2000 – even though it is not currently active. Moreover, the fact that the domain name has been available for sale has been taken as evidence of bad faith registration and even a complete absence of use in such circumstances has been found, since Telstra Corporation Limited v Nuclear Marshmallows WIPO decision no D2000-0003, not to frustrate the requirement of showing bad faith registration and use. While the concept of a domain name being used in bad faith is not limited to positive action (CUX, Inc. v DomainNamesAvailable WIPO decision no D2000-0972), here there was indeed active use of the domain name for some time.
The Panel finds that the domain name <gewoodchester.com> was registered by the Respondent in bad faith.
For the foregoing reasons, the Panel decides that:
(a) the disputed domain name is confusingly similar to a trademark in which the Complainant has rights;
(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name;
(c) the disputed domain name was registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <gewoodchester.com> be transferred to the Complainant.
Dated: October 26, 2001