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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM

Case No. D2006-0334

 

1. The Parties

The Complainant is General Electric Company of Connecticut, United States of America, represented by Kilpatrick Stockton, LLP, of United States of America.

The Respondent is Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE, and EEEGE.COM of Hong Kong, SARS of China.

 

2. The Domain Names and Registrars

The disputed domain names <edisonge.com>, <edison-ge.com> and <ee-ge.com> are registered with Network Solutions, LLC (“Network Solutions”). The disputed domain name <eege.com> is registered with Xin Net Technology Corp (“Xin Net”).

 

3. Procedural History

The Complaint was originally filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on March 17, 2006, and in hard copy on March 22, 2006 in respect of the domain names <edisonge.com> and <eege.com> (the “Original Domain Names”). The Center acknowledged receipt of the Complaint on March 17, 2006, and transmitted its requests for registrar verification the same day by email to Network Solutions and Xin Net.

Network Solutions responded by email on March 21, 2006, confirming that it was the registrar of the domain name <edisonge.com>, that the registration agreement was in English and contained a submission to the jurisdiction at the location of its principal office, and that it would not change the status of the domain name except in accordance with paragraph 3 of the Policy; and providing the contact details for the registration on its Whois database.

Xin Net did not respond to the Center’s request for registrar verification. The Center transmitted further requests for registrar verification to Xin Net on March 28 and April 3, 11, 25 and 26, 2006. In the absence of any response, the Center informed Xin Net by email on May 8, 2006, that it would proceed with the case on the basis of the information available to the public on the Whois database as to the identity of the registrant and contact details in respect of the registration; and previous replies by Xin Net to requests for registrar verification in other cases that the domain name would be locked during the proceeding and that the registration agreement was in Chinese and did not contain a submission by the registrant to the jurisdiction at the location of Xin Net’s principal office. The Center informed Xin Net that it would assume that this information was correct unless Xin Net responded by May 10, 2006. This email was copied to the Parties. Xin Net did not reply, but the Respondent requested the Center by email of May 9, 2006, to use the same contact information as in the records for the <edisonge.com> domain, since it had been unable to update its contact information held by Xin Net.

On May 11, 2006, the Center notified the Complainant by email that the Complaint was formally deficient in relation to the domain name <eege.com>, in that it was filed in English whereas the language of the registration agreement was Chinese (and there was no evidence of any agreement that the proceeding should be in English); and that the Complaint did not contain a submission to the jurisdiction of the courts at the address of the Respondent in the Whois database (this being the sole mutual jurisdiction in accordance with paragraphs 1 and 3(b)(xiii) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”)). In relation to the first deficiency, the Center indicated that the Complainant could submit a request that the proceeding be conducted in English, but that the Center or the Panel could require that the proceeding take place in Chinese and that documents in English be translated into Chinese. The Center informed the Complainant that if these deficiencies were not rectified by May 16, 2006 the Complaint would be deemed to be withdrawn.

The Complainant replied by email of May 11, 2006 that, as regards the domain name <eege.com>, the Complaint already contained a reasoned request that the proceeding should be in English and a submission to the jurisdiction of the courts of Quebec, Canada, this being the location of the registrant’s address according to the Whois database. By a further email of May 16, 2006, the Complainant filed an Amendment to the Complaint clarifying that it submitted to the jurisdiction of the courts of Quebec, this being the location of the Respondent’s address, which was listed in the Administrative Contact fields of the Whois database in respect of this domain name. The original Complaint had already noted that the Whois database did not contain any contact details in the Registrant fields in relation to this domain name.

The Respondent objected to the Complainant’s response to the notice of formal deficiency by email of May 16, 2006. The Respondent pointed out that the Complaint itself stated that the Respondent had no presence in Canada and contended that the Complainant’s response was contrary to the spirit of arbitration and a sleight of hand which did not alter the fact that the registration agreement was in Chinese and governed by Chinese law. The Respondent demanded that the language of the proceeding should be Chinese.

By email of May 18, 2006, the Center informed the parties in English and Chinese that it had decided to accept the Complaint in English and commence the proceeding; to accept a response in either Chinese or English; to appoint a Panel familiar with both languages if available; and to allow the Panel to determine the language of the proceedings and whether any documents should be translated.

The Center also verified on May 18, 2006, that the Complaint together with the Amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 18, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2006. The Response was filed with the Center in segments by a series of emails between June 8 and June 12, 2006, which were copied to the Complainant. Copies of Exhibits A-C and F-I to the Response were attached to the Respondent’s emails, but Exhibits D and E were omitted. By email of June 12, 2006, the Complainant informed the Center that it had not received Exhibits D and E to the Response. By email of June 13, 2006, copied to the Respondent, the Center replied to the Complainant stating that it had not received these Exhibits.

On June 23, 2006, the Complainant filed by email a request for permission to file a Reply to parts of the Response, the proposed Reply together with exhibits, and a request to add the domain names <ee-ge.com> and <edison-ge.com> (the “Additional Domain Names”) to this proceeding. Hard copies of these documents were also sent to the Center and the Respondent and received by the Center on June 29, 2006. In response to this request, the Respondent filed a “Declaration of No Importance” by email on June 24, 2006, urging that the Complainant’s further submissions be disregarded.

The Center appointed Jonathan Turner as the sole panelist in this matter on June 28, 2006. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. Having reviewed the file, the Panel is satisfied that the Complaint as amended complied with applicable formal requirements, was duly served on the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.

The Center received a hard copy of the Response on July 10, 2006, together with a copy of a letter of the Respondent’s President and CEO previously sent to the Center by email on May 12, 2006, and what were said to be examples of the Respondent’s products; but without any of the Exhibits to the Response.

By its Procedural Order No. 1 dated July 11, 2006 (the “Order”), the Panel made the following directions:

1. The language of the proceedings would be English.

2. The Complainant would be permitted to amend its Complaint to add the Additional Domain Names.

3. The Complainant must communicate the necessary Amendments to the Complaint electronically to the Center and to Network Solutions by July 19, 2006, failing which the permission to amend the Complaint would lapse; and that the Center should forward the Amendments to the Respondent and the Panel or inform them that no such amendments had been received by the specified date.

4. The Center should send its standard request for registrar verification to Network Solutions and advise the Panel of its response.

5. Numbered paragraphs 1, 2 and 5 of the Complainant’s proposed Reply together with the exhibits referred to in these paragraphs would be admitted into the proceeding. The remainder of this document would not be admitted.

6. The Respondent would be permitted to file a Supplementary Response in relation only to the Amendment to the Complaint submitted in accordance with paragraphs 2 and 3 of the Order and/or to numbered paragraphs 1, 2 and 5 of the Complainant’s Reply and the exhibits referred to therein, provided the Supplementary Response was communicated electronically to the Center by July 26, 2006. The Center should forward the Supplementary Response to the Complainant and the Panel or inform the Complainant and the Panel that no such Response has been received by the specified date.

7. The date for submission of the Panel’s decision would be extended until August 9, 2006.

8. The reasons for the Order would be set out in the Decision on the case.

In accordance with paragraph 4 of the Order, the Center transmitted its request for registrar verification in respect of the Additional Domain Names to Network Solutions by email on July 13, 2006. Network Solutions responded by email on July 13, 2006, confirming that it was the registrar of the Additional Domain Names, that the registration agreement was in English and contained a submission to the jurisdiction at the location of its principal office, and that it would not change the status of the domain names except in accordance with paragraph 3 of the Policy; and providing the contact details for the registration on its Whois database. By a further email of July 13, 2006, the Center drew Network Solutions’ attention to paragraph 3.7.5.7 of the ICANN Expired Domain Deletion Policy. Network Solutions replied on July 14, 2006, confirming its acceptance of this provision.

In accordance with paragraph 3 of the Order, by email of July 17, 2006, the Complainant filed with the Center a memorandum specifying amendments to the Complainant to include the Additional Domain Names, four exhibits thereto and a clean copy of the Complaint.

In accordance with paragraph 6 of the Order, the Respondent filed a Supplementary Response with the Center by email on July 25, 2006.

 

4. Procedural Rulings

The Panel will now set out its reasons for making Procedural Order No. 1 followed by other procedural rulings and the reasons for them.

A. Language

In accordance with paragraph 11 of the Rules, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise having regard to the circumstances of the proceeding. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated. On the other hand, paragraph 3(c) of the Rules permits a complaint to be made in relation to more than one domain name registered by the same holder, without specifying that they must be governed by registration agreements in the same language. The potential inconsistency between these provisions has to be resolved by a practical interpretation and application of the Panel’s authority to determine the language of the proceeding under paragraph 11 of the Rules.

Paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition. Its application should also take into account the objective of the Policy of providing a cost-effective system for resolving straightforward domain name disputes and the risk that this could be jeopardized by the considerable expense of translating documents: see WIPO Case No. D2000-1759 Beiersdorf AG v. Good Deal Communications (<niveasun.com>). The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors: see WIPO Case No. D2003-0679 Deutsche Messe AG v. Kim Hyungho (<cebit.com>).

In this case the Panel is satisfied that the language of the proceeding should be English. It is clear from the Respondent’s communications and submissions that the Respondent is very capable of communicating in English. Indeed, the Respondent filed its Response in English even though the Center gave it the option of filing a Response in Chinese. Substantial additional expense and delay would be incurred if the submissions on both sides had to be translated into Chinese. Further expense and delay would also be incurred if separate proceedings had to be instituted in the different languages of the registration agreements for the different domain names.

B. Additional Domain Names

Paragraph 10(a) of the Rules provides that a Panel shall conduct the proceeding in such manner as it considers appropriate in accordance with the Policy and the Rules. Paragraph 10(e) of the Rules further provides that a Panel shall decide a request by a party to consolidate multiple domain name disputes in accordance with the Policy and the Rules.

In WIPO Cases Nos. D2003-0172 A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc. (<abercronbieandfitch.com> and others), D2004-0033 PepsiCo, Inc. v. Henry Chan (<thepepsichart.com> and others) and D2005-1337 Sociйtй Air France v. Spiral Matrix (<airfrancereservation.com> and others), it was held that domain names could be added by amendment of a Complaint, without requiring the filing of a separate Complaint and Petition for Consolidation. In WIPO Case No. 2004-0033 PepsiCo, Inc. v. Henry Chan (<thepepsichart.com> and others), an amendment adding further domain names was permitted even though it was requested after the Panel was appointed.

These cases indicate that the following criteria must be met for such an amendment to be permitted: the factual backgrounds of the additional and initial Complaints must be closely connected so that it is expedient to determine them together in order to avoid the risk of irreconcilable decisions resulting from separate proceedings; the additional Complaint must be filed against the same Respondent (as required by paragraph 3(c) of the Rules); the Parties must be treated with equality and each Party must be given a fair opportunity to present its case in accordance with paragraph 10(b) of the Rules; and the Complainant must pay any additional fees which would have been payable if the additional names had been included in the original Complaint.

The decision in WIPO Case No. D2003-0172 A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc. (<abercronbieandfitch.com> and others) suggested that the additional Complaint must be based on exactly the same grounds as the original Complaint. However, the other cases cited above do not lay down such a strict requirement and in the Panel’s view it suffices in this connection that the first criterion identified above is satisfied.

Other considerations which should be taken into account are: the requirement in paragraph 11(c) of the Rules that the proceeding takes place with due expedition; the objective of the Policy of providing a cost-effective system for resolving straightforward domain name disputes; the need to secure compliance with other aspects of the Rules, such as certification, submission to a mutual jurisdiction and waiver of legal claims against the registrar, registry and dispute resolution service provider in relation to the additional domain names; and the desirability of verifying the registration details and locking of the additional domain names during the proceeding.

Applying these considerations to the present case, the Panel is satisfied that the relevant factual circumstances of the Additional and Original Domain Names are closely connected so that it is expedient to determine them together to avoid the risk of irreconcilable decisions. The Complainant relies on the same trademarks in relation to the Additional Domain Names as in relation to the Original Domain Names. The Additional Domain Name <edison-ge.com> is very similar to the Original Domain Name <edisonge.com>; and the Additional Domain Name <ee-ge.com> is likewise very similar to the Original Domain Name <eege.com>.

It is apparent from the contact details and accepted by the Respondent that it is the registrant of all four domain names in dispute.

The Panel’s directions afforded the Respondent a fair opportunity to present any further submissions in relation to the Additional Domain Names once the Complainant had clarified its contentions in relation to these domain names by specifying the Amendments to the Complaint. The Panel also considers that it has treated the parties with equality in not permitting formal objections on either side to prevent a determination of the substantive dispute in accordance with the Policy.

No additional fee is payable under the Supplemental Rules in respect of the amended Complaint, since the number of disputed domain names still falls within the 1-5 band.

Admitting the Additional Domain Names into the proceeding has involved some delay in the determination of the dispute in relation to the Original Domain Names, given that it was necessary to require the Complainant to specify the Amendments to the Complaint and then to afford the Respondent a fair opportunity to present further submission in response. However, the Panel considered that the delay was relatively small and that the case in relation to the Original Domain Names was not especially urgent. Indeed, the Complainant had been aware of the Respondent’s use of these domain names since before July 2005 when it sent a letter of complaint to the Respondent. Furthermore, the Party most likely to be damaged by any further delay was the Complainant, which sought the inclusion of the Additional Domain Names and was given the opportunity of not proceeding with its application to include them.

Including the Additional Domain Names in the existing Complaint is likely to have reduced the costs of the Parties by comparison with the costs which would be incurred if the Complainant were required to bring a separate complaint in relation to the Additional Domain Names. Some additional costs were incurred by the Center which were not covered by any additional fee, but these were minor and the Panel sought to minimise them by directing that further documents be filed and forwarded electronically.

Compliance with other aspects of the Rules was secured by requiring the Complainant to prepare and submit Amendments to the Complaint to the Center and to the registrar of the additional domain names. The Panel emphasises the need for this step in a case where a Complainant seeks to include additional domain names and notes that a similar course was followed in the cases cited above. Similarly, it is highly desirable in this situation to carry out the step of registrar verification, as in previous cases.

In all the circumstances, the Panel concluded that the better course was to permit the Complaint to be amended to include the Additional Domain Names in accordance with the directions set out above.

C. Additional Submissions

Under the Policy and the Rules, Parties have no right to submit additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the Parties under paragraph 10 of the Rules; and a Party’s request may be regarded as an invitation to the Panel to exercise this discretion.

The principles which should be applied in exercising this discretion have been considered in numerous cases decided under the Policy and Rules and were summarised in WIPO Case No. D2003-0447 The E.W. Scripps Company v. Sinologic Industries (<commercialappeal.com>) as follows: “additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.”

These principles are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission. One of the matters which the Panel has to bear in mind is that the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on, thereby compromising the procedural economy sought to be established by the Policy and the Rules.

In this case, the Panel has concluded that the relevant criteria were satisfied in relation to numbered paragraphs 1, 2 and 5 of the Complainant’s Reply Submission and the exhibits referred to in these paragraphs, but were not satisfied in relation to other parts of the Reply Submission.

Numbered paragraphs 1 and 2 of the Reply Submission and exhibits to which they referred provide evidence contradicting a claim by the Respondent in its Response to hold an interest in a Community trademark corresponding to the domain name <edisonge.com>. The Complainant could not have known of the Respondent’s contention, and hence the existence and relevance of this evidence, when filing the Complaint.

Numbered paragraph 5 of the Reply Submission provide evidence rebutting allegations in the Response that the Complainant’s rights in the trademark “GE EDISON” are belied by the use of the domain name “www.geedison.com” by a Japanese company, AIG. The particular allegations made by the Respondent, and hence, the relevance of this evidence, could not reasonably have been anticipated by the Complainant when preparing the Complaint.

By contrast, the remaining paragraphs of the Reply Submission essentially comprise comments on the Response and its exhibits which could readily be discerned without the assistance of an additional submission. While the Complainant could not reasonably have anticipated all of the allegations which would be made by the Respondent, these further submissions of the Complainant are unnecessary and therefore do not comply with the requirement that any additional material should be limited so as to minimise prejudice to the procedure.

The Panel therefore decided to admit paragraphs 1, 2 and 5 of the Reply Submission and the exhibits to which they referred, and to afford the Respondent an opportunity to respond to this further material.

Various allegations were made by the Respondent in emails to the Center of May 18 and May 22, 2006. However, since these preceded the very full Response filed by the Respondent, and since the Respondent indicated in the latter email that the Response would contain “compelling and undeniable evidence of the Complainant’s fraudulent claims”, it is fair to regard the Response as including all relevant matters on which the Respondent relies in answer to the Complaint. In any case, the Panel does not regard the matters raised in these emails as relevant to the substantive issues under the Policy.

D. Mutual Jurisdiction

The Panel considers that Quebec is a “mutual jurisdiction” in respect of the domain name <eege.com> within the meaning of paragraph 1 of the Rules, and that the Complainant’s submission to the jurisdiction of the courts of Quebec complies with paragraph 3(b)(xiii) of the Rules.

Paragraph 1 of the Rules clearly provides that a court jurisdiction at the domain-holder’s address as shown for the registration of the domain name in the registrar’s Whois database at the time the complaint is submitted is a “mutual jurisdiction”. Neither Rule 1 nor rule 3(b)(xiii) contains any qualification that the Respondent must have a presence at the address recorded on the Whois database it to found a “mutual jurisdiction” to which the Complainant must submit. The absence of any such qualification is obviously justified to avoid doubts and disputes which would undermine the objectives of the Policy and Rules. There is no reason to depart from the plain meaning of these provisions.

In the absence of any address in the registrant field of the Whois database in respect of the domain name <eege.com>, the address in its administrative contact field may fairly be taken to be that of the registrant for the purpose of identifying a “mutual jurisdiction”.

E. Late Submission of Response and Failure to Provide Annexes

The due date for submission of the Response in electronic form and hard copy in accordance with paragraphs 5(a) and 5(b) of the Rules was June 7, 2006. The Response was submitted to the Center in electronic form between June 8 and June 12, 2006 without Exhibits D and E; and in hard copy without any Exhibits on July 10, 2006.

To the extent that the Response and exhibits were received by the Center, the Complainant has not been significantly prejudiced by the delay. The Panel therefore exercises its discretion under paragraph 11(c) of the Rules to extend the time for submission of the Response to enable the documents filed by the Respondent to be admitted in the proceeding.

The Panel cannot take into account Exhibits D and E to the Response which have not been filed in any form, despite the reminder given to the Respondent by the Center’s email of June 13, 2006 mentioned above. The Panel will take into account the other Exhibits to the Response which were filed electronically, but will also have regard to the absence of hard copies in considering the weight which should be attached to disputed material.

F. Excessive Length of Response

Even excluding the extended “Preface” by Dr. Hamied Al-Iriani, the substantive part of the Response exceeds 9000 words, thereby contravening the limit of 5000 words in paragraph 10(b) of the Supplemental Rules. Its prolixity has not assisted the prompt and efficient resolution of the dispute. Nevertheless, the Panel has decided to waive this deficiency in order to avoid any risk of depriving the Respondent of a fair opportunity to present its case.

 

5. Factual Background

The Complainant is a major multinational company which provides a wide range of goods and services, including lighting, smart cards, medical imaging equipment, electricity, motors, jet engines, railway locomotives, plastics, silicones, entertainment and financial services.

The Respondent is a company registered in Hong Kong, SAR of China under the name Edison Electric Corp. According to the Hong Kong company register, its directors and shareholders are three Yemeni nationals all with the same address in Cairo.

According to the Whois records, the Respondent registered <eege.com> on April 30, 2003, <ee-ge.com> and <edison-ge.com> on December 28, 2004, and <edisonge.com> on January 17, 2005.

The Respondent is using the disputed domain names for a website offering various products and solutions including lighting products, security plastic cards, consumer electronics, power generation products, lighting and power, renewable energy, banking and EFT, transmission and telecoms, medical and health, EFT switches and telecoms, plastics and raw materials, and standardization and research.

 

6. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

Identical or Confusingly Similar to Mark in which Complainant has Rights

The Complainant’s business was started by the inventor, Thomas Alva Edison, in 1878 as the Edison Electric Light Company. In 1890, Edison reorganised his businesses into the Edison General Electric Company, which merged with the Thomson-Houston Company in 1892 to form the Complainant.

The Complainant has used logos comprising the letters “GE” since 1899 and is often referred to as “GE”. The Complainant has also promoted various of its business units under names such as GE Energy, GE Advanced Materials, GE Healthcare, GE Infrastructure, GE Water Technologies, GE Consumer & Industrial, GE Appliances, GE Security, GE Equipment Services, GE Transportation, GE Commercial Finance, GE Consumer Finance, GE Industrial Systems, GE Plastic, GE Silicones, GE Global Research and GE Fanuc.

The Complainant has registered the letters “GE”, its circular monogram comprising the letters “GE”, and various names including “GE” (such as “GE FOUNDATION”, “GE CAPITAL”, “GE ANSWER CENTER”, “GE INTEREST PLUS”, “GE GOLD”, “GE ACCESS”, “GE TRADING”, “GE PLANNING SOLUTIONS” and “GE HYDRO”) as trademarks in the United States of America and other countries.

The Complainant has also registered and operates websites using the domain names <www.ge.com>, <www.geae.com>, <www.gecas.com>, <www.gefanuc.com>, <www.gelighting.com>, <www.gesupply.com>, <www.gesecurity.com>, <www.geappliances.com>, <www.gecommercialfinance.com>, <www.geplastics.com>, <www.gepower.com>, :<www.gewater.com> and <www.gelighting.com>.

The Complainant has used a composite the mark comprising its “GE” monogram and the word “Edison” extensively since 1914 in many countries in connection with lighting products. The Complainant has also registered this mark and the word mark “GE EDISON” as trademarks in various countries.

The Complainant’s products include smart cards sold and promoted under the mark “GE Security” and bulbs for flashlights sold and promoted under the mark “GE”.

In reply to the Respondent’s allegations regarding the domain name <geedison.com> (see below), the Complainant states that it registered this domain name and used it until about January 2004 in connection with an insurance business carried on in the United States of America and Japan under the name “GE Edison Life Insurance Company”. It then sold this business to AIG and the domain name is now being used to redirect users to a website of AIG during a transition period. However, the Complainant has retained ownership of the domain name and will be free to use it in one of its own businesses (probably for its “Edison” brand lighting products) on expiry of the transitional period.

The Complainant contends that the domain names <edisonge.com> and <edison-ge.com> are confusingly similar to its “GE” and “GE EDISON” marks since they incorporate the former and merely transpose the elements of the latter. Particularly in view of the fame of the “GE” mark, this transposition is of no consequence.

The domain names <eege.com> and <ee-ge.com> are confusingly similar to the Complainant’s “GE” mark which they incorporate. The prefix “ee”, presumably as an abbreviation for “Edison Electric” is of no importance since the “GE” mark is uniquely associated with the Complainant and its products and services.

Respondent’s Rights or Legitimate Interests

The Complainant’s adoption and extensive use of the marks “GE” and “GE EDISON” predates the Respondent’s use of the disputed domain names. Since the Complainant’s marks were already well-known, the Respondent’s use of domain names containing them could not give rise to rights or legitimate interests.

There is no connection between the Complainant and the Respondent, and the Complainant has not licensed the Respondent to use the “GE” or “GE EDISON” marks.

The Respondent’s apparent use of “GE” as an abbreviation for “General Energy Division” is pretextual. There is no corporate listing, office or physical location for any “General Energy Division” of the Respondent and the Respondent is not commonly known by the names “GE” or “General Energy Division”.

The Respondent registered and is using the disputed domain names for commercial gain by promoting itself and its products exploiting the goodwill associated with the Complainant’s “GE” and “GE EDISON” marks. The Respondent’s website reproduces the look and feel of the Complainant’s website, contains imitations of the Complainant’s “GE” monogram, refers to Thomas Edison, adopts the tag line “for the quality of life” which is reminiscent of the Complainant’s motto “We bring good things to life”, and claims attributes possessed by the Complainant’s business but not the Respondent’s. Furthermore, the products which the Respondent may actually supply are products which have been sold by the Complainant under its “GE” marks for many years and for which the Complainant has registered trademarks. Such use of the domain names by the Respondent does not give rise to legitimate interests.

Contrary to the Respondent’s contention (below), the Respondent has no connection with Interplast Co. Ltd, the registrant of the Community trademark “EDISON”. The printout of the OHIM database exhibited electronically by the Respondent was doctored to suggest such a connection and a pending update to “EDISON-GE”.

Registered and Used in Bad Faith

Bad faith is shown by the Respondent’s multiple registration of domain names incorporating the Complainant’s well-known marks; its use of the domain names to exploit the Complainant’s goodwill for its own commercial gain as described above; and its response to the Complainant’s complaints, which included unsubstantiated allegations of copyright infringement and expanding its use of the term “General Energy Division” following receipt of the Complainant’s letters of complaint.

The Complainant’s researches show that the Respondent has no physical presence at any of the addresses identified in the registrations of the disputed domain names or on its websites

Remedies

The Complainant requests a decision that the disputed domain names be transferred to it.

B. Respondent

The Respondent makes the following contentions:

General

The Center should treat Parties equally irrespective of their size. The Complainant has itself committed various wrongful acts over the years.

Identical or Confusingly Similar to Mark in which Complainant has Rights

The mere use of common English words does not confer trademark rights in them and the concurrent use by different businesses of names incorporating the same common English words does not necessarily cause confusion. The word “EDISON” is generic. Many other companies and other organizations of names and marks which include the letters “GE”. The Complainant has never used names in which “GE” is the suffix, as opposed to the prefix.

The domain names <geedison.com> and <geee.com> are being used by independent third parties, namely the Japanese company, AIG, and the Australian company, Pacific Webs, respectively. The Complainant’s registration of a “GE EDISON” trademark in the United States of America in 1916 disclaimed the word “EDISON” apart from the composite mark shown in the drawing. The Complainant abandoned the trademark “GE EDISON” and submitted a falsified application for its renewal in December 2004 which has not yet been granted. The Complainant’s abandonment of the trademark “GE EDISON” is confirmed in its abandonment on December 16, 1999, of an application to register the word mark “GE EDISON LIFE” in the United States of America.

The Complainant has used the domain name <geedison.com> illicitly as a pretext for the harassment, coercion, intimidation, and for the purpose of destroying evidence of the copyright theft committed by the Complainant and a conspiracy to obliterate the Respondent’s web presence. The registration of <geedison.com> in the name of the Complainant has been faked and is inconsistent with its use by the Japanese company, AIG.

There is no likelihood of confusion between the Respondent’s “Edison” emblem and the Complainant “GE” monogram.

Respondent’s Rights or Legitimate Interests

The Respondent is entitled to use its company names and acronyms including Edison-GE (Edison General Energy), EE (Edison Electric), EEC (Edison Electric Corp.), EEGE (Edison Electric General Energy) and EG (Edison General).

The Respondent has registered or applied to register its trademarks in various countries. In particular, the Respondent has applied to register its “Edison GE” logo in the United States of America and its affiliate, Interplast Co. Ltd., has registered “EDISON” as a Community trademark at the Office for Harmonisation in the Internal Market (“OHIM”) of the European Union. According to the database printout exhibited by the Respondent, the latter mark was registered on May 2, 2003, pursuant to an application filed on September 13, 2001, in the name of “Interplast Co. Ltd [A Div of Edison Elect Corp]”, and there is an update “EDISON-GE pending 02/08/2005”.

The domain names <eege.com> and <edisonge.com> are intended to be used for an Edison General Energy initiative focusing on alternative and renewable energy. “EE” denotes “Edison Electric” while “GE” denotes “General Energy” or “Green Energy”. The Respondent has owned the domain name <eege.com> since 2001 pursuant to an out-of-court settlement agreement. The Respondent was using the disputed domain names prior to notice of this dispute in connection with a bona fide offering of goods and services. The Complainant’s threats to hosting companies led to the collapse of the Respondent’s web presence.

Registered and Used in Bad Faith

The Respondent acquired the domain names lawfully, in good faith and in the legitimate interests of its company. It is commonly known by these names and is making a bona fide offering of goods or services. Its officers and personnel are of the highest standing. The Complainant copied the Respondent’s website, not vice versa.

Remedies

The Respondent asks the Panel to take “stiff measures” against the Complainant, including, but not limited to:

1. Cancellation of the domain name <geedison.com>.

2. Suspension of all Complainant’s websites which have infringed the Respondent’s intellectual property.

3. Taking necessary procedures for the Complainant’s fraudulent acts.

4. Blacklisting the Complainant from manipulations of intellectual property privileges.

5. Opening an investigation to review previous cases submitted by the Complainant.

6. Compelling the Complainant to bear the cost of such investigations and reviews.

7. Awarding remedies to the Respondents according to the merits of each case.

8. Penalties according to ICANN’s rules, WIPO’s rules and as permitted by law.

 

7. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, to succeed in this proceeding, the Complainant must prove (A) that the domain names are identical or confusingly similar to a mark in which it has rights, (B) that the Respondent has no rights or legitimate interests in respect of the domain names, and (C) that the domain names were registered and are being used in bad faith. These requirements will be considered in turn.

A. Identical or Confusingly Similar to Mark in which Complainant has Rights

The Panel is satisfied on the evidence that the Complainant has registered rights in the marks “GE” and “GE EDISON”.

The fact that the Complainant abandoned an application to register the mark “GE EDISON LIFE” in the United States of America does not mean that the Complainant abandoned the mark “GE EDISON”. On the contrary, the evidence shows that the Complainant’s United States registration of a composite “GE EDISON” mark was live in July 2005, having remained in force since 1916, and there is no evidence that it has lapsed since July 2005. The disclaimer of “EDISON” apart from the composite mark as drawn does not detract from the Complainant’s ownership of the composite mark.

Nor does the Complainant’s pending application to register a variant of the original “GE EDISON” composite mark detract from its ownership of the latter; on the contrary, it confirms that the Complainant has a continuing interest in protecting the combination of a “GE” monogram and the word “EDISON”.

In any case, the evidence shows that the Complainant is also the proprietor of registrations of the composite mark “GE” monogram / “EDISON” mark or the word mark “GE EDISON” in various other countries around the world.

The Panel is also satisfied that the Complainant has unregistered rights in the marks “GE” and “GE EDISON” in the United States of America and probably other countries as a result of extensive use.

The use by third parties of the name “Edison” by itself does not detract from the Complainant’s rights in the combination “GE Edison”. Nor does the use by third parties of names containing the letters “GE” detract from the Complainant’s rights in “GE” as a separate mark.

The Panel concludes that the Complainant has rights in the marks “GE” and “GE EDISON”. It is necessary next to determine whether the disputed domain names are confusingly similar to either or both of these marks.

The Panel considers that the domain names <edisonge.com> and <edison-ge.com> are confusingly similar to the Complainant’s “GE EDISON” marks.

Most internet users would perceive the domain name <edisonge.com> as comprising the elements “edison” and “ge”, since Edison is a well-known name. The existence of these separate elements is unmistakeable in the domain name <edison-ge.com> where they are separated by a hypen.

In the Panel’s view, many internet users familiar with the Complainant’s “GE EDISON” marks would overlook the transposition of these two elements or regard it as a minor variant of the kind which is made in the ordinary course of business, and would accordingly assume that these domain names refer to the Complainant.

The Panel also considers that these domain names are confusingly similar to the Complainant’s “GE” mark, since many Internet users are aware that the Complainant’s business was founded by Thomas Edison and/or of the Complainant’s use of “Edison” as a brand for lighting products.

The Panel is also satisfied that the domain name <ee-ge.com> is confusingly similar to the Complainant’s “GE” mark. This domain name clearly comprises two elements “ee” and “ge” separated by a hyphen. In the Panel’s view many Internet users would assume that the “ge” element refers to the Complainant, given the fame of the Complainant’s “GE” mark. Although the signification of the “ee” element is not self-evident, Internet users might well suppose that it is an abbreviation identifying a particular business line of the Complainant.

The position in relation to the domain name <eege.com> is different. It is not apparent that this domain name comprises the separate elements “ee” and “ge”. “ee” is not a recognisable word or acronym in its own right, in contrast to “edison” in <edisonge.com> or “benefits” in <gebenefits.com> (which was held to be confusingly similar to the Complainant’s GE mark in WIPO Case No. D2000-1727 General Electric Company v Momm Amed la).

Although the letters “ge” constitute the Complainant’s well-known name and mark, they are also a common pairing of letters in English and other languages. Accordingly, an Internet user would not necessarily assume that they form a separate element of a domain name which contains them. For example, no one would suppose that the domain names <edge.com> or <george.com> had anything to do with the Complainant, even though they contain the letters “ge”. In this respect “ge” differs from unusual combinations such as “BP”, “Sony” or “Pepsi” which may more readily be identified as separate elements of a string containing them.

The position is not quite as clear in the case of <eege.com> as of <edge.com>, since “eege” is not itself a word in normal use. Nevertheless, there is nothing to lead an Internet user to suppose a break in the four-letter combination of <eege.com> and hence to deduce a connection with the Complainant. Accordingly, the Panel concludes that <eege.com> is not in itself confusingly similar to the Complainant’s “GE” mark.

The Panel recognises that from one point of view there is only a slight distinction between <eege.com> and <ee-ge.com>, namely, the interposition of a single hyphen. However, the separation of elements of a string of characters by a hyphen can be crucial, as was observed in WIPO Case No. D2001-0156 The Football Association Limited v. Websitebrokers Limited, where the Panel said:

“Is <thefa.com> identical with or confusingly similar to ‘The F A’? In such a comparison one disregards the addition of the TLD. Even so, the two marks are not identical and the issue becomes one of confusing similarity. While the practice of omitting spaces between words is characteristic of ‘domainspeak’, the addition of only a consonant and a vowel to the definite article in English makes for a special case. ‘Thefa’ seems inherently a fabricated word. The combination which is the Complainant’s abbreviated name has to be picked out from it by deliberate mental effort. Not for nothing, in my view, is the Complainant’s own official domain in the form <the-fa.org>. The hyphen makes a crucial difference.”

As further discussed below, the Panel accepts the Complainant’s contention that the Respondent’s website is intended to mislead Internet users into believing that it is a website of the Complainant. However, this does not make the domain name <eege.com> confusingly similar to the Complainant’s mark “GE”, as required by the Policy.

It has been repeatedly held that the first requirement of the Policy is based on a comparison between the disputed domain name and the Complainant’s mark, and that the content of the Respondent’s website cannot affect this assessment: see, for example, WIPO Cases Nos. D2000-1698 Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic (<guiness.com>), D2001-1480 BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR (<kool.com>), D2002-0834 The Vanguard Group, Inc. v John Zuccarini (<vanguard.com>), D2003-0038 Kirkbi AG v Michele Dinoia (<legoclub.com>), D2004-1087 NFL Properties LLC and New York Jets LLC v. Link Commercial Corp. (<nyjets.com>) and D2006-0451 F. Hoffmann-La Roche AG v. Macalve e-dominios S.A. (<all-about-tamiflu.com>).

In these cases the domain names were confusingly similar to the Complainants’ marks and arguments that they were rendered not confusingly similar by their use were rejected. It could be said that the present case is different in that it concerns a domain name (<eege.com>) which is not in itself confusingly similar to the Complainant’s mark but which might be said to be made confusingly similar by its use.

However, the Panel considers that the same principle should be applied in this case as in the cases cited above, since it accords with both the text of this requirement and the purpose of the Policy. The text requires that the domain name is identical or confusingly similar to a mark in which the Complainant has rights; it does not refer to domain names whose use is causing confusion. The purpose of the Policy is to provide an expeditious and cost-effective means of combating abusive registration of domain names, not to provide a means of enforcing intellectual property rights generally on the internet: see paragraphs 163-168 of the Final Report of the First WIPO Internet Domain Name Process.

In any case, the Panel considers that the domain name <eege.com> does not materially add to the confusion caused by the content of the Respondent’s website. In reality, so far as <eege.com> is concerned, the Complainant’s cause for complaint is not the domain name, but the content of the Respondent’s website, a matter not covered by the Policy.

The Panel accordingly concludes that the first requirement of the Policy is satisfied in relation to the disputed domain names <edisonge.com>, <edison-ge.com> and <ee-ge.com>, but not in relation to the domain name <eege.com>. Since the first of the cumulative requirements of the Policy is not satisfied in relation to the domain name <eege.com>, it is not necessary to consider it further, and the discussion below is accordingly directed only to the three remaining domain names in dispute.

B. Respondent’s Rights or Legitimate Interests

Although the Respondent’s submissions are not altogether coherent, it appears that it might be suggested that the Respondent has rights or legitimate interests in respect of the disputed domain names by virtue of its company name “Edison Electric Corp.”; its alleged registered rights in the mark “EDISON GE”; and rights or interests arising from its use of the name “EDISON GE” or of the disputed domain names themselves.

The company name, “Edison Electric Corp.”, does not correspond to any of the disputed domain names, since it differs materially from them, in particular in that the domain names include the letters “ge” which are liable to taken as the Complainant’s trademark. Use by the Respondent of this name and any rights which it may have in it do not give rise or amount to rights or legitimate interests justifying the domain names in dispute.

The Panel rejects the Respondent’s evidence that it has registered rights in the mark “EDISON GE”. The only material exhibited in support of this contention relates to an ungranted United States application and the printout from the register of Community trademarks in respect of the mark “EDISON” in the name of Interplast Co Ltd. The Complainant’s evidence in its Reply Submission, that this printout was doctored, is convincing and has not been rebutted by the Respondent, despite being given a fair opportunity to do so.

The Panel is satisfied that such use as the Respondent has made of the name “EDISON GE” has been for the purpose of unfairly exploiting the goodwill associated with the Complainant’s “GE” and “GE EDISON” marks to promote the Respondent and its products. The Complainant had an extensive reputation under these marks long before the Respondent started to use the name “EDISON GE”. The Respondent is evidently well aware of the Complainant’s “GE” and “GE EDISON” marks since it has imitated the Complainant’s “GE” rondel and sells flashlights and security cards in competition with the Complainant’s products sold under these marks.

The evidence indicates that the primary use by the Respondent of the name “EDISON GE” has been on its website. This website claims attributes possessed by the Complainant’s business but not the Respondent’s. Thus it holds the Respondent out as a major international company providing products and services in diverse fields such as power generation, banking, transmission, telecoms, medical and health, plastics, raw materials, standardization and research; these are characteristics which internet users are likely to identify with the Complainant. It further claims that the Respondent scored a perfect 10 in a global corporate governance study by Governance Metrics International, an accolade accorded to the Complainant and not the Respondent.

The use of the name “EDISON GE” in this context is calculated to reinforce the impression that the website is connected with the Complainant. Such unfair and deceptive use is not a “bona fide offering” giving rise to rights or legitimate interests within the meaning of the second requirement of the Policy: see e.g. WIPO Cases Nos. D2003-0654 Mentor ADI Recruitment Ltd (trading as Mentor Group) v. Teaching Driving Ltd (<letsdrive.com>), D2005-0946 Robert Bosch GmbH v. Asia Ventures, Inc. (<boschappliance.com>).

Similar points apply to the Respondent’s use of the disputed domain names themselves.

The fact that the Respondent felt obliged to doctor documents to substantiate a claim to rights in a mark corresponding to the domain names <edisonge.com> and <edison-ge.com> is further evidence of its lack of any such rights.

In all the circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in respect of any of the remaining disputed domain names.

C Registered and Used in Bad Faith

As indicated above, the Panel is satisfied by the evidence that the Respondent has deliberately sought to exploit the goodwill associated with the Complainant’s “GE” and “GE EDISON” marks to promote the Respondent and its products by making its website appear to be a website of the Complainant.

In this context, the Panel considers that by using the disputed domain names, <edisonge.com>, <edison-ge.com> and <ee-ge.com> the Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s “GE EDISON” and “GE” marks, and also to reinforce the confusion of Internet users accessing the Respondent’s website. The Respondent has thereby sought commercial gain, in particular by promoting the sale of its flashlights and security cards as if they are the well-known products of the Complainant.

In accordance with paragraph 4(b)(iv) of the Policy, this constitutes evidence that these domain names were registered and are being used in bad faith.

Further evidence of bad faith is provided by the Respondent’s doctoring of documents to substantiate a false claim to rights in a corresponding mark, as described above. This is not the conduct of a person acting in good faith.

The Panel concludes that the domain names <edisonge.com>, <edison-ge.com> and <ee-ge.com> have been registered and are being used in bad faith.

 

8. Decision

For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain names <edisonge.com>, <edison-ge.com> and <ee-ge.com> be transferred to the Complainant.

The Complaint regarding the domain name <eege.com> is denied.


Jonathan Turner
Sole Panelist

Dated: August 13, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-0334.html

 

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