WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

General Electric Company v. Arck Electrical Supply

Case No. D2008-0732

 

1. The Parties

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

The Respondent is Arck Electrical Supply, Rockledge, Florida, United States of America, represented by Robert B. Thomas, Jr., United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <gebreakerinfo.com> and <generalelectricbreakerinfo.com> are registered with Schlund + Partner.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2008. On May 13, 2008, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain names at issue. On May 14, 2008, Schlund + Partner transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On May 16, 2008, in response to the Center request for further verification, the registrar confirmed that the registrant of the disputed domain was the registrant organization. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 21, 2008. The Center verified 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 for Uniform Domain Name Dispute Resolution 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 27, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2008. The Response was filed with the Center on June 14, 2008.

The Center appointed William R. Towns as the sole panelist in this matter on June 23, 2008. The Panel finds that it was properly constituted. 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.

On July 1, 2008, the Complainant filed with the Center a request to submit a supplemental filing, to which the proposed filing was attached. The Panel on July 7, 2008 issued a Procedural Order accepting the Complainant’s supplemental filing and affording the Respondent an opportunity to file a supplemental filing no later than July 14, 2008. The date for the Panel to forward its decision to the Center was extended under paragraph 15(b) of the Rules until July 21, 2008.

The Respondent’s supplemental filing was not submitted to the Center until July 18, 2008, and hence was not timely filed pursuant to the Panel’s Procedural Order of July 7, 2008. Nevertheless, the Panel has considered the Respondent’s supplemental filing in reaching its decision in this case.

 

4. Factual Background

The Complainant is the owner of numerous valid and subsisting registrations for the trademarks GE and GENERAL ELECTRIC in various countries around the world, including registrations issued by the United States Patent and Trademark Office (USPTO). The Complainant for many years has used the GE and GENERAL ELECTRIC marks in connection with various electrical devices, including circuit breakers and electrical power distribution products. The Complainant’s marks are widely known, and their fame has been recognized by WIPO panelists in a number of UDRP proceedings.

The Respondent is an electrical supply company located in Rockledge, Florida. The Respondent sells residential, commercial and industrial circuit breakers, including the Complainant’s circuit breakers as well as directly competing products. The Respondent operates a commercial website at “www.arckelectrical.com” at which such products are offered for sale.

The Respondent registered the disputed domain names <gebreakerinfo.com> and <generalelectricbreakerinfo.com> on May 4, 2007. Prior to receiving notice of this dispute, the Respondent used the disputed domain names to redirect Internet users to its commercial website. The Respondent also registered on May 5, 2007, a number of other domain names reflecting names or brands of other circuit breaker manufacturers, which the Respondent also has used to redirect Internet users to its commercial website.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical and confusingly similar to its GE and GENERAL ELECTRIC marks, which the Complainant asserts are recognized by millions of people around the world and have acquired a high degree of public recognition, fame and distinctiveness. According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain names, and has never been commonly known by them. The Complainant maintains that the Respondent is not affiliated with or endorsed by Complainant, is not an authorized dealer of Complainant’s products, and has no business relationship with the Complainant.

The Complainant further contends that the Respondent’s use of the disputed domain names in connection with the Respondent’s commercial website, from which the Respondent sells products directly competing with Complainant’s circuit breakers, does not constitute a bona fide use of the domain names. Rather, the Complainant maintains that the Respondent registered and has used the disputed domain names in a bad faith attempt to exploit and profit from the fame and reputation of the Complainant’s marks. The Complainant further points to the Respondent’s registration and use of domain names reflecting recognizable names or brands of other circuit breaker manufacturers as convincing evidence of such bad faith.

The Complainant asserts that the Respondent’s claim to have registered the disputed domain names for use with a “future business website” is immaterial, since at the time the Respondent received notice of the dispute the domain names were being used in bad faith to redirect Internet users to the Respondent’s commercial website.

B. Respondent

The Respondent contends that it acquired the disputed domain names as well as the domain names including names or brands of other circuit breaker manufacturers for use with a future business website intended to provide important information for circuit breaker identification. According to the Respondent, this business idea is still in the compilation and research phase, and has been since sometime in 2005.

The Respondent concedes that the disputed domain names are identical to the Complainant’s marks, but disagrees that any confusion exists, since both names refer to products made by the Complainant. The Respondent maintains it has rights or legitimate interests in using the disputed domain names in connection with its prospective circuit breaker identification website. The Respondent has submitted with the Response a spreadsheet providing information about various circuit breakers. According to the Respondent, its prospective website would be a great asset to all in the industry as well as to consumers. In its supplemental filing, the Respondent also provided evidence of the registration of the domain name <circuitbreakerid.com> in August 31, 2005.

The Respondent denies bad faith registration and use of the disputed domain names for the following reasons: (1) the Respondent’s website at “www.arckelectrical.com” offers for sale genuine General Electric products purchased from one of the Complainant’s distributors; (2) the sale of competitors’ circuit breakers on the Respondent’s website is a non-issue because most circuit breakers are intended for use only in the original manufacturer’s equipment; and (3) upon receiving notice of this dispute, the Respondent redirected the disputed domain names and other domain names containing manufactures’ names away from the Respondent’s business website.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See, Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) 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) The Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer are the sole remedies provided to a complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Complainant has presented uncontested evidence of its registration and use of the GE and GENERAL ELECTRIC marks in the United States and in other countries around the world. At a minimum, the Complainant’s marks are entitled to a presumption of validity by virtue of their registration with the USPTO. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

The Respondent concedes that the disputed domain names are identical to the Complainant’s marks, but argues that no confusing similarity should be found. The Respondent’s argument appears to misapprehend the basis on which confusing similarity is determined. Under paragraph 4(a)(i) of the Policy questions of identity or confusing similarity are evaluated and based on a comparison of the complainant’s mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. Applying this standard, the Panel finds that the disputed domain names, which incorporate the Complainant’s GE and GENERAL ELECTRIC marks in their entirety, are confusingly similar to the Complainant’s marks.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. It is uncontested that the Respondent has not been authorized to use the Complainant’s mark or to appropriate the mark for use with domain names. The disputed domain names, which incorporate the Complainant’s respective GE and GENERAL ELECTRIC marks in their entirety, have been used by the Respondent to divert Internet users to its commercial website, where, in addition to the Complainant’s circuit breakers, products and services that compete with those of the Complainant are offered for sale.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it 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 a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial 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’s position is that it registered the disputed domain names for use with a future business website intended to provide information for circuit breaker identification. Nevertheless, the record reflects the Respondent’s actual use of the disputed domain names to redirect Internet users to its current commercial website, where products directly competing with the Complainant’s circuit breakers are offered for sale. While the Respondent avers that its future business website has been in the planning stages since 2005, the disputed domain names were not registered until May 2007, and the Respondent clearly has used the disputed domain names to redirect Internet users to its commercial website. The documentation submitted by the Respondent regarding an alleged future business website does not adequately reflect demonstrable preparations, prior to notice of this dispute, to use the disputed domain names in the manner alleged. See Kirkbi AG v. Michele Dinoia, WIPO Case No. D2003-0038.

Further, with respect to either the Respondents’ current commercial website or the purported future business website, it is generally accepted that there can be no bona fide offering of goods or services in this context under paragraph 4(c)(i) of the Policy unless the following conditions are met:

(a) there is an actual offering of the goods or services by the registrant;

(b) the website at the domain name is used to sell only the trademarked goods or services;

(c) the website accurately discloses the registrant’s relationship with the trademark owner; and

(d) the registrant has not sought to corner the market in domain names reflecting the complainant’s mark.

See paragraph 2.3 of the Center’s “Overview of WIPO Panel Views on Selected UDRP Questions” and cases cited there, including Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. It is clear from the undisputed evidence in the record that the second and third conditions identified above currently are not being met by the Respondent in connection with the operation of its current website. Nor could the Respondent meet all of the foregoing requirements in connection with any future website providing circuit breaker identification services that were not limited to the Complainant’s trademarked products.

In view of the foregoing, the Respondent has not established rights or legitimate interests in the disputed domain names under paragraph 4(c)(i) of the Policy. The Respondent makes no claim to have been commonly known by the domain names for purposes of paragraph 4(c)(ii), nor does the Respondent claim to be making any noncommercial or fair use of the domain name under paragraph 4(c)(iii) of the Policy.

Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

In this case, the Respondent registered two domain names incorporating the Complainant’s GE and GENERAL ELECTRIC marks. The circumstances of this case indicate that the Respondent was aware of the Complainant and its marks when the disputed domain names were registered. Further, it is uncontroverted that the Respondent has used the disputed domain names to redirect Internet users to its commercial website. The Respondent is not an authorized distributor of the Complainant’s products, and sells both the Complainant’s goods or services and those of the Complainant’s competitors on its website. The Respondent has made no effort to disclaim on its website any association or affiliation with the Complainant.

In view of the foregoing, the Panel concludes that the Respondent’s registered and is using the disputed domain names in bad faith to attract Internet users to the Respondent’s commercial website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Such bad faith is not dissipated by the Respondent’s pointing the disputed domain names away from its website only after the filing of the Complaint.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <gebreakerinfo.com> and <generalelectricbreakerinfo.com> be transferred to the Complainant.

William R. Towns
Sole Panelist

Dated: July 21, 2008