Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Complainant is General Electric Company ("Complainant" or "GE"), a corporation incorporated under the laws of the State of New York, with a principal place of business located at 3135 Easton Turnpike, Fairfield, Connecticut 06431,USA.

Respondents are CPIC NET and Hussain Syed ("Respondent" or "CPIC") located at 15 5^th Street Closter, NJ 07624, USA.

The domain name at issue is <gehoneywell.org> (the "Domain Name"). The registrar is Network Solutions, Inc. (the "Registrar") located at 505 Huntmar Park Drive, Herndon, Virginia, 20170 USA.

On January 17, 2001, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant via email. On January 19, 2001, the Center received hardcopy of the Complaint. On January 23, 2001, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.

On January 25, 2001 after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in the Respondent's name.

The Center verified that the Complaint with Amendment satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On January 26, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On February 16, 2001, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

On April 18, 2001 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.

Complainant GE has continuously owned and used the name and mark "GE" and a stylized GE monogram logo (collectively, the "GE Marks") in connection with GE’s products and services. Large numbers of Complainant’s GE Marks are registered with government authorities in the United States. The following is a representative listing of the GE Marks that Complainant has registered with the United States Patent and Trademark Office ("USPTO").

1. "GE" in block letters:

2. GE Monogram:

GE’s right to use the GE marks registered with the USPTO as alleged above has become incontestable under 15 U.S.C. § 1065 and 1115, and the certificates of registration thereof constitute "conclusive evidence" of "the validity of the registered mark[s] and of the registration of the mark[s], of the registrant’s ownership of the mark[s], and of the registrant’s exclusive right to use the registered mark[s] in commerce on or in connection with the goods or services specified in the registration." 15 U.S.C. § 1115.

GE has spent billions of dollars in advertising and promoting the GE Marks in connection with its products and services throughout the United States, and GE has sold hundreds of billions of dollars worth of these products and services under and in connection with the GE Marks throughout the United States. By virtue of GE’s long use, widespread advertising and enormous sales, the GE Marks have become well-recognized and famous in the U.S., and represent valuable goodwill.

The Complainant owns and has registered the domain name <ge.com> and it maintains an active website at www.ge.com. In addition, Complainant owns and operates numerous divisions and subsidiaries using a "GE" prefix as part of their name, such as GE Corporate Benefits Delivery, GE Medical Systems, GE Capital Services, etc. GE also registered and owns numerous additional domain names incorporating the GE mark, including <gelighting.com>, <gewashers.com>, <gehealthproducts.com>, and <geblenders.com>, some of which are maintained as active websites, such as www.geappliances.com. As a result of this long and varied use of the GE Marks in combination with other terms to symbolize the products, services and goodwill associated with various lines of business conducted by GE, the public worldwide has come to associate such combinations with Complainant GE.

On or about October 22, 2000, GE publicly announced its intention to acquire the Honeywell Corporation.

A. Complainant contends that it has numerous registrations of the trademark GE. Complainant further contends that the Domain Name is identical with and confusingly similar to the GE Marks mark pursuant to the Policy paragraph 4(a)(i).

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

B. Respondent failed to contest Complainant’s assertion that it has numerous registrations of the trademark GE or that the Domain Name is identical with and confusingly similar to the GE Marks.

Respondent failed to contest Complainant’s assertion that Respondent has no rights or legitimate interest in the Domain Name.

Respondent failed to contest Complainant’s assertion that Respondent registered and used the Domain Name in bad faith.

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."

Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

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 in bad faith.

Complainant contends that it has numerous registrations of the trademark GE. Complainant further contends that the Domain Name is identical with and confusingly similar to the GE Marks pursuant to the Policy paragraph 4(a)(i).

Complainant contends that it has numerous registrations of the trademark GE, that its trademark registrations are valid and subsisting and that the registrations serve as prima facie evidence of its ownership and the validity of the GE Marks. 15 U.S.C. § 1115. Complainant further alleges that its registrations are incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the mark in connection with the stated goods. 15 U.S.C. §§ 1065 and 1115(b).

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., ICANN Case No. D2000-0047. Respondent has not contested the assertions by Complainant that it has valid registrations of the GE Marks. Therefore, the Sole Panelist finds that Complainant, for purposes of this proceeding, has enforceable rights in the GE Marks.

Complainant further contends that the Domain Name is identical with and confusingly similar to the GE Marks pursuant to the Policy paragraph 4(a)(i).

Respondent has not contested the assertions by Complaint that the Domain Name is confusingly similar to the GE Marks.

In determining whether the domain name at issue is identical or confusingly similar to, the Policy specifically directs the Sole Panelist's attention to a mark "in which the Complainant has rights," and not to a mark in which Respondent has rights. The Sole Panelist is to compare the mark and the domain name alone, independent of the use factors usually considered in a traditional infringement action. InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe's Internet Café, ICANN Case No. D2000-0068.

Numerous Panel decisions have established that the addition of words or letters to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark. See, e.g., Cellular One Group v. Paul Brien, ICANN Case No. D2000-0028; Gorstew Limited, Jamaica, and Unique Vacations, Inc. v. Cottrell Travel, ICANN Case No. FA94923. Accordingly, the Sole Panelist finds that the Domain Name is confusingly similar to marks in which the Complainant has rights.

Generally, a user of a mark "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4^th ed. 1998).

Here, Respondent’s <gehoneywell.org> Domain Name incorporates the "GE" mark in its entirety.

Adaptive Molecular Tech., Inc. v. Woodward, WIPO Case No. D2000-0006 (February 28, 2000) (finding that a domain name was "undoubtedly" confusingly similar because it incorporated the "primary, distinctive element of both of Complainant's trademarks.") Moreover, in determining the similarity of two marks, points of similarity are weighed more heavily than points of difference. See, GoTo.com, Inc. v. Walt Disney Co., [2000] USCA9 52; 202 F.3d 1199, 1206 (9th Cir. 2000); Brookfield Communications, Inc. v. West Coast Entertainment Corp., [1999] USCA9 225; 174 F.3d 1036, 1054-55 (9^th Cir. 1999).

The Sole Panelist notes that the entirety of the trademark GE is included in the Domain Name.

The domain name at issue, <gehoneywell.org>, consists of a combination of the "GE" trademark and trade name of Complainant along with the name of the target acquisition. The letters "GE" have no generic meaning, nor does the word "Honeywell." The phrases in the Domain Name other than the letters "GE" are non-distinctive material.

Therefore, the Sole Panelist concludes that Respondent’s Domain Name is identical or confusingly similar to trademarks or service marks in which GE has rights.

In addition, the Domain Name is confusingly similar in that the offending domain name is misleading. The Domain Name <gehoneywell.org> suggests an association or relationship to Complainant, which does not exist and, if used by parties other than Complainant, will cause confusion in the marketplace. See Nike, Inc., WIPO Case No. D2000-0167, id.

Therefore, the Sole Panelist finds that the Domain Name is confusingly similar to the GE Marks pursuant to the Policy paragraph 4(a)(i).

Complainant contends that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Complainant alleges that Respondent has no relationship with or permission from Complainant for the use of the GE Marks. Complainant further alleges that Respondent cannot satisfy any of the criteria under the Policy paragraph 4(c) to demonstrate Respondent has rights or a legitimate interest in the Domain Name.

The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that it has rights or a legitimate interest in the Domain Name:

(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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 file contains no evidence that the use of the Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(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 web site 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 web site or location or of a product.

The Policy paragraph 4(b)(ii) finds bad faith where the Respondent has registered the Domain Name in order to prevent the Complainant from reflecting the trademark in the corresponding Domain Name and has engaged in a pattern of such activity.

Respondent has registered and owns at least 693 domain names, based on a search of the Registrar’s records. Complainant’s search on December 29, 2000 reflects various combinations of words with well known trademarks, such as "BertelsmannEMI.com," "AlcatelOptronics.com," "ATTWireless-Nextel.com" and "ATTBTWireless.com."

Respondent registered the <gehoneywell.org> Domain Name on October 21, 2000, the day that it was made public that GE broke up a potential deal between Honeywell Corporation and United Technologies Corporation ("UTC"). A day earlier, on October 20, 2000, Honeywell Corporation announced the breakup of the acquisition talks with UTC and widespread rumors started circulating that GE was one of three possible candidates to buy Honeywell Corporation, the others being Siemens AG and Tyco International, Inc. Respondent in fact also registered <siemenshoneywell.com> and <tycohoneywell.com>. Thus, the timing of the registration by Respondent was clearly driven by its intent to usurp Complainant right to register the Domain Name and prevent the Complainant from reflecting its GE mark in the disputed Domain Name. The numerous registrations of combinations of well-known trademarks and the timing of the registrations of combinations of corporate marks relating to the anticipated merger of Honeywell Corporation show a pattern.

The Sole Panelist additionally finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(ii).

The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

One such factor found to support a finding of bad faith is Respondent’s actual knowledge of the Complainant’s mark Respondent registered the <gehoneywell.org> Domain Name on October 21, 2000, at the same time that rumors were widely reported of the possible merger of Complainant and Honeywell Corporation. These circumstances support the Sole Panelist’s conclusion that Respondent had actual knowledge of the GE Marks.

Respondent also had constructive notice of the GE Marks, as a trademark search on the date of the registration of the Domain Name would have revealed Complainant’s registration of the GE Marks in the United States. Complainant’s trademark registrations in the United States issued before Respondent registered the Domain Name. Actual or constructive knowledge of the Complainant’s rights in the Trademarks is a factor supporting bad faith. See Expedia, Inc. v. European Travel Network, D2000-0137 (WIPO April 18, 2000); Document Technologies v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000) (Respondent’s knowledge of Complainant’s mark at the time of registration of the domain name suggests bad faith).

See, e.g., CCA Industries v. Dailey <bikinizone.com>, WIPO Administrative Panel Decision in Case No. D2000-0148 (constructive notice found where domain name confusingly similar to complainant’s mark and mark registered prior to respondent’s domain name); Young Genius Software AB v. MWD <younggenius.com>, WIPO Administrative Panel Decision in Case No. D2000-0591 (constructive notice found where Complainant had trademark registration in Sweden and domain name registration under the .se top-level domain name prior to respondent’s domain name registration); The Channel Tunnel Group Ltd. v. Powell, WIPO Case No. D2000-0038 (March 17, 2000) (Respondent's awareness of Complainant's mark when he was registering the domain name at issue supported an inference of bad faith).

A second factor is Respondent’s refusal to voluntarily transfer the contested Domain Name. Failure to respond to a Complainant’s efforts to make contact provides "strong support for a determination of ‘bad faith’ registration and use." Encyclopaedia Britannica v. Zucarini, D2000-0330 (WIPO June 7, 2000).

Complainant alleges on or about October 28, 2000 Counsel for the Complainant, Patrick Murphy, sent a letter to the Respondent by email and by first class mail, demanding that it cease and desist its use of the Domain Name and that it transfer the Domain Name to Complainant. Respondent never responded to this letter nor complied with its demands.

A third such factor is a course of conduct by Respondent suggesting bad faith. Respondent registered a series of domain names involving combinations of the well-known corporate entities, which were bidding for Honeywell Corporation when it came into play. These actions have been found by the Sole Panelist to constitute a pattern supporting a finding under paragraph 4(b)(ii). Such a course of conduct also supports a finding of bad faith.

Numerous ICANN panels have ruled that the registration of a domain name shortly after an announced corporate merger constitutes bad faith and justifies finding for the Complainant and transferring the domain, even without a direct offer to sell the domain or an active use. In a recent case involving identical circumstances (and another Korean Respondent), Pharmacia & Upjohn AB v. Monsantopharmacia.com Inc. (WIPO D2000-0446, August 1, 2000), the panel found for Complainant holding:

"The Panel considers that the Respondents has registered and used the domain name "MONSANTOPHARMACIA.COM" and "MONSANTOPHARMACIA.NET" in "bad faith" for the reason that the words "MONSANTOPHARMACIA.COM" and "MONSANTOPHARMACIA.NET" are so obviously connected with such well-known pharmaceutical companies that their very use by someone with no connection with either of these companies suggests opportunistic bad faith. Particularly so when the domain name registrations were effected so shortly after the merger of Monsanto Company and Pharmacia & Upjohn had been commenced.

Although there is no evidence, as is often the case, of the Respondents trying to sell the domain name, either by auction on the net or by offer to the Claimant, the ingenuous email correspondence from the Respondents indicates sufficient use of the domain name for the purposes of this adjudication. The fact that the Complainant’s trademark may not have been registered in Korea does not affect the situation of multi-nationals merging. The inference from the Respondent’s joinder of the names of Monsanto and Pharmacia shows it was positioning itself to capitalize on the joinder of two multi-national giants." (emphasis added).

See also, Pharmacia & Upjohn AB v. Sol Meyer (WIPO D2000-0785, August 23, 2000) (involving a different Respondent and a different panelist but reaching the same conclusion):

Having concluded under the previous heading that the Respondent knew when he registered the Domain Name that it was a combination of well known names owned by third parties, being names in which they have no right or legitimate interest, it is not difficult for the Panel to find and the Panel does in fact find that the Respondents registered the Domain Name in bad faith. That leaves the question of ‘use in bad faith’ in circumstances when in ordinary parlance the Respondent is making no use of the Domain Name of any kind. The fact that the Domain Name was registered on the very day that news was first published of the merger talks between the Complainant and Monsanto Company leads the Panel irresistibly to the conclusion that it was an opportunistic act by an alert entrepreneur with a view to making a profit.

Many other ICANN decisions find for Complainants under similar situations involving opportunistic attempts to profit from domain names concerning a corporate merger, often even absent an attempt to sell the domain or proof of use. See CGNU plc v. Tess Caffrey/WIPPYWOW (WIPO D2000-0769, September 22, 2000); Sampo Insurance Company Plc and Leonia Plc v. Caspar Callerstrom (WIPO D2000-0864, September 16, 2000); Sampo Insurance Company plc and Leonia plc v. FLCitigroup, Inc. (WIPO D2000-0865, September 15, 2000) and The Chase Manhattan Corporation and Robert Fleming Holdings Limited v. Paul Jones (WIPO D2000-0731, October 23, 2000).

A fourth factor is the use of Complainant’s entire mark in the Domain Name, thus making it difficult to infer a legitimate use of the Domain Name by Respondent. In Cellular One Group v. Paul Brien, D2000-0028 (WIPO March 10, 2000), Complainant filed a WIPO complaint against the Registrant of domain name <cellularonechina.com>. The WIPO panel agreed with Complainant based on facts essentially the same as those set forth in this Complaint, that the Registrant unlawfully registered an identical or confusingly similar domain name in bad faith. Moreover, the Panel inferred bad faith use of <cellularonechina.com>, because the domain name included Complainant’s entire trademark. In light of Cellular One’s trademark registrations and applications, "it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name." See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ¶ 7.

Respondent’s Domain Name uses the entirety of Complainant’s trademark, namely the phrase "GE." No plausible explanation exists as to why Respondent selected the name GE as part of the Domain Name other than to trade on the goodwill of Complainant. Despite contact by Complainant’s counsel, Respondent has never provided any information to contradict the conclusion that Respondent registered the Domain Name <gehoneywell.org> in order to benefit from the well-known GE Marks.

Respondent has failed to come forward with any facts to contradict the assertions of Complainant.

A fifth factor is the registration of numerous domain names that contain the names or marks of well-known business entities or famous persons suggesting an intent to profit from those registrations which is inconsistent with an intent to engage in any legitimate use of the domain names. See Stella D’Oro Biscuit Co., Inc. v. The Patron Group, Inc., WIPO Case No. D2000-0012 & 5(b)(1), (2); Nabisco Brands Co. v. The Patron Group, Inc., WIPO Case No. D2000-0032 & 5(b)(1), (2); J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035 ¶ 6; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 & 6(c)

The evidence establishes: (i) actual and constructive knowledge by Respondent of Complainant’s rights in the GE Marks upon the registration of the Domain Name; (ii) Respondent’s failure to positively respond to Complainant’s request for transfer; (iii) a course of conduct supporting the inference that Respondent was trying to capitalize on Complainant’s potential merger with Honeywell Corporation; (iv) the use of Complainant’s entire mark creating an absence of any plausible use of the Domain Names that would constitute good faith; and (v) a pattern of registering the names of famous persons or entities with an intent to profit from such registrations.

Based upon this evidence, the Sole Panelist finds that Complainant has shown sufficient facts to support a finding that the Domain Name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii) and under several additional nonexclusive criteria.

The Sole Panelist concludes (a) that the Domain Name <gehoneywell.org> is confusingly similar to Complainant’s registered GE Marks, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Name be transferred to General Electric Company.

Richard W. Page
Sole Panelist