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Generic Top Level Domain Name (gTLD) Decisions |
General Electric Company v. RaveClub
Berlin
Claim Number: FA0211000135018
PARTIES
Complainant
is General Electric Company,
Fairfield, CT (“Complainant”) represented by Martin B. Schwimmer, of
Martin Schwimmer Esq. Respondent is RaveClub Berlin, Cherry Hill, NJ (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <geapliances.com>,
registered with Joker.com.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known
conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on November 26, 2002; the Forum received
a hard copy of the
Complaint on December 2, 2002.
On
November 28, 2002, Joker.com confirmed by e-mail to the Forum that the disputed
domain name, <geapliances.com>,
is registered with Joker.com and that Respondent is the current registrant of
the name. Joker.com verified that
Respondent is bound by the Joker.com registration agreement and has thereby
agreed to resolve domain-name
disputes brought by third parties in accordance
with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
December 5, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of December 26, 2002, by which Respondent could file a Response to the
Complaint, was transmitted to Respondent
via e-mail, post and fax, to all
entities and persons listed on Respondent’s registration as technical,
administrative and billing
contacts, and to postmaster@geapliances.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the Forum transmitted
to the parties a Notification of Respondent Default.
On
January 3, 2003, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Hon.
Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility
under Paragraph 2(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to
employ reasonably available
means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with
ICANN Policy, ICANN Rules, the
Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response
from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations:
The
<geapliances.com> domain name
is confusingly similar to Complainant's GE mark.
Respondent
has no rights or legitimate interests in the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B. Respondent failed to submit a Response.
FINDINGS
Complainant has used its GE mark for some
100 years. Complainant is the sixth
largest company in the United States and the ninth largest company in the
world, according to Fortune Magazine’s American and Global 500 for 2002.
Complainant holds numerous registrations for its GE mark including Registration
Numbers 2,621,463;
2,615,488; 2,612,853 and 2,631,839 with the United States Patent
and Trademark Office. Complainant uses
its GE mark in connection with a variety of goods and services, including
appliances, financial services, lighting
products, plastics and industrial
goods and services. Complainant
provides a full line of appliances under the GE mark and holds the domain name
registration for <geappliances.com>.
Respondent, RaveClub Berlin, registered
the disputed domain name April 30, 2001.
Respondent is also known as John Zuccarini, a notorious cybersquatter,
who has registered thousands of domain names reflecting misspellings
of
well-known marks. Respondent currently
is using the disputed domain name in order to redirect Internet traffic to a
pornographic website located at
<hanky-panky-college.com>.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to
“decide a complaint on the basis of the statements and documents submitted in
accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's
undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
will draw such inferences as the Panel considers
appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph
4(a) of the Policy requires that Complainant must prove each of the following
three elements to obtain an order that a domain
name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has
rights; and
(2)
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain name has been registered and is being used in bad faith.
Complainant established in this
proceeding that it has rights in the GE mark through registration with the
United States Patent and
Trademark Office and subsequent continuous use.
The domain name registered by Respondent,
<geapliances.com>, is confusingly similar to Complainant’s GE mark
because it incorporates Complainant’s mark and merely adds a misspelled version
of “appliances.” Complainant is engaged in the business of selling appliances,
therefore the addition of the misspelled word “apliances”
to the end of its GE
mark does not create any distinct characteristics capable of overcoming a claim
of confusing similarity. See Space Imaging
LLC v. Brownwell, AF-0298 (eResolution
Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name
combines Complainant’s mark with
a generic term that has an obvious
relationship to Complainant’s business); see also Victoria’s
Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding
that, by misspelling words and adding letters to words, a Respondent does not
create a distinct mark but nevertheless renders the domain name confusingly
similar to Complainant’s marks).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Respondent has failed to come forward
with a Response. Therefore, it is
presumed that Respondent has no rights or legitimate interests in the disputed
domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no
legitimate interest
in the domain names).
Furthermore, when Respondent fails to
submit a Response the Panel is permitted to make all inferences in favor of
Complainant. See Talk City, Inc.
v. Robertson, D2000-0009, (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”).
Respondent is using the disputed domain
name in order to redirect Internet traffic to <hanky-panky-college.com>,
a pornographic
website. This type of
use does not give rise to rights or legitimate interests pursuant to Policy ¶
4(c)(i) because it is not considered to
be a bona fide offering of goods or
services. Nor does this type of use
give rise to rights or legitimate interests pursuant to Policy ¶ 4(c)(iii)
because the redirecting of Internet
users to a pornographic website is not a
legitimate, noncommercial or fair use. See
Brown & Bigelow, Inc. v. Rodela,
FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's
well-known mark to provide a link to a pornographic
site is not a legitimate or
fair use); see also MatchNet plc. v. MAC Trading,
D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of
goods or services to use a domain name for commercial
gain by attracting
Internet users to third party sites offering sexually explicit and pornographic
material where such use is calculated
to mislead consumers and to tarnish
Complainant’s mark).
Respondent is commonly known as RaveClub
Berlin and John Zuccarini. Mr.
Zuccarini is a notorious cybersquatter and has registered thousands of domain
names that infringe on the marks of others.
No evidence on record contradicts this fact and therefore the Panel may
infer that Respondent is not commonly known as GE APLIANCES
or <geapliances.com>. Hence, Respondent has no rights or
legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and
never applied for a license
or permission from Complainant to use the trademarked name); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc.,
FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights
or legitimate interests in domain names because
it is not commonly known by
Complainant’s marks and Respondent has not used the domain names in connection
with a bona fide offering
of goods and services or for a legitimate
noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Paragraph 4(b) of the Policy outlines
four circumstances that give rise to bad faith. These four criteria are not meant to be exclusive and as a result
numerous other situations can be evidence of bad faith on the part
of
Respondent. See Educ. Testing Serv. v. TOEFL,
D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “[I]ndicates that its
listing of bad faith factors is without limitation”);
see also CBS Broad., Inc. v. LA-Twilight-Zone,
D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other
circumstances can be evidence that a domain name
was registered and is being
used in bad faith”).
Based on the fame of Complainant’s mark
and the fact that Respondent is a notorious cybersquatter who has engaged in
the practice
of typosquatting thousands of times, it can be inferred that
Respondent had knowledge of Complainant’s rights when it registered
the
disputed domain name. Registration of a
domain name, despite knowledge of Complainant’s rights is evidence of bad faith
registration pursuant to Policy
¶ 4(a)(iii).
See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24,
2002) (holding that “there is a legal presumption of bad faith, when Respondent
reasonably should
have been aware of Complainant’s trademarks, actually or
constructively”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135,
1148 (9th
Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a
mark he knows to be similar to another, one can
infer an intent to
confuse").
Respondent is using the disputed domain
name in order to divert Internet users to a pornographic website. It can be inferred that Respondent is making
a profit from this activity. Therefore,
Respondent is creating a likelihood of confusion for its own commercial gain,
which is evidence of bad faith registration
and use pursuant to Policy ¶
4(b)(iv). See Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding bad faith where Respondent linked the domain name
in question to websites displaying banner
advertisements and pornographic
material); see also Youtv, Inc. v.
Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where
Respondent attracted users to his website for commercial gain
and linked his
website to pornographic websites).
The Panel finds that Policy ¶ 4(a)(iii) has
been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby
GRANTED.
Accordingly, it is Ordered that the domain name <geapliances.com> be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: January 13, 2003.
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