WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
General Electric Company v. Stephen Harper, a.k.a. HarperStephens
Case No. D2000-1497
1. The Parties
The Complainant is General Electric Company ("Complainant"), a New York corporation with its principal place of business at 3135 Easton Turnpike, Fairfield, Connecticut, USA.
The Respondent, Stephen Harper ("Mr. Harper"), is listed as the Administrative and Billing Contact for the registrations of the domain names in issue and lists a postal address of P.O. Box 1022, Agoura Hills, California, USA. The Respondent, HarperStephens ("HarperStephens") is listed as the registrant of the domain names in issue and lists the same postal address as Mr. Harper. The Complainant asserts that HarperStephens is a sole proprietorship owned by Mr. Harper or a pseudonym used by Mr. Harper. No evidence has been presented to rebut this assertion. Accordingly, based upon this assertion and the evidence submitted, the Panelist will hereafter refer to Mr. Harper and HarperStephens, both individually and collectively, as the "Respondent".
2. The Domain Names and Registrars
Thirty-five domain names registered to the Respondent are the subject of the Complaint in this proceeding. Since the filing of the Complaint, three domain names, "", "" and "", registered with Network Solutions, Inc. ("NSI") located at 505 Huntmar Park Drive, Herndon, Virginia, USA, have been removed from this proceeding by the Complainant.
Thirty-two domain names remain in issue. They include "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "" and "" registered with NSI and "" and "" registered with Melbourne IT, Ltd., D/B/A Internet Names Worldwide ("Melbourne IT"), located at Level 2, 120 King Street, Melbourne, Australia.
3. Procedural History
On November 1, 2000, the Complainant filed a Complaint with the WIPO Arbitration and Mediation Center ("Center") concerning the domain names "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "" and "". On November 10, 2000, the Center sent an "Acknowledgement of Receipt of Complaint" by e-mail to the Complainant and a copy of the Acknowledgement to the Respondent.
On November 12, 2000, the Center sent a "Request for Verification" concerning the domain names "" and "" to Melbourne IT. On November 12, 2000, Melbourne IT provided to the Center a Verification to the Request stating, in pertinent part, that: (i) it is the registrar of the domain names "" and ""; (ii) "HarperStephens" is the current registrant of the domain name registrations with a listed mailing address of P.O. Box 1022, Agoura Hills, CA 91301 USA; (iii) "Stephen Harper" is the administrative contact for the domain name registrations with a listed e-mail address of harperstephens@; (iv) the "UDRP" applies to these domain names; and (v) the domain names are currently "licensed".
On November 12, 2000, a "Request for Verification" concerning the domain names "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "" and "" was sent to NSI.
On November 13, 2000, NSI provided Verification Responses to the Center indicating that it had received the Complaint from the Complainant for these domain names. With respect to the domain names "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "" and "", NSI indicated that: (i) it is the registrar of these domain names; (ii) "HarperStephens" is the current registrant of the domain name registrations with a listed postal address of P.O. Box 1022, Agoura Hills, CA 91301 USA; (iii) "Stephen Harper" is the administrative and billing contact for the domain name registrations with a listed e-mail address of HarperStephens@; (iv) NSI�s 5.0 Service Agreement is in effect; and (v) the registrations for these domain names are "on Hold". With respect to the domain names "", "", "" and "", NSI indicated that the registrations for these four domain names had been deleted for non-payment of the registration fees and were available for re-registration.
The Center proceeded to send an e-mail message to the Complainant on November 15, 2000, indicating that three domain names, "", "" and "", were available for re-registration for reason of non-payment. The fourth domain name, "", also available for re-registration, was not mentioned. On November 21, 2000, the Complainant�s counsel responded to the Center�s message by e-mail indicating that the Complainant would re-register the three domain names and that the Complaint should go forward with regard to all of the other domain names in issue. On November 21, 2000, the Center responded by e-mail to the message from the Complainant�s counsel indicating that the Complaint would be amended and that the proceeding would proceed without the domain names "", "" and "".
On November 23, 2000, the Center found the Complaint to be in compliance with the formal requirements of ICANN�s Uniform Domain Name Dispute Resolution Policy ("Policy"), ICANN�s Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and WIPO�s Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").
On November 23, 2000, the Center sent a "Notification of Complaint and Commencement of Administrative Proceeding" and the Complaint to the Respondent with copies to the Complainant, ICANN, NSI and Melbourne IT. The Respondent failed to submit any response within the twenty-day period set forth in paragraph 5(a) of the Rules. On December 15, 2000, the Center sent a "Notification of Respondent Default" to the Respondent by e-mail with a copy of the Notification to the Complainant. On January 11, 2001, the Center sent a "Notification of Appointment of Administrative Panel and Projected Decision Date" by e-mail to the parties notifying them that an Administrative Panel consisting of a single Panelist had been appointed in the proceeding.
On January 11, 2001, the Center received an e-mail message from the Respondent inquiring as to the proper response address for sending a response in this proceeding. On January 11, 2001, the Center responded to the Respondent�s e-mail message reaffirming that: (i) the Center had sent Notifications to the Respondent concerning this proceeding; (ii) the Respondent had failed to submit a Response by the required deadline; (iii) the Center had received no previous communications from the Respondent concerning this proceeding; and (iv) the panel for the proceeding had been appointed and that it was up to the Panelist to decide whether or not to accept a Response from the Respondent after the response deadline.
Based upon a review of the record for this proceeding, the Panelist concurs with the Center�s finding that the Complaint is in compliance with the Policy, Rules and Supplemental Rules and finds that the panel was properly constituted and appointed. Further, the Panelist finds that the Center has fully discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent" of this proceeding and that the Respondent is in default for failing to file a Response by the required deadline. Accordingly, the Panelist shall draw such inferences from the Respondent's default as the Panelist considers appropriate based upon paragraph 14(b) of the Rules and shall issue a decision based on the Complaint, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complaint is based on the mark GE registered with the U.S. Patent and Trademark Office. To support its Complaint, the Complainant relies on the following U.S. trademark and service mark registrations: Reg. No. 1,173,260 (safety glass); Reg. No. 1,183,818 (glass bulbs without filaments); Reg. No. 1,197,111 (electric motors); Reg. No. 1,201,681 (electronic and cathode ray tubes); Reg. No. 1,203,475 (electric refrigerators); Reg. No. 1,250,353 (road atlases); Reg. No. 1,259,944 (clocks); Reg. No. 1,261,106 (ashtrays); Reg. No. 1,263,387 (key chains and key rings); Reg. No. 1,265,733 (umbrellas); Reg. No. 1,272,822 (neckties); Reg. No. 1,283,076 (windshield scrapers); Reg. No. 1,317,546 (cleaning and polishing preparations for metals); and Reg. No. 1,679,636 (credit agency services). Copies of the printouts for each of these registrations based on search results of the U.S. Patent and Trademark Office online trademark database were attached as Exhibit C.
A search result from a query of NSI�s Whois database shows that the domain names "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "" and "" were registered on March 30, 2000, to the Respondent. There are no corresponding Web sites accessible at these domain names.
A search result from a query of NSI�s Whois database shows that the domain names "", "" and "" were registered on March 15, 2000, to the Respondent. There are no corresponding Web sites accessible at these domain names.
A search result from a query of NSI�s Whois database shows that the domain names "" and "" were registered on April 6, 2000, to the Respondent. The Panelist found that there are Web sites accessible at these domain names with both sites displaying the same content - multiple banner advertisements for domain name registration, shopping, auctions, advertising, sports information and ticket exchange as well as a pop up window for a site entitled "Welcome to AmericanS" located at "americans".
Search results from queries of NSI�s Registrar and Registry Whois databases show that the domain name "" is not registered and is currently available for registration. Since the domain name is no longer registered to the Respondent, the Panelist finds that the Complainant�s request that the domain name "" be transferred to it is moot and that the domain name is no longer in issue in this proceeding.
5. Parties� Contentions
A. Complainant
The Complainant asserts that it is engaged in the manufacture, advertising, distribution and sale of a wide variety of products and services to the general public and to diverse businesses and industries throughout the United States. Among the most familiar of its products are aircraft engines, household appliances and lighting.
The Complainant asserts that it owns a myriad of registrations for its GE trademark and has long used the trademark GE in connection with a plethora of goods and services, including, but not limited to, electric motors (reg. no. 1197111), safety glass (reg. no. 1173260), glass bulbs without filaments (reg. no. 1183818), electric refrigerators (reg. no. 1203475), electric lighting fixtures (reg. no. 1203475), electronic and cathode ray tubes (reg. no. 1201681), key chains and key rings (reg. no. 1263387), windshield scrapers (reg. no. 1283076), road atlases (reg. no. 1250353), clocks (reg. no. 1259944); umbrellas (reg. no. 1265733), neckties (reg. no. 1272822), ashtrays (reg. no. 1261106), cleaning and polishing preparations for metals (reg. no. 1317546), insurance brokerage services (reg. no. 1679636), credit agency services (reg. no. 1679636), credit card services (reg. no 1679636), real estate loan financing services (reg. no 1679636), and banking and financial services (reg. no. 1679636). (printouts of these registrations attached as Exhibit C).
The Complainant asserts that the GE trademark and the goodwill associated with it are exceedingly valuable corporate assets belonging to the Complainant, that the Complainant has made substantial investments to advertise, market and promote the GE trademark and that the GE trademark is among the most famous and recognizable trademarks used in commerce today.
The Complainant asserts that on May 31, 2000, its counsel sent the Respondent a letter advising the Respondent of the Complainant�s ownership of nineteen of the GE marks at issue and instructing the Respondent to cease and desist from further use of the GE mark. (copy of letter attached as Exhibit D). The Complainant asserts that the Respondent did not respond to that letter and that on September 27, 2000, its counsel spoke with Mr. Stephen Harper via telephone. The Complainant asserts that during the phone call, its counsel advised Mr. Harper of GE�s exclusive rights to the domain names at issue and requested that Mr. Harper transfer those names to GE. The Complainant asserts that on October 3, 2000, its counsel sent the Respondent a letter via e-mail again asserting GE�s exclusive rights to the domain names at issue and demanding that the Respondent cease and desist from any further efforts to use or maintain the rights to GE-related domain names. (copy of e-mail attached as Exhibit E). The Complainant asserts that as of the date of the Complaint, the Respondent has not responded to that e-mail and has taken no steps to transfer the domain names in issue to the Complainant.
The Complainant asserts that its registration of the GE trademark is "prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant�s ownership of the mark, and of the registrant�s exclusive right to use the mark in commerce or in connection with the goods or services specified in the registration" (15 U.S.C. � 1115) and that each of the registrations submitted with the Complaint have been in continuous use for a period in excess of five years. The Complainant asserts that its right to use the GE trademark in commerce for the goods or services on or in connection with the GE trademark is incontestable (15 U.S.C. � 1065), that its incontestable right to use the GE mark constitutes conclusive evidence of the validity of the GE trademark and of the registration of the mark, of its ownership of the mark and exclusive right to use the mark in commerce (15 U.S.C. � 1115(b)) and that any and each of its registrations constitute constructive notice to all persons of its rights in the mark (15 U.S.C. � 1072).
The Complainant asserts that the Respondent�s registration of thirty-five domain names that each contain the GE mark as a prefix constitutes the registration of domain names that are identical or confusingly similar to the Complainant�s GE trademark.
The Complainant asserts that the Respondent has no trademark or other intellectual property rights in the GE domain names at issue and that the Respondent has no history of prior use of these or any other GE domain names in connection with a bona fide offering of goods or services, nor are there any indicia that Respondent has taken demonstrable affirmative steps to use the domain names to make such offerings in the future. The Complainant further asserts that the Respondent does not appear to have made any fair use of the GE trademark in connection with any website or other commercial activity and therefore has no rights or legitimate interests in the thirty-five GE domain names.
The Complainant asserts that the Respondent�s registrations of the catalogue of GE-related domain names is part of a bad faith pattern of cybersquatting conduct, that the Respondent�s apparent business model, the hoarding or warehousing of domain names that contain famous marks is, by itself, sufficient proof of the Respondent�s bad faith and that the Respondent has offered to sell some or all of the GE-related domain names to GE. (Exhibit E).
The Complainant asserts that the Respondent�s registration of some thirty-five domain names bearing the GE trademark unquestionably constitutes a pattern of cybersquatting conduct and conclusively demonstrates the Respondents� bad faith registration and use of the GE trademark in order to prevent the Complainant from reflecting the GE mark in corresponding domain names. In addition, the Complainant asserts that the Respondent has registered in excess of one hundred other domain names in which the Respondent appears to have no rights or legitimate interests (e.g., , and ). (Printout of lists of domain names registered to the Respondent is attached as Exhibit F).
The Complainant asserts that the Respondent�s registration of the thirty-five contested GE domain names prevents the Complainant from using these domain names, which correspond to the Complainant�s registered GE trademark, and that the overwhelming evidence of the Respondent�s bad faith coupled with a lack of any rights or legitimate interests in the Complainant�s registered GE trademark constitutes an infringement of the Complainant�s trademark rights and a violation of the Policy.
Based upon the above, the Complainant requests that the Panelist transfer the domain names in issue to it.
B. Respondent
No response was received from the Respondent with respect to this proceeding.
6. Discussion and Findings
The Proceeding - Three Elements
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party complainant asserts to an ICANN approved dispute resolution service provider that:
(i) the domain name holder�s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights ("Element (i)"); and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name ("Element (ii)"); and
(iii) the domain name of the domain name holder has been registered and is being used in bad faith ("Element (iii)").
The Panelist, however, can only rule in the Complainant�s favor after the Complainant has proven that the above-listed elements are present.
Element (i) - Domain Names Identical or Confusingly Similar to the Mark
The Complainant has provided sufficient evidence showing that it is the owner of the mark GE. A review of the second-level domains of the domain names "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "" and "" shows that each domain comprises the Complainant�s mark GE as a prefix and a word or an abbreviation hyphenated therefrom that corresponds to the goods and services for which the mark is registered or can be viewed as being associated therewith. The idea suggested by these domain names in view of the Complainant�s registered marks and the Complainant�s long-time use of these marks is that any possible goods or services offered in association with these domain names are authorized by the Complainant and that any possible site associated with these domain names is a site authorized by the Complainant. The Panelist therefore finds that the above-identified domain names ("Domain Names in issue") are confusingly similar to the Complainant�s mark GE and that Element (i) has been satisfied.
However, with respect to the domain names, "" and "", the Panelist is not persuaded that these domain names are either identical or confusingly similar to the Complainant�s mark. The Complainant has only asserted that these domain names containing the GE mark as a prefix constitute "the registration of domain names that are identical or confusingly similar to the Complainant�s GE trademark." However, looking to the second-level domains of these domain names, the word "gee" also has dictionary meanings unrelated to the Complainant. In addition, the Complainant has presented evidence, albeit contrary to its intention, showing that the Respondent has registered a variety of domain names that could be viewed as generic or open to interpretation. Without more from the Complainant, the Panelist finds that it has not satisfied Element (i) with respect to the domain names "" and "".
Element (ii) - Rights or Legitimate Interests in the Domain Names
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panelist to be proven based on its evaluation of all of the evidence presented, can demonstrate the holder�s rights to or legitimate interests in the domain name. These circumstances include:
(i) before any notice to the holder of the dispute, the holder�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 holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder 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.
No evidence has been presented that before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the Domain Names in issue in connection with any type of bona fide offering of goods or services or that the Respondent is commonly known by any of the Domain Names in issue.
Nor has any evidence been presented that the Respondent could be considered as making any type of legitimate noncommercial or fair use of the Domain Names in issue. Although two of the Domain Names in issue, "" and "", do have corresponding Web sites, the Panelist�s review of these sites find that the Respondent is using these domain names to misleadingly divert consumers to sites with numerous click-through banner advertisements and pop-up windows. Such use of these domain names by the Respondent cannot be considered as being legitimate noncommercial or fair use. Accordingly, the Panelist therefore concludes that the Respondent has no rights or legitimate interests in the Domain Names in issue and that Element (ii) has been satisfied.
Element (iii) - Domain Names Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has 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 the holder�s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder�s web site or other online 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 or service on the holder�s web site or location.
The Panelist finds that the Respondent had actual knowledge of the Complainant�s mark GE and its rights therein at the time the Respondent registered the Domain Names in issue. This finding is based upon the GE mark being well known and having a strong reputation, as supported by the uncontested evidence submitted by the Complainant, and in view of the number of Domain Names in issue registered by the Respondent that are confusingly similar to the Complainant�s mark GE.
In further support of its assertion of bad faith by the Respondent, the Complainant has submitted evidence of additional domain names that the Respondent has registered that incorporate the marks of others and in which the Respondent apparently has no rights or legitimate interests therein. The Complainant also asserts that the Respondent "offered to sell some or all of the GE-related domain names to GE" and provided a copy of a letter from its counsel to the Respondent in which its counsel states that the Respondent had been "in touch with GE personnel in both St. Louis and Connecticut and had offered to sell to GE the �geassetcapital� domain names, as well as other GE-related domain names." Although no evidence has been submitted to rebut this assertion, the Panelist is hesitant to find that such a statement in a letter by the Complainant�s counsel, without more, is enough to show bad faith within the meaning of the Policy.
The Panelist, however, notes that the Respondent has been found to have registered and used numerous domain names incorporating the marks of others in bad faith in other Policy decisions. See, e.g., Time Warner Entertainment Company, L.P. v. HarperStephens, WIPO Case No. D2000-1254 (December 13, 2000) ("", etc.); Universal City Studios, Inc. v. HarperStephens, WIPO Case No. D2000-0716 (September 5, 2000) ("", etc.). In addition, the Panelist notes that two of the Domain Names in issue resolve to sites where the Respondent is using the Complainant�s mark in the domain names to intentionally attract and subject users to advertising/promotional sites with click-through banner advertisements and pop-up windows. Although the remaining twenty-seven domain names do not resolve to Web sites, such does not preclude the Panelist from finding that the Respondent is using these domain names in bad faith.
Accordingly, when viewing the findings and evidence submitted in their entirety, the Panelist concludes that the Respondent has registered the Domain Names in issue in order to prevent the Complainant from reflecting its mark in corresponding domain names and that the Respondent has clearly engaged in "a pattern of such conduct" of registering domain names incorporating the marks of others in which the Respondent has no rights or legitimate interests. The Panelist therefore finds that Element (iii) has been satisfied with respect to the Domain Names in issue.
7. Decision
With respect to the domain names "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "" and "", the Panelist concludes that the Complainant has proven all three elements in paragraph 4(a) of the Policy.
With respect to the domain names "" and "", the Panelist finds that the Complainant has not proven all three elements in paragraph 4(a) of the Policy.
Based upon the above, the Panelist requires the registrations of the domain names "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "", "" and "" be transferred to the Complainant.
Marylee Jenkins
Sole Panelist
Dated: February 7, 2001
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