WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
General Electric Company v. Resolution Diagnostics
Case No. D2005-0878
1. The Parties
1.1 The Complainant is General Electric Company, Fairfield, Connecticut, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
1.2 The Respondent is Resolution Diagnostics, Newport Beach, California, United States of America.
2. The Domain Names and Registrar
2.1 The disputed domain names and are registered with eNom.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August�17,�2005. On August�17,�2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On August�17,�2005, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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”).
3.2 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 August�24,�2005. In accordance with the Rules, paragraph�5(a), the due date for Response was September�13,�2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on September�15,�2005.
3.3 The Center appointed Jay Simon as the sole Panelist in this matter on September�28,�2005. 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.
3.4 The case file was transmitted electronically to the Panel on September�28,�2005, and a hard copy was forwarded to the Panel on the same day.
4. Factual Background
4.1 Complainant is a rather large organization usually ranking in the top 5 of Fortune 500 corporations. Through its Medical Systems unit, Complainant is, perhaps, the world leader in the supply of magnetic resonance imaging (mri) machines and components. In the past five years, Complainant’s sales of mri products have been in excess of one billion dollars in the Americas.
4.2 Complainant’s sales of mri products are through its business units, GE Medical Systems and GE Healthcare. The mri products are sold under the SIGNA trademark. There is little doubt that Complainant’s SIGNA mark is well known throughout medical circles worldwide, and that its business unit GE Medical Systems or GEMS is similarly well known.
4.3 Complainant is the owner of the SIGNA trademark, registered in the United States Patent and Trademark Office as Reg. No. 1,381,202, with a registration date of February�4,�1986. Other registrations including the SIGNA mark include SIGNA PROFILE, Reg. No. 2,635,782, October�15,�2000. The SIGNA mark is also registered in several other countries including Australia, Hong Kong (SRA of China), Brunei, India, Indonesia, Malaysia, New Zealand, Taiwan and Japan.
4.4 The term GEMS is used by Complainant as a trade name identifying its health care unit, and is not a registered mark.
4.5 Respondent appears to be a service organization involved in supplying mri apparatus, components therefor, and servicing mri machines. Respondent registered the disputed domain names in September 2001.
4.6 Nearly four years later, on June�14,�2005, Complainant sent a letter to Respondent demanding that Respondent immediately and permanently cease all use of the domain name and transfer that name to Complainant. Complainant took other steps to contact Respondent including posting the letter on Respondent’s online contact form on its website. Respondent has not responded to Complainant’s letter or any further efforts to contact Respondent. Complainant became aware of the registration and use of while investigating Respondent’s activities for the purpose of preparing the Complaint in these proceedings.
4.7 Respondent did not file a response in these proceedings and was notified of its default by the Center on September�15,�2005.
5. The Parties Contentions
A. Complainant
5.1 Complainant contends that because the disputed domain names fully incorporate Complainant’s mark and trade name, the disputed domain names are nearly identical or confusingly similar to its mark and trade name.
5.2 Complainant further contends that the addition of the term “mri”, which Complainant believes is a common or descriptive term is of no significance, the mark and trade name being uniquely associated with magnetic resonance imaging products.
5.3 Complainant contends that Respondent cannot demonstrate or establish any legitimate rights or interests in the disputed domain names, there being no relationship between Complainant and Respondent that might give rise to any license, permission, or other right by which Respondent could own or otherwise use the disputed domain names. Complainant further contends that its mark and trade name are so well known and recognized that Respondent can make no legitimate use of the disputed domain names.
5.4 Complainant further contends that Respondent registered the disputed domain names solely for commercial gain and to divert internet users to its website, and therefore, Respondent is making neither fair use nor non-commercial use of the disputed domain names. Complainant further contends that there is no evidence, nor could there be, that Respondent was known by either of the disputed domain names.
5.5 Complainant contends that bad faith registration and use of the disputed domain names is established because Respondent seeks to profit from the registrations. Bad faith registration and use is also shown, according to Complainant, by the re-direction of Internet users to Respondent’s website for Respondent’s commercial gain under paragraph 4(b)(iv) of the Policy, and that such re-direction is not a bona fide use of the disputed domain names.
5.6 Complainant requests that the disputed domain names be transferred to Complainant.
B. Respondent
5.7 Respondent has failed to respond to the Complaint and has not otherwise actively participated in these proceedings.
6. Discussion and Findings
6.1 Before discussing the merits of Complainant’s case, two threshold issues must be discussed. These are: 1) that GEMS is a trade name and not a registered or unregistered trademark; and 2) the passage of nearly four years before Complainant initiated steps culminating in these proceedings.
6.2 There has been and there remains some controversy regarding whether the Policy can be used to protect trade names. Indeed, the Report of the Second WIPO Internet Domain Name Process, September�3,�2001 states that
despite the majority of opinion that protection should be extended to trade names… we do not consider that it is appropriate to modify the UDRP so as to allow complaints for the bad faith and misleading registration and use of trade names… (see Paragraph 298-320, particularly Paragraph 318).
6.3 The Report notwithstanding, paragaraph 15(a) of the Rules permits a Panel to decide a complaint “on the basis of… any rules and principles of law that it may deem applicable.”
6.4 In the United States trade names may not be registered under U.S. trademark law, but trade names do enjoy protection under 15 U.S.C.�1125(a), and both Complainant and Respondent are based in the United States. Also, trade names used in commerce may acquire secondary meaning as identifying the goods or services of the provider. Such is the case here with the trade name GEMS (and Complainant has provided evidence of use of the name in commerce). For all of these reasons, this Panel finds that Complainant has rights in the GEMS trade name sufficient to bring these proceedings. See Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims, WIPO Case No. D2000-0819; also see Sintef v. S, WIPO Case No. D2001-0507 where a trade name in Norway was found to be protected under the Policy. For a contrary position, see University of Kontstanz v. , WIPO Case No. D2001-0744.
6.5 With regard to the passage of time: Respondent registered the disputed domain names in September 2001 and Complainant took no action until its cease letter of June�14,�2005. Clearly, Complainant has not acted expeditiously in protecting its rights under the Policy. Nevertheless, there is no evidence that Complainant knew or should have known of the existence of the disputed domain names at some earlier time. And any defenses that Respondent may have raised, e.g., laches, estoppel, are affirmative in nature and Respondent has failed to respond to the Complaint in these proceedings. Thus, the Panel has no choice but to ignore the passage of time between registration and Complainant’s initial activity leading to these proceedings.
6.6 The Policy as affected by the Rules and the Supplemental Rules provides specified remedies to holders of trademark rights against registrants of domain names where the rights holder (Complainant) proves each of the following elements:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(b) the registrant (Respondent) has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.
6.7 Complainant has the burden of proof, by a preponderance of the evidence, respecting each element noted above in Paragraph 6.6.
6.8 Respondent, having failed to respond in these proceedings, is in default, and in accordance with paragraphs 14(b) of the Rules, “the panel shall draw such inferences… as it considers appropriate”.
A. Identical or Confusingly Similar (paragraph 4(a)(i) of the Policy)
6.9 Complainant has shown registration in the United States Patent Office of its SIGNA mark, and has presented evidence that its GEMS trade name is well known. (For purposes of this decision GEMS will be referred to as a mark in which Complainant has rights.) The disputed domain names differ from Complainant’s marks by the addition of “mri” and, of course, the gTLD “.com”; and the disputed domain names incorporate the entirety of Complainant’s marks.
6.10 There is no doubt in this Panel’s mind that “mri” has become a generic term, readily familiar to the public, and descriptive of a particular procedure or apparatus for performing that procedure. Thus, the addition of a generic or descriptive word or term does not change the overall nature or impression of the marks such that the domain names are sufficiently different to avoid confusion. See, for example, Credit Suisse Group v. Kingdomdatanet Network, Inc., WIPO Case No.�D2004-0846; Pepsico, Inc. v. Pepsi, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a) EMS, WIPO Case No. D2003-0696. Neither does the addition of “.com” change the nature of the marks nor is it of significance, see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493. This Panel is also cognizant of the seminal decision regarding confusing similarity of domain names in EAuto, L.L.C. v. Triple S Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 to the effect that where a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the disputed domain name to render it confusingly similar. Therefore, this Panel finds that the disputed domain names are confusingly similar to marks in which Complainant has rights.
B. Lack of Rights or Legitimate Interests (paragraph 4(a)(ii) of the Policy)
6.11 Paragraph 4(c) of the Policy lists three non-exclusive methods for determining whether a respondent has rights or legitimate interests in a disputed domain name.
6.12 In respect of demonstrating a respondent’s lack of rights or legitimate interests in a disputed domain name, the burden of proof rests with complainant. However, where the complainant has made the necessary assertions, it is incumbent upon the respondent to come forward with evidence of its rights or legitimate interests in the disputed domain name, the respondent being uniquely possessed of this evidence, if such evidence exists. Respondent has failed to present any evidence regarding its rights or legitimate interests in the disputed domain names, and such failure is tantamount to admitting the truth of Complainant’s assertions; see Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.
6.13 There is no evidence that Respondent has been commonly known by either of the disputed domain names. Respondent’s default in these proceedings is particularly relevant in this regard. Nor is there any claim by Respondent that it is making a non-commercial or fair use of the disputed domain names without intent for commercial gain. Indeed, Complainant’s uncontested evidence is to the contrary. Further, there is no evidence that Respondent distributes or services Complainant’s mri machines in the sense of the test in Oki Data Americas, Inc. v. Credit Research, Inc., WIPO Case No.�D2001-0903.
6.14 Respondent’s use of the disputed domain names prior to these proceedings cannot be viewed as a bona fide offering of goods or services. The disputed domain names resolve to websites that offer similar goods and services as offered by Complainant. Thus, to this Panel, Respondent’s use of the disputed domain names was for the purpose of trading off the goodwill and reputation that Complainant has developed with its mark and trade name.
6.15 Complainant has also asserted, and there is no evidence to the contrary, that it has no business relationship with Respondent that would allow it to use Complainant’s mark or trade name. Thus, Respondent cannot be said to have legitimately chosen the disputed domain names “unless it was seeking to create an impression of an association” with Complainant, and to deliberately use those names to attract internet users to Respondent’s websites. See Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau, WIPO�Case No.�D2000-0172.
This Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
C. Registration and Use in Bad Faith (paragraph 4(a)(iii) of the Policy)
6.16 Paragraph 4(b) of the Policy indicates several, non-exclusive indicia of bad faith registration and use of a disputed domain name. For these proceedings paragraph 4(b)(iv) is relevant.
6.17 This Panel finds it difficult to believe that Respondent was unaware of Complainant’s marks. Thus, Respondent’s websites offer goods and services for mri apparatus, and Complainant is the leader in this business. It is highly likely, therefore, that Respondent attempted to take unfair and pecuniary advantage of Complainant by using domain names confusingly similar to Complainant’s marks and thereby attract internet users to its websites by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of products or services on Respondent’s website. See Soci�t� des Hotels M�ridien v. La Porte Holdings, Inc., WIPO Case No.�D2004-0849.
6.18 In so far as the trade name GEMS is concerned, there is no evidence that Respondent’s use of the trade name is fair use to identify competing goods or services, nor is there evidence that Respondent’s use of the trade name is non-commercial, or news reporting; see 15 U.S.C. 1125(c)(4). Complainant’s uncontested evidence is to the contrary.
6.19 This Panel finds that the disputed domain names were registered and are used by Respondent in bad faith.
7. Decision
7.1 For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, this Panel orders that the domain names and be transferred to Complainant.
Jay Simon
Sole Panelist
Dated: October�12,�2005
Full & Egal Universal Law Academy