The Complainant is General Electric Company of United States of America represented by Kilpatrick Stockton LLP of United States of America.
The Respondent is Fei Liu of the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2010. On July 22, 2010, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On July 23, 2010, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on July 28, 2010.
The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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” ).
On July 26, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On July 29, 2010 the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date.
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 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23 2010.
The Center appointed Jonathan Agmon as the sole panelist in this matter on August 30, 2010. 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. 4. Factual Background
The Complainant, General Electric Company, is an American based company that traces back to the year 1878. Nowadays, the Complainant engages in the fields of technology, energy, industrial and financial services, providing a wide array of products and services to customers in more than 100 countries.
The Complainant expended significant resources in promotion and advertisement worldwide, and has established significant Internet presence over the years. The Complainant’s efforts were fertile. For example, in 2009, Forbes magazine ranked the Complainant first on its list of "The Global 2000" and Business Week magazine ranked the Complainant fourth on its list of "100 Best Global brands".
The Complainant has been using its initials – GE in commerce since 1899. The Complainant has sold billions of dollars worth of products and services under the GE marks and has spent billions of dollars advertising the GE marks. The Complainant continues to use and advertise the GE marks extensively in connection with its wide range of goods and services.
The Complainant has named and promoted a number of its business units and divisions using the GE mark in combination with other terms, for example: GE ENERGY, GE POWER, GE LIGHTING, GE APPLIANCES, GE MONEY etc.
The Complainant owns multiple trademark registrations for the mark GE in many countries around the world. For example: United States (Hereinafter: "US") trademark registration No. 929,056 – GE logo, with the registration date of February 15, 1972; US trademark registration No. 1,045,777 – GE logo, with the registration date of August 10, 1976; US trademark registration No. 1,197,111 – GE, with the registration date of June 8, 1982; Hong Kong trademark registration No. 2000B07374AA – GE, with the registration date of November 30, 1998; Chinese trademark registration No. 3045960 – GE, with the registration date of February 7, 2005; US trademark registration No. 3,296,336 – GE, with the registration date of September 25, 2007; US trademark registration No. 3,308,707 – GE, with the registration date of October 9, 2007; Community trademark registration No. 005920781 – GE, with the registration date of May 19, 2008; and others.
The Complainant has also developed a formidable presence on the Internet and is the owner of several domain names, which contain the term “ge”. For example: ; ; ; and others. The Complainant is using these domain names in connection with its activities.
The WILSOM mark is used and owned by a third party – FG Wilson (Engineering) Ltd. (Hereinafter: "FG Wilson"), which manufactures and distributes generators and other power products around the world.
FG Wilson owns multiple trademark registrations for the mark WILSON in many countries around the world. For example: Chinese trademark registration No. 12337597 – WILSON (in traditional Chinese characters), with the registration date of January 7, 1999; Chinese trademark registration No. 1241931 – WILSON (in Chinese characters), with the registration date of January 21, 1999; US trademark registration No. 3,750,710 – FG WILSON, with the registration date of February 16, 2010; and others.
The Complainant and FG Wilson signed an agreement, authorizing the Complainant to raise FG Wilson's rights in the WILSON marks and to request that the disputed domain name be transferred to the Complainant.
The disputed domain name was registered by the Respondent on June 5, 2007.
The disputed domain name resolves to an on-line marketplace, which offers for sale electrical devices, namely generators, pumps, engines, construction machines and concrete mixers etc., that appear to carry the GE and WILSON marks. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to the GE trademarks, owned by the Complainant, and to the WILSON trademarks, owned by FG Wilson, seeing that it incorporates the trademarks as a whole. The Complainant further argues that the additional hyphen, separating the marks in the domain name, is insufficient to avoid confusing similarity and in fact emphasizes the two trademarks in the domain name.
The Complainant further argues that it has exclusive rights to the GE trademarks and that FG Wilson has exclusive rights to the WILSON marks as these trademarks are widely recognized with the Complainant and FG Wilson and with their operations. Furthermore, the Complainant argues that it has not licensed or permitted the Respondent to use the GE marks.
The Complainant further argues that the Respondent did not make legitimate use in the disputed domain name.
The Complainant further argues that the disputed domain names are likely to mislead or confuse the public as to their source or origin, and the public is likely to believe that the Complainant and FG Wilson have authorized or endorsed the Respondent.
The Complainant further argues that the Respondent has registering and is using the disputed domain name solely for commercial gain and is attempting to free-ride the goodwill associated with the GE and/or WILSON marks. The Complainant argues that this evidence the Respondent's bad faith.
The Complainant further argues that the Respondent is attempting to promote the sale of products that compete with the Complainant's products, under the disputed domain name. The Complainant argues that this constitute trademark infringement and unfair competition and therefore amounts to bad faith.
The Complainant further argues that the Respondent submitted false / incomplete contact information to the Registrar is a further indication of bad faith.
The Complainant further argues that the Respondent was using the disputed domain names to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark.
The Complainant further argues that the Respondent was aware of the Complainant’s and FG Wilson's existence and of the GE and WILSON marks and products at the time he registered the disputed domain name.
For all of the above reasons, the Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Issue – Language of the Proceedings
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the registration agreement for the disputed domain names is Chinese.
The Complainant requested that the language of the proceedings should be in English.
The Panel cited the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceedings:
a) The website operating under the disputed domain name is entirely in English and does not incorporate the Chinese language;
b) The advertisements in the website that operates under the disputed domain name are in English;
c) The Respondent appears to be proficient in the English language, whereas the Complainant is not proficient in the Chinese language.
d) The Respondent did not object to the Complainant’s request that English be the language of proceedings.
Upon considering the above, the Panel decides to render the Complainant’s request and rules that English be the language of the proceedings. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The GE trademark is registered in the name of the Complainant in various jurisdictions around the world. For example, US trademark registration No. 929,056 – GE logo, with the registration date of February 15, 1972; US trademark registration No. 1,045,777 – GE logo, with the registration date of August 10, 1976; US trademark registration No. 1,197,111 – GE, with the registration date of June 8, 1982; Hong Kong trademark registration No. 2000B07374AA – GE, with the registration date of November 30, 1998; Chinese trademark registration No. 3045960 – GE, with the registration date of February 7, 2005; US trademark registration No. 3,296,336 – GE, with the registration date of September 25, 2007; US trademark registration No. 3,308,707 – GE, with the registration date of October 9, 2007; Community trademark registration No. 005920781 – GE, with the registration date of May 19, 2008; and others.
The disputed domain name consists of a combination of the Complainant's registered GE trademark with the trademark WILSON, a hyphen and the generic TLD indicator ".com", which is not taken into consideration when determining confusing similarity. The mark WILSON is a trademark belonging to the FG Wilson Corporation and is associated with the provision of generators and other power products. The term GE (ge in the disputed domain name) will be taken to be the main and more influential part since it is located at the beginning of the disputed domain name (See The American Automobile Association, Inc. v. Domain Name Agent,WIPO Case No. D2010-0018). The fact that the mark WILSON appears after the registered trademark GE may indicate to Internet users a connection between the Complainant and the owner of the mark WILSON. (See Saab Automobile AB, et al. v. Joakim Nordberg,WIPO Case No. D2000-1761).
The Complainant was authorized by the owner of the WILSON mark to raise its rights and request that the domain name be transferred to the Complainant. The Panel notes that even if the owner of the WILSON mark had not authorized the Complainant, it would not have changed the result of this decision, as the fact that the disputed domain name incorporates the Complainant's trademark with a third party's trademark (in this case "WILSON") does not serve sufficiently to distinguish the disputed domain name from the Complainant's trademark and does not offend the Complainant's possible rights to the disputed domain name (Société Air France v. Domain Park Limited,WIPO Case No. D2007-0818).
The additional hyphen does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s GE trademarks and FG Wilson's WILSON mark. Previous WIPO UDRP panels have ruled that the mere addition of a non significant element does not sufficiently differentiate the domain name from the registered trademark: Indeed, “the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
The addition of a generic top-level domain (gTLD) “.com” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since use of a gTLD is technically required to operate the domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name.
The result is that the Complainant has shown that the above disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
Consequently, the Panel finds that the Complainant had shown that the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lack rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that he has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the domain name and the Respondent had failed to assert any such rights, or legitimate interests.
The Panel finds the Complainant has established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the GE trademark, or a variation thereof. The Respondent has not submitted a Response and has not provided any evidence to show he has any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).) .
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant has registered its trademark. According to the evidence filed by the Complainant, the Complainant owns registrations for its GE trademark at least since the year 1972. The WILSON mark has been registetred in the name of FG Wilson at least since 1999. It is suggestive of the Respondent’s bad faith that the trademarks, owned by the Complainant and FG Wilson, were registered long before the registration of the disputed domain name (See Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use if the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the web site or other on-line location to which the disputed domain name is resolved to, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location to which the disputed domain name is resolved to.
The disputed domain name resolves to a market place, which offers for sale power products. The Respondent’s use of the GE and WILSON marks to promote goods that are regularly sold by the Complainant clearly indicates that the Respondent registered these disputed domain names with knowledge of the Complainant and of the use the Complainant is making in the GE mark and subsequent intent to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. Indeed, the use the Respondent made in the disputed domain names for quasi-identical goods to the ones the Complainant manufacture and markets constitutes bad faith on behalf of the Respondent (See Schur International A/S v. Jorge Massa,WIPO Case No. D2009-0450).
The Panel cites the following with approval: “when a domain name is so obviously connected with a Complainant, it’s very use by a registrant with no connection to the Complainant suggests ‘opportunistic’ bad faith” (Tata Sons Limited v. TATA Telecom Inc/T, Mr. Singh,WIPO Case No. D2009-0671).
The Panel also notes that the disputed domain name is confusingly similar to the Complainant’s trademark and FG Wilson's mark. Previous WIPO UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior WIPO UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
Based on the evidence presented on the use of the GE trademark and the use of the WILSON trademark and the evidence submitted as to use made by the Respondent in the domain name, the Panel can draw the inference that the disputed domain name was registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain name in bad faith. 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 name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: September 12, 2010
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