General Electric Company v. Japan Inc.

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

General Electric Company v. Japan, Inc.

Case No. D2001-0410

1. The Parties

Complainant is General Electric Company ("GE"). Complainant’s address

is 3135 Easton Turnpike, Fairfield, CT 06431, USA. Respondent is Japan,

Inc. ("Japan, Inc.").

Respondent’s address is 495 Ashford Avenue, Ardsley, NY 10502, USA.

2. The Domain Name and Registrar

This dispute concerns the following domain name: <japan-ge.com> ("Domain

Name"). The registrar with which the domain name is registered is Network

Solutions, Inc.

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received the Complaint

by e-mail and in hard copy on March 22, and March 26, 2001, respectively. The

Center verified that the Complaint 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 WIPO

Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental

Rules). Complainant made the required payment to the Center. The formal date

of the commencement of this administrative proceeding is March 28, 2001.

Issuance of Complaint

The Complaint indicates that NSI WHOIS ("NSI") records for the Domain

Name lists Respondent Japan, Inc. at the following address: 495 Ashford Avenue,

Ardsley, NY 10502, USA. Complainant sent a copy of the Complaint by e-mail

to Respondent. Japan, Inc. is the Administrative and Billing contact for the

Domain Name.

Confirmation of Registration Details

On March 27, 2001, the Center transmitted, via e-mail to NSI, a request for

registrar verification in connection with this case. On March 28, 2001, NSI

transmitted by e-mail to the Center, their verification response confirming

the domain name <japan-ge.com> is registered through NSI and that Japan

Inc. is the Registrant and the Administrative Contact.

Notification of Complaint

On March 28, 2001, the Center transmitted to the Respondent, Notification of

Complaint and Commencement of the Administrative Proceeding. The Center advised

that the Response was due by April 16, 2001.

Filing of Response

On April 17, 2000, Respondent filed a Response by e-mail.

Supplemental Submissions

Complainant submitted to the Center a Reply to Respondent’s Response, dated

May 10, 2001, and Respondent submitted an Objection to that Reply,

dated May 11, 2001. The Center furnished to the Panel electronic files

of these supplemental submissions.

Constitution of Administrative Panel

On May 18, 2001, the Center notified the parties via e-mail that the Administrative

Panel would consist of Professor Frederick M. Abbott and M. Scott Donahey and

Mr. David Everett Wagoner as the Presiding Panelist.

Compliance with the formalities of the Policy and the Rules

Upon review of the file, the Panel concludes that the Center has fully complied

with the formalities of the Policy and Rules, that Respondent was given adequate

notice of this proceeding, and that Respondent has been accorded due process.

4. Factual Background

(1) Since long prior to Respondent’s registration of the domain name, 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. A large number of Complainant’s GE Marks is registered

with government authorities in the United States. A Representative listing of

the GE Marks that Complainant has registered with the United States Patent and

Trademark Office is set forth in paragraph 11(a) of the Complaint.

(2) 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.

(3) 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.

(4) The Complainant owns and has registered the domain name <ge.com>

and it maintains an active web site at <ge.com>. Complainant also owns

and has registered the domain name <gejapan.com> and it maintains an active

web site at <gejapan.com>.

(5) In addition, Complainant owns and operates numerous domain names using

"GE" as part of their name, in combination with a geographic name,

such as <ge-china.com>, <ge-hongkong.com>, <ge-asia.com>,

<ge-australia.com>, <ge-israel.com>, <ge-romania.com>, and

many others, some of which are maintained as active websites, such as <ge-china.com>.

(6) Respondent is the business of selling gas turbines, components, spare parts,

and related equipment, some of which were originally manufactured by Complainant

and others by Complainant’s competitors. Respondent registered the domain name

for use in connection with these sales activities.

(7) The website operated at <japan-ge.com> states as follows:

Japan Inc. is an independent company dealing in the purchase and sale of Industrial

Gas Turbines, Generators, Process and Pipeline Compressors.

Our services include major component and parts support.

We hold an extensive inventory of General Electric, Westinghouse, Rolls-Royce

& Ruston turbines, components and spare parts.

Please contact us both for your needs, and disposal of your excess equipment.

(8) On or about March 21, 2000, Counsel for the Complainant, Patrick Murphy,

sent a letter to Respondent by certified mail, demanding that it cease and desist

its use of the domain name. On or about April 14, 2000, Respondent responded

to Mr. Murphy, rejecting Complainant’s demand for reasons reflected in

its response to the complaint in this proceeding.

5. Parties’ Contentions

A. Complaint

The Complaint alleges that the Domain Name is nearly identical and confusingly

similar to the GE Marks, that Respondent registered the Domain Name in bad faith

for the purpose of capitalizing on the famous GE Marks and profiting from the

international and domestic goodwill GE has built up in its famous trademarks

and that Respondent has no rights or legitimate interests in respect of the

Domain Name.

B. The Response

Respondent alleges that the domain name is not identical or confusingly similar

to any trademark held by Complainant, that Respondent has legitimate interests

in respect of the Domain Name since Respondent is using the domain name in connection

with a bona fide offering of goods prior to notice of the dispute and Respondent’s

use is a fair use and that Respondent has neither registered nor used the domain

name in bad faith.

6. Discussion and Findings

As a preliminary matter, the Panel does not accept the supplemental Reply to

Respondent’s Response submitted by Complainant. The Panel has discretion to

accept supplemental submissions. However, in the present proceeding, Complainant’s

Reply does not address facts asserted by Respondent that Complainant should

not reasonably have been aware of when preparing in its initial submission.

Neither does Complainant’s Reply address legal arguments from Respondent that

Complainant may not have reasonably foreseen. There is insufficient basis for

the Panel to accept Complainant’s supplemental submission.

Paragraph 4(a) of the Policy directs that Complainant must prove, with respect

to the domain name in issue, each of the following:

(1) The domain name in issue is identical or confusingly similar to the Complainant’s

trademarks or service marks; and,

(2) The 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.

Paragraph 4(b) of the Policy sets out four illustrative circumstances, any

one of which for purposes of Paragraph 4(a)(iii), shall be evidence of the registration

and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any

one of which, if proved, shall demonstrate Respondent’s rights or legitimate

interests to the domain name for purposes of Paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar Domain Name

Complainant has proved that Respondent’s Domain Name is confusingly similar

to trademarks or service marks in which GE has rights.

The addition of the word "Japan" to "GE" has no trademark

significance and does not eliminate a likelihood of confusion with Complainant’s

trademarks or service marks. For example, in NIKE, Inc. v. Jaeik Jung

(WIPO Case No. D2000-1471; decided December

30, 2000), the Panel, in assessing the registration of the domain name <nike-europe.com>

(and other variants thereof), stated as follows:

All of the additions to the trade marked word are for the geographical suffix

or prefix "europe" or its close variant ("euro"). Geographical additions do

not alter the underlying meaning of a domain name, so as to avoid confusing

similarity. This has been held in many UDRP cases (citing cases).

Likewise, in Inter-IKEA v Polanski (WIPO

Case No. D2000-1614; decided January 22, 2001), in connection with the domain

name<ikeausa.com>, the panel stated:

Given the fame of the IKEA mark and also the activities of the Complainant

in Poland, including a furnishing outlet in Krakow, it is inconceivable that

the Respondent was unaware of the Complainant before registering <ikeausa.com>.

Furthermore, it can be considered to be common knowledge of Internet users that

the abbreviation "USA" stands for "The United States of America". It can therefore

reasonably be excluded beyond any doubt that the Respondent created a fantasy

name, which happened to consist of the word ‘ikea’ and the letters ‘usa.’ (emphasis

added).

Respondent is using the Domain Name in connection with sale of GE turbines,

components and spare parts, as well as in connection with the sale of equipment

manufactured by GE’s competitors. By creating a Domain Name that uses the mark

GE together with Respondent’s name, Respondent is improperly confusing consumers

into believing that they have reached GE’s website for Japan, or -- in the alternative

-- creating a false impression that Respondent is associated or affiliated with

GE.

B. Respondent’s Rights or Legitimate Interests in the Domain Name

In the alternative to asserting that the Domain Name is not confusingly similar

to Complainant’s well-known GE mark, Respondent claims fair use rights in Complainant’s

mark on grounds that it is a reseller of used GE power generation equipment.

As such, Respondent asserts that it is legitimately using the GE mark for purposes

of advertising the availability of properly trademarked goods to the public.

A reseller of trademarked goods that is unaffiliated with or unauthorized by

a trademark holder may well have certain fair use rights regarding the mark,

depending upon the specific context of the use. If resellers were unable to

refer to marks they would not be able to properly identify their resale goods

to the public. There is a substantial body of judicial authority in the United

States and elsewhere that establishes this fair use right, and Respondent has

cited some of that authority to the Panel. (Footnote

1) However, this fair use right is carefully bounded by the requirement

that a reseller not make use of the mark in a way that is likely to confuse

consumers as to an affiliation between the trademark holder and the reseller

(Footnote 2) Courts have generally disallowed the use

by an unaffiliated reseller of another party’s trademark on a sign identifying

a business, unless the signage expressly includes language sufficient to notify

the consumer that the business is not affiliated with or authorized by the trademark

holder. (Footnote 3)

In the instant proceeding:

(1) Respondent registered the Domain Name without the consent or approval of

GE.

(2) Respondent is not commonly known by the Domain Name. Respondent is doing

business in New York State under the name "Japan Inc."

(3) Although "Japan" is Respondent’s name, as of the date of the

filing of this Complaint, Respondent has not filed a trademark application with

the USPTO for "Japan."

(4) The Domain Name is being used to offer GE products for resale. Respondent

has no license or agreement with GE to distribute its products or act on its

behalf or use its trademarks. Respondent’s use of the Domain Name as a principal

identifier of its business on the Internet implies that Respondent is affiliated

with GE or is otherwise acting with the consent of GE. There is nothing in the

Domain Name to suggest in any way that Respondent is independent of GE. Instead,

Respondent has used the GE mark in the Domain Name in a manner directly comparable

with the way that GE uses its mark in domain names identifying its websites.

(5) Respondent’s website identified by the Disputed Domain name (that uses

Complainant’s mark) in fact offers for resale the products of a number of manufacturers

whose products compete with Complainant’s products. Respondent is not in this

sense fairly using Complainant’s mark because it is using the mark to direct

consumers to competing products.

On the basis of the foregoing factors, the Panel finds that Respondent has

no rights or legitimate interests in the Domain Name.

C. Domain Name Registered and Used in Bad Faith

The Panel finds that the Domain Name has been registered and is being used

in bad faith.

The Domain Name is designed to imply that there is an affiliation between Respondent

and Complainant or that GE endorses Respondent’s activities even though no such

affiliation or endorsement exists. ICANN panels have addressed such situations

in several instances and have consistency held that it is bad faith to misrepresent

an affiliation with a third party where none exists. In a case with similar

facts, Caterpillar Inc. v. Matthew Quin (WIPO

Case No. D2000-0314; decided June 12, 2000), the panel found for Complainant,

holding:

The second element which the Complainant is required to prove is that the Respondent

has no rights or legitimate interest in respect of the domain names in dispute.

The domain names in dispute suggest some affiliation or connection of the Respondent

with the Complainant when there is no such affiliation or connection. ... Companies

or individuals seeking spare parts for Caterpillar equipment would enter the

disputed domain names expecting to contact Caterpillar Inc. or one of its distributors.

In fact, the company or person entering the disputed domain name ends up at

a web page not affiliated or associated with the Complainant. The Respondent

has no rights or legitimate interest in respect of the disputed domain names.

Similarly, in Amway Corp. Inc. v. Business Internet Connection and Rex Mehta

(WIPO Case No. D2000-1118; decided November

26, 2000), the panel held that:

While Mr. Mehta contends that he is an IBO [Independent Business Operator]

of Amway and, thus, authorized to sell Amway goods, Complainant asserts that,

even if such is true, Mr. Mehta is not authorized to use the AMWAY mark in a

domain name. Based on this unrebutted assertion, the Panel concludes that Mr.

Mehta's status as an Amway IBO does not provide him "rights or legitimate interests"

in the domain name.

See also Caterpillar, Inc. v. DES-CATE Sociaded Limitada (NAF 96077;

decided December 26, 2000), (rejecting the right of a registrant to use the

mark of the complainant simply because it was selling parts of the complainant).

Regardless of the nature of Respondent’s business and its dealing with products

of GE, it is unauthorized to use the GE Marks in connection with its business

or imply that there is an affiliation, association, or endorsement of its business

by GE through its use of the Domain Name. Respondent’s Domain Name is likely

to confuse consumers to believe that they have reached a website of GE, given

GE’s extensive number of domain names that include a geographic designation,

such as <ge-china.com> and <ge-asia.com>.

The Panel stresses that independent resellers under appropriate circumstances

have rights to make use of trademarks to properly identify resale goods. There

may be circumstances in which such use would be appropriate in a domain name.

Here, however, the geographical indicator <japan-ge.com> clearly suggests

an affiliation with GE. On the website identified by the Domain Name, Respondent

sells products from various manufacturers. The use of the trademark GE in the

second level domain is not properly descriptive of Respondent's business, and

is not a fair use of Complainant’s mark.

7. Decision

In light of the foregoing, the Panel decides that:

(1) The Domain Name registered by Respondent and at issue here is confusingly

similar to Complainant’s trademarks,

(2) The Respondent has no rights or legitimate interests in respect of the

Domain Name at issue, and

(3) The Domain Name at issue has been registered and is being used in bad faith

by Respondent.

Accordingly, the Panel decides that the Registration of the Domain Name set

forth in paragraph 2 of this Decision shall be transferred to Complainant.

David Everett Wagoner

Presiding Panelist

Frederick M. Abbott

Panelist

M. Scott Donahey

Panelist

Dated: June 14, 2001

Footnotes:

1. See Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (9th

Cir. 1969). (back to text)

2. McCarthy frames the rule as follows: "A dealer who specializes in selling,

servicing or repairing a certain brand of product has the right to so inform

the public, so long as the dealer's advertising and use of another's mark does

not confuse the public into thinking that it is an authorized agent." J.

Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 25:50 (4th

ed. 1996 and updated). (back to text)

3. Id. (back to text)

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