General Electric Company v. Motor Home By
Tel
Claim Number: FA0211000135017
PARTIES
Complainant
is General Electric Company,
Fairfield, CT (“Complainant”) represented by Martin B. Schwimmer, of
Martin Schwimmer Esq. Respondent is Motor Home By Tel, San Antonio, TX
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <geextendedwarranty.com>
and <geextendedwarranties.com>, registered with Network Solutions.
PANEL
The
undersigned certifies that he has acted independently and impartially and, to
the best of his knowledge, has no known conflict in serving as Panelist in this
proceeding.
The
Honorable Charles K. McCotter, Jr. (Ret.) 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
December 2, 2002, Network Solutions confirmed by e-mail to the Forum that the
domain names <geextendedwarranty.com> and <geextendedwarranties.com> are registered with Network
Solutions and that Respondent is the current registrant of the names. Network Solutions has verified that
Respondent is bound by the Network Solutions 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@geextendedwarranty.com
and postmaster@geextendedwarranties.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 7, 2003, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (Ret.) 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 the
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 names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<geextendedwarranty.com>
and <geextendedwarranties.com> domain names are confusingly
similar to Complainant's GE mark.
Respondent
has no rights or legitimate interests in the disputed domain names.
Respondent
registered and used the disputed domain names in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
FINDINGS
Complainant holds numerous trademark
registrations for its GE mark with the United States Patent and Trademark
Office including Registration Number 2,642,943. Complainant is the sixth largest company in the United States and
the ninth largest company in the world.
Complainant has been named one of America’s “Most Admired Companies” by Fortune
magazine. Complainant, in addition to
manufacturing services, has a substantial financial services division that
includes such services as business finance, real estate finance, asset
management, insurance services, and credit card services. Complainant’s warranty services are for items
such as appliances and automobiles.
Respondent registered the disputed domain
name on September 13, 1999. Respondent
is using the disputed domain name in order to advertise warranty services known
as “United States Warranties” for motor homes.
The website does not make any reference to Complainant’s GE mark or
warranty services. Respondent does not
have a license or permission from Complainant to use the GE mark.
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
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph
4(a) of the Policy requires that the 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 has established that it has
rights in its GE mark through registration with the United States Patent and
Trademark Office and its continuous and extensive use.
Respondent’s <geextendedwarranty.com>
and <geextendedwarranties.com> domain names are confusingly
similar to Complainant’s mark because they merely add the descriptive terms
“extended warranty” and “extended warranties” to the end of Complainant’s
mark. Complainant is engaged in the
business of providing warranties for appliances and other goods, therefore the
addition of the words “extended warranty” and “extended warranties” to the end
of Complainant’s mark merely describes Complainant’s business, and does not
create any distinct features capable of overcoming a claim of confusing
similarity. See
Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum
Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is
confusingly similar to Complainant’s HOYLE mark, and that the addition of
“casino,” a generic word describing the type of business in which Complainant
is engaged, does not take the disputed domain name out of the realm of
confusing similarity); see also 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).
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 names. 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 names in order to display a website for “United States Warranties,” a
warranty service for motor homes. The
use of the domain names, confusingly similar to Complainant’s mark, to attract
Internet users to a website unconnected to Complainant is not a use in
connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See
Big Dog Holdings, Inc. v. Day,
FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when
Respondent was diverting consumers to its own website by using Complainant’s
trademarks); see also Household
Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000)
(inferring that Respondent registered the domain name
<householdbank.com>, which incorporates Complainant’s HOUSEHOLD BANK
mark, with hopes of attracting Complainant’s customers and thus finding no rights
or legitimate interests).
The disputed domain names display a website for “United
States Warranties,” and there is no reference to Complainant’s GE mark or
Complainant’s warranty services at the disputed domain names. Furthermore, there is no evidence on record,
and Respondent has not come forward with any proof that it is commonly known as
GE EXTENDED WARRANTY, GE EXTENDED WARRANTIES, <geextendedwarranty.com>
or <geextendedwarranties.com>.
Therefore, the Panel finds that Respondent has no rights or legitimate
interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum
Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is
not commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain
names in order to attract Internet users interested in Complainant to its own
unconnected website advertising motor home warranties. It can be inferred that Respondent is making
a profit by selling warranties to Internet users that are directed to its
website. Respondent is therefore
creating a likelihood of confusion for its own commercial gain through its use
of <geextendedwarranty.com> and <geextendedwarranties.com>. This type of behavior is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its
diversionary use of Complainant's mark when the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to Policy
¶ 4(b)(iv)); see also State Fair
of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000)
(finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe on Complainant’s goodwill and attract Internet
users to Respondent’s website).
Based on the well-known nature of
Complainant’s GE mark it can be inferred that Respondent had actual or
constructive knowledge of Complainant’s rights in the mark when it registered
the disputed domain names. Registration
of confusingly similar domain names, despite actual or constructive 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, 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").
Furthermore, Respondent registered two
domain names that infringe on Complainant’s GE mark at the same time. Registration of more than one infringing domain
name in the same instance is evidence of registration in bad faith pursuant to
Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247
(Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of
several infringing domain names satisfies the burden imposed by the Policy ¶
4(b)(ii)); see also Armstrong
Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000)
(finding that Respondent violated Policy ¶ 4(b)(ii) by registering multiple
domain names which infringe upon others’ famous and registered trademarks).
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 names <geextendedwarranty.com> and <geextendedwarranties.com> be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: January 13, 2003
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