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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi

Case No. D2007-0645

1. The Parties

The Complainant is General Electric Company, GE Osmonics Inc., Fairfield, Connecticut, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.

The Respondent is Optima di Federico Papi, Palestrina, Italy, represented by Federico Papi, Italy.

2. The Domain Name and Registrar

The disputed domain name <ge-merlin.com> is registered with Register.IT SPA.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2007. On April 30, 2007, the Center transmitted by email to Register.IT SPA a request for registrar verification in connection with the domain name at issue. On May 3, 2007, Register.IT SPA transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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”).

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 May 15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2007. The Response was filed with the Center on June 4, 2007.

The Center appointed Michael J. Spence as the sole panelist in this matter on July 11, 2007. 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.

The language of the registration agreement used in connection with the disputed domain name is Italian. Nevertheless, on May 15, 2007, the Center communicated to the parties that subject to the Panel’s determination the Center would process the Complaint in English, but that a Response could be submitted in either English or Italian. This was on the basis that the Complaint contained communications between the Parties in English. The Response was submitted in Italian. The Complainant claims that this put the Respondent at no disadvantage because: their correspondence with the Respondent has always been in English; the site posted at the disputed domain name is in English; the Respondent has an administrative contact e-mail address on the “.uk” registry; and the proprietor of the Respondent claims to be a citizen of the United Kingdom. The Respondent claims that its proprietor has been a resident, rather than a citizen of the United Kingdom, and that refusing to supply a translation of the Complaint is an attempt by the Complainant to give it an unfair advantage in the proceedings. As a general rule, complaints ought to be available in the language of the registration agreement or where there are mitigating factors in a language in which a respondent is known to be proficient, and that neither party should use the language requirement for other purposes. Having read both the Complaint and the Response, the Panel is satisfied that the Respondent has understood the Complaint sufficiently for no injustice to have been caused by the processing of the Complaint in English and the Response in Italian.

4. Factual Background

The GE mark is one of the most well-known marks in the world and has been used by the Complainant in a variety of electrical and associated goods and services for over a century. It is claimed to be the fourth most valuable brand in the world. The Merlin mark has been used by the Complainant since as early as April 2004, in connection with high-quality water treatment systems and water filter and purifying units for both domestic and commercial use. The Respondent operates a business supplying water treatment and water filtering and purifying units including those of the Complainant, though it is not an authorized distributor of, or dealer in, those units. At the site operated under the disputed domain name, it offers the genuine products of the Complainant under the relevant marks. The site bears a disclaimer disassociating itself from the Complainant, the text of which the Complainant claims to be inadequate, but the Respondent claims was agreed with the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the domain name is identical with, or confusingly similar to its GE and MERLIN marks. It claims that the Respondent has no right or legitimate interest in the domain name because there is no connection between the Respondent and the Complainant and the name is neither being used in connection with a bona fide offering of goods or services, nor for a legitimate non-commercial or fair use. It also claims that the Respondent is attempting to use the name to extort a distributorship relationship with the Complainant. Finally, the Complainant asserts that the Respondent’s use of the disputed domain name is in bad faith because the Respondent has sought to profit from the domain name by using it to create an affiliation with the Complainant. In particular, it relies upon National College Athletic Association and March Madness Athletic Association L.L.C. v. Mark Halpern and Front & Center Entertainment, WIPO Case No. D2000-0700 to claim that “domain names are not analogous to ordinary “billboards” because domain names are addresses, and each domain name “implies an authorized relationship with the owner of the mark included in the domain name”. It further claims that the Respondent’s bad faith is evinced by its response to the Complainant’s request to transfer the domain name, at which point the Respondent asked either for compensation for the transfer of the domain name, or a distributorship relationship. Finally, the Complainant asserts that the disclaimer is ineffective.

B. Respondent

The Respondent agrees that the disputed domain name is identical to the Complainant’s mark. However, the Respondent argues that the name is being used to supply the genuine and legitimately purchased goods of the Complainant and that it ought to be able to identify the goods it supplies using the Complainant’s marks. Indeed, the Respondent points out that it uses the ‘TM’ symbol in relation to those marks, acknowledging the Complainant’s rights. It asserts that the decisions about which the Complainant’s case is built refer to situations not involving the supply of genuine goods under the mark, but rather counterfeits of one kind or another. Further, it argues that the text of the disclaimer was agreed with the Complainant and adequately distinguishes the Respondent from the Complainant. It asserts that its response to the Complainant’s request to transfer the disputed domain name was not in bad faith, but an attempt to seek compensation for the damage that it would cause to the Respondent’s legitimately created business.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant and Respondent both agree that the Complainant’s marks and the disputed domain name are identical.

The Panel therefore finds that the first element of paragraph 4(a) of the Policy is established in relation to the disputed domain name.

B. Rights or Legitimate Interests

It is for the Complainant to establish, at least prima facie that the Respondent has no rights or legitimate interests in the disputed names (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

The crux of the dispute between the parties in relation to this element of paragraph 4(a) of the Policy, is whether the relevant use amounts to a bona fide offering of goods under paragraph 4(c)(i) of the Policy. The Respondent’s claim that the use was bona fide rests on the two issues that the goods advertised on the site are genuine goods, legitimately acquired, and that the site contains a disclaimer denying any association between the Respondent and Complainant and redirecting internet users who have arrived at the site by mistake to the Complainant’s own site. This disclaimer both ‘tops’ and ‘tails’ the Respondent’s site. The Complainant’s claim rests inter alia on a stated lack of Respondent’s conceivable rights or legitimate interests in light of the fame of Complainant’s marks, and that there is no relationship between it and Respondent giving rise to any license, permission, or other right by which Respondent could own or use a domain name incorporating Complainant’s GE or MERLIN marks.

The current state of panel decisions in relation to this disputed issue is helpfully summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions as follows:

“A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.”

This summary is based on panel decisions such as Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095. The position it outlines is more balanced in its approach to the respective interests of complainants and respondents than that of the earlier decision in National College Athletic Association and March Madness Athletic Association L.L.C. v. Mark Halpern and Front & Center Entertainment, WIPO Case No. D2000-0700 which, in any case, does not sit squarely with the facts of the dispute in issue.

Complainant claims that Respondent’s use of the disputed domain names does not satisfy the conditions of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 inter alia because it is not offering products for sale on the site. Respondent claims that this is because its ‘on -line shop’ is not yet operative. It is in Respondent’s favor that the provided evidence indicates that the Respondent has made at least some preparation for using the site in this way and appears to offer contact details on the site through which Complainant’s trademarked products can be purchased. The site also purports to offer only goods legitimately bearing Complainant’s trade mark and there is no evidence of an intention to ‘bait’ internet users with Complainant’s products and then to ‘switch’ them to products produced by Respondent. Respondent also points to the presence of disclaimers on its website making it very clear that there is no relationship between Complainant and the Respondent. However, while those disclaimers may well be effective in disabusing internet users of an confusion once they arrive at Respondent’s site, they clearly do not offset the obvious risk of so-called ‘initial interest confusion’. It is highly likely that many of those encountering the domain name through a search engine will believe that the site is operated either by Complainant or by a licensee or authorized distributor.

The question that therefore arises is whether Respondent has a legitimate interest in using a domain name that is identical to Complainant’s trade marks in circumstances that are very likely to give rise to initial interest confusion, even though it may be selling Complainant’s legitimately trade marked goods at the site and any such confusion is likely to be dispelled once internet users arrive at the site because of its disclaimers? In considering that question, the Panel is mindful that while a person may very well be perfectly entitled (for reasons of fair competition or otherwise) to offer for sale (or re-sale) a trademark owner’s genuine branded goods, that does not necessarily extend to a right to do so through a domain name that is virtually identical to that trademark owner’s mark or marks. It is noteworthy in this respect that the Oki Data conditions have generally been applied by panels in cases involving authorized resale or distributorship arrangements. In the relatively limited number of cases where panels have been prepared to find bona fide use in the absence of authorization, the domain names at issue have tended to be at least distinguishable in some way from the complainant’s mark. On balance, the existing panel decisions suggest that where there is no authorization, the combination of an identical trademark in a domain name and the ensuing likelihood of initial interest confusion alone ought to be sufficient to demonstrate that Respondent has no legitimate interest in this case and the Panel has adopted this approach. While the approach of the existing panel decisions may be thought to have potentially anti-competitive effects, it is likely also to lead to greater transparency in the conduct of on-line business and does not, on balance, unduly inhibit competition with the trademark owner.

Accordingly, the Panel, on balance, finds that the Complainant has satisfied the second element of Paragraph 4(a) of the Policy in relation to the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name was clearly registered by the Respondent with knowledge of the Complainant and its GE and MERLIN marks. While the Panel accepts that the Respondent may very well have been genuinely intending to use the disputed domain name to offer for sale only the Complainant’s branded products, and indeed to date that does appear to be the case from the provided evidence, the Panel believes that the logic of the existing decisions is that knowingly profiting from initial interest confusion is sufficient to constitute bad faith. Nor is the Respondent likely to have been unaware that its registration of this particular domain name would have the effect of preventing the Complainant from registering its own marks in a corresponding domain name, and that the Complainant may subsequently develop an interest in the acquisition of the domain name, or at least in reaching a mutually profitable accommodation with the Respondent in relation to its use. Indeed, the Respondent appears to have subsequently used its ownership of the disputed domain name as a possible leverage point in attempting to negotiate a distributorship arrangement with the Complainant.

In the circumstances, the Panel, on balance, finds that the Complainant has satisfied the third element of Paragraph 4(a) of the Policy in relation to the disputed domain name.

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 <ge-merlin.com> be transferred to the Complainant.

Michael J. Spence
Sole Panelist

Dated: July 30, 2007