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Famous, Not Distinctive

Trademark infringement there may be, but that is for another forum. General Electric Company v. Estephens Productions, D2009-1438 (WIPO December 17, 2009): “If the Complainant believes that the Respondent’s company name and logo infringe the GE mark, it may seek a judicial remedy.” However, “[f]or purposes of the UDRP … the reflection of the Respondent’s company name in the Domain Name satisfies paragraph 4(c)(ii) of the Policy, and the Respondent’s actual use of the Domain Name is consistent with paragraph 4(c)(i).” The Panel draws a distinction between trademarks like GE which are “undeniably famous” and the simplicity of the phonemes, “simply .. two letters of the alphabet that might well be used legitimately by others as an abbreviation.”

In fact, that appears to be the case with this Respondent. According to records unearthed by the Complainant – the Respondent did not appear – the Respondent is a legitimate limited liability company registered in the State of Georgia as “G.E. Entertainment.” The first and obvious question is, Is the Respondent for real? According to the website to which <geentertainment.com> resolves the “G.E.” is an abbreviation of “Global Executives.” A domain name can be confusingly similar to the Complainant’s trademark yet have been registered and be used in good faith. The Respondent is in the business of representing “rap” vocalists “whose music the company records.” It offers music CDs for sale and arranges and promotes live appearances by its artists.

It is clear that the Panel has undertaken his own research, to review the Respondent’s website and to examine the Complainant’s most recent annual report. Although it is true that the Complainant is also in the business of entertainment, it “appears from the record in this proceeding …that [its] entertainment products and services are marketed under the NBC and Universal names and a variety of marks associated with particular broadcasting and cable channels, websites, and production studios.” The annual report shows that the Complainant lists 23 ‘brands’ used in its ‘Media and Entertainment’ business, but “[n]ot one of them includes the letters ‘GE’.”

The Panel draws a distinction between this case and other UDRP cases in which General Electric prevailed. In neither of the other two cases cited by the Complainant “was the respondent known by a name corresponding to the domain name at issue or using the domain name appropriately in connection with its business under that name, as is the Respondent in this proceeding.” Thus,

it is hardly obvious, as the Complainant insists, that the Respondent chose the names G.E. Entertainment and Global Executives Entertainment, or the Domain name <geentertainment.com>, in a blatant effort to capitalize on the GE mark. In fact, it is not at all clear why that mark, most commonly associated with home appliances and industrial equipment, would prove to be an irresistible attraction to adolescents devoted to rap music.

It is a basic principle under UDRP jurisprudence that there be proof that the respondent targeted the complainant and its trademark for commercial gain and that the purpose of the registration was to take advantage of the complainant’s reputation to attract Internet visitors to its website. There is no evidence of that in the record and if that cannot be demonstrated the complainant loses.

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