WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kabushiki Kaisha Hitachi Seisakusho (Japan Corporation) d/b/a Hitachi Limited v. Yosi Hasidim
Case No. D2000-1542
1. The Parties
The Complainant is Kabushiki Kaisha Hitachi Seisakusho (Japan Corporation) d/b/a Hitachi Limited ("Hitachi") a company incorporated in Japan in or about 1910 and having a principal place of business at Tokyo, Japan. It has places of business through subsidiary or associate companies world-wide. It is represented by Mr Jonathan Cohen of Shapiro, Cohen, Ottawa, Ontario, Canada.
The Respondent is Yosi Hasidim of 48 Hanesieim, Petah Tikva, il, 49550, Israel. The Respondent is unrepresented.
2. The Domain Name and Registrar
The domain name the subject of the dispute is "hitachistore.com" first registered on November 26, 1999.
The Registrar with which the domain name is registered is Network Solutions, Inc of Herndon, Virginia, United States.
3. Procedural History
On November 9, 2000 the Complaint by Hitachi was received by WIPO by email.
On November 13, 2000 the Complaint was received by WIPO in hard copy.
On November 20, 2000 the Registrar responded to a request for Registrar Verification of November 16, 2000.
On November 21, 2000 a Formal Requirements Compliance Checklist was completed.
On November 21, 2000 a Formal Notification of Complaint and Commencement of Administrative Proceeding was sent to the Complainant, the communication records being forwarded to the Respondent.
On December 12, 2000 a Respondent Default Notification was issued.
On January 11, 2001 a Notification of Appointment of Administrative Panel and projected decision date was sent to the Complainant and Respondent together with transmission of case file letters.
The Respondent has defaulted and filed no submissions. The Sole Administrative Panel has accordingly proceeded to determine the dispute in accordance with the Uniform Domain Name Dispute Resolution Policy and the Rules made thereunder.
4. Factual Background
The Complainant, Hitachi, is a well known Japanese Zaibatsu that has grown to become one of the leading international corporations. It was founded in 1910. It has over 1000 subsidiary companies in its group located in over 37 countries. Members of the Hitachi Group are engaged in manufacturing, sales and service and create over 320,000 jobs world-wide. Consolidated sales for the group for year ended March 2000 amount to US$75.5 billion.
Hitachi has continuously and exclusively used the trade mark HITACHI for nearly a century and licenses its use to its over 1000 subsidiary or associate companies around the world. The Complainant has registered its house trade mark HITACHI and other marks bearing the house mark in combination with other marks or signs in 194 countries including Japan, the United States and Israel. The house mark registrations encompass a wide variety of classes under the Nice Classification.
The house mark has been extensively promoted and advertised for many years. For year ended March 2000 the consolidated advertising expense featuring the house mark Hitachi was US$421 million.
In Japan in accordance with Japanese law, the mark has been recognised as famous allowing for defensive registrations covering the majority of classes of goods and services.
The Respondent is not associated with the Complainant in any way nor licensed or authorised by it to use the mark. The Respondent has defaulted and therefore has provided no response to the Complaint.
Access to the disputed domain name electronically resolves to a generic website hosted for free for a business which suggests it offers web hosting and e-business services, but unrelated to the Complainant.
The disputed domain name web page contains no reference to Hitachi or Hitachi goods or services in the advertisements which appear on the page. Whether or not the Respondent uses the web page to advertise and gain revenue therefrom is unclear.
5. The Parties' Contentions
The Complainant contends that any visitor to the website of the Respondent accessed by the disputed domain name would reasonably expect to be accessing a website associated in some way with Hitachi. It is contended that the Hitachi mark is so well known or famous that that is the only reason why a visitor would access the site.
It is said that the real distinctive mark is Hitachi and the addition of the generic or descriptive word "store" adds nothing to the distinctive mark.
The Complainant also contends that the Respondent cannot establish any rights or legitimate interest in the domain name. Further it is contended that the Respondent has registered the domain name wrongfully and reference is made to a number of other domain names registered by or associated with the Respondent.
The Respondent failed to respond to letters before action from the Complainant's counsel. Although communication errors were occasionally encountered it appears that by various means the communications were transmitted and likely received.
The Complainant further contends that the Respondent is associated with a company called Orcom which has the same contact details as the Respondent in the WHOIS database.
The various domains registered include "or-com.com" which is the website of Orcom Communications, an Israeli company involved in the manufacture and distribution of electronic equipment, but not including Hitachi goods or services.
The website details of Orcom Communications give the same contact details as for the Respondent in the WHOIS database.
The Complainant therefore submits that the Respondent would more likely be known under or by reference to the mark ORCOM and not the mark HITACHI. There is further no evidence of any link or association between the Respondent, the Orcom website and Hitachi which would provide the Respondent with a legitimate interest in the domain name or any justification for its registration and use.
The Respondent has defaulted and therefore the Panel has no submissions from the Respondent in response to the Complaint nor any evidence on which the Respondent may seek to rely in defence of the registration. The Panel accepts nevertheless that the Complainant must still make out its case to warrant relief.
6. Discussion and Findings
The Policy adopted by ICANN is directed towards resolving disputes concerning allegations of abusive domain name registrations.
As part of the process the Complainant must provide evidence and submissions in support of its Complaint. The Respondent is given full opportunity to respond. In this case the Respondent has defaulted and placed no evidence nor any submissions before the Panel.
Rule 4(a) of the Policy sets out three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) The Respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name: and
(iii) The Respondent's domain name has been registered and is being used in bad faith.
Each of the three elements must be proved by a Complainant to warrant relief.
As to Rule 4(a)(i) the Panel relies on and refers to a number of the earlier decisions of panelists involving famous or well known marks, including that in America Online Inc v Dolphin@Heart, WIPO Case No. D2000-0713. Reference is made in particular to the statement of the Panelist at page 7 of that decision. The Panelist also refers to the earlier decision cited by the Complainant Kabushiki Kaisha Hitachi Seisakusho (Japan Corporation) d/b/a Hitachi Limited v Fortune International Development Ent. Co Ltd, WIPO Case No. 2000-0412.
The exhibits to the Complaint (Annexures C-H) provide compelling evidence of the existence of the extensive registered and unregistered trade mark rights of Hitachi and the goodwill associated therewith, including in Israel.
The Panelist finds that no reasonable, intelligent person, in virtually any jurisdiction world-wide, could fail to be aware, in connection with the manufacture, supply and advertising of commercial and industrial goods and services of the mark HITACHI, that when the mark is used in conjunction with some other descriptor or indicator such as "store" that it designates a source or medium through which Hitachi goods or services may be viewed, acquired or assessed. The inference is inescapable that a person doing so will obviously assume the domain name and any associated website if there be one is part of or associated with the Hitachi Group. So strong internationally is the mark HITACHI that the conclusion is ineluctable that the use of that mark together with any other descriptor would be taken as being use of the mark in connection with some business associated with the Complainant.
The Panel accepts the Complainant's assertion that the addition of the word "store" adds nothing to or detracts from the distinctive mark HITACHI. Moreover, in the view of the Panelist, the addition of the word "store" compounds the difficulty by suggesting of itself that the domain name signifies a store or market place, particularly an electronic one, connected with Hitachi goods or services which may be accessed by any person seeking to visit the site.This is also borne out by the link between the website text and the reference on the site to HyperMart.
Accordingly, ground 4(a)(i) is made out.
As to ground 4(a)(ii), for much the same reasons the Panelist finds the Respondent has no rights or legitimate interests in the domain name.
The business of the Respondent appears to be associated with an electronic communications company Orcom which has no connection with and does not deal in Hitachi goods or services. (See Annexure O to Complaint). There is therefore no logic to the Respondent's choice of domain name other than for improper or abusive purposes.
Accordingly ground 4(a)(ii) is made out.
As to ground 4(a)(iii), as the Respondent has no legitimate interest in the domain name the question immediately arises as to what genuine or proper reason the Respondent may have for seeking its registration or use. It has been noted that the Respondent did not respond to the Complainant's counsel's letters nor to this Complaint.
A WHOIS database search of the Respondent and Orcom discloses 48 domain names registered to the Respondent or associated with him. The majority of these are names which of themselves clearly indicate that the Respondent has registered as domains the names of other well known marks (eg "sharp-electronics.com"; "sonyrecord.com"; "sonystore.com"; "sanyoshop.com"; "cathay-pacific.com"; "elalairlines.com"; "elalair.com"; "mastercard-usa.com"; "reebok-usa.com"; "nike-usa.com"; to name just a few). (See Annexure P to Complaint).
The Panel has before it no evidence as to whether the Respondent has any connection with the underlying registrations or common law trade marks with which these other domain names are associated. The Respondent has not responded to this which is clearly set out in the submissions forming part of the Complaint.
The inference the Panel is prepared to draw, absent any response from the Respondent, is that in the case of "hitachistore.com" (as with many of the other domain names just listed) the Respondent has registered it and is or is proposing to use it for a wrongful purpose. Alternatively, the Respondent is squatting on the site to the prejudice of the Complainant.
Accordingly ground 4(a)(iii) is made out.
For the reasons set out above the Panel finds:
(a) That the domain name registered by the Respondent is identical or confusingly similar to trade marks to which the Complainant has rights;
(b) That the Respondent has no rights or legitimate interests in respect of the domain name;
(c) That the Respondent's domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name "hitachistore.com" be transferred to the Complainant.
John Katz QC
Dated: February 2, 2001