WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hitachi Ltd. v. Ijam Inc.
Case No. D2000Ė1557
1. The Parties
The Complainant in this administrative proceeding is Kabushiki Kaisha Hitachi Seisakusho (Japan Corporation), d/b/a Hitachi, Ltd., duly incorporated under the laws of Japan, and having a principal place of business at 6, Kanda-Surugadai 4-chome, Chiyoda-ku, Tokyo, 101-8010, Japan, represented by Mr. Jonathan C. Cohen of Shapiro, Cohen,112 Kent Street, Suite 2001, Ottawa, Ontario, K1P 5P2, Canada. The Respondent is IJAM Inc, whose address is identified as 5242 Royal Woods Pkwy, Suite 160, Tucker, GA, 30084, USA.
2. The Domain Name and Registrar
The domain name in issue is "ehitachi.com" ("the Domain Name"), the Registrar of which is Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, VA 20170, USA ("Network Solutions").
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received on November 10, 2000, an electronic version of the Complaint and accompanying documents and on November 14 a hard copy version of the same. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). The Complainant made the required payment to the Center. On December 5, 2000, the Center formally notified the Respondent that this administrative proceeding had been commenced, and that date is the formal date of the commencement of this administrative proceeding.
On November 17, 2000, the Center transmitted via e-mail a request for registrar verification in connection with this case. On November 21, 2000 Network Solutions transmitted via e-mail to the Center its Verification Response, confirming that the registrant is IJAM Inc., the Respondent herein, and stating that the administrative, technical and billing contact is Sterling Harris, Ijam Inc., 5242 Royal Woods Pkwy Suite 160, Tucker, GA, 30084, US.
No Response has been filed by the Respondent. However, the Center attempted to send notification of the Complaint to the Respondent by courier (with all accompanying exhibits), by fax and by e-mail. FedEx, the courier company, attempted to effect delivery at the Respondentís address on some 9 occasions between December 7, 2000 and January 11, 2001. Delivery was refused. So far as the fax notification was concerned, this did not go through. However, there is nothing to suggest that the e-mail notification was not received. In the light of the conduct described in paragraphs 5A. (x) and (xi) below, the Panelist concludes that the Respondent, alerted by the Centerís e-mail, probably deliberately refused to accept delivery of the FedEx package. Notification of Default was sent by e-mail to the parties on December 28, 2000. In view of the fact that the Respondent was aware of the Complainantís objections to the Respondentís registration of the Domain Name before these proceedings were instituted, the Panelist concludes that the Respondent has deliberately chosen not to respond to the Complaint, but that it has received adequate notice of the same.
On January 16, 2001 this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality, and his decision is scheduled to be forwarded to the Center by January 29, 2001.
4. Factual Background
(a) The Complainant is the registered proprietor, inter alia, of United States and Japanese Trademarks, as follows:-
HITACHI, No. 433,710 Registration Date: 1953/10/29 Japan
HITACHI, No. 701,266 Registration Date: 1960/07/19 U.S.A.
The trademark HITACHI is hereafter referred to as "the Mark".
(b) The Domain Name was registered on May 7, 1999.
5. Partiesí Contentions
The Complainant asserts, inter alia, as follows:-
(i) The Mark has been used continuously and exclusively by Hitachi since the company was founded in 1910, and was first registered at the Japanese Patent Office in 1953. The Mark has also been licensed to the Complainantís over 1,000 subsidiary companies [hereinafter "the Hitachi Group"] located in over 37 countries around the world. Members of the Hitachi Group are engaged in manufacturing, sales and services, and create more than 320,000 jobs worldwide. The Hitachi Group's consolidated sales for the year ended March, 2000 amounted to USD 75.5 billion. The Complainant has had a substantial presence in the United States since 1959. There are currently 75 Hitachi companies in North America, of which approximately 50 are in the United States. Among the Hitachi Group companies in the United States, Hitachi America, Ltd. is one of the largest corporate entities which includes operations in sales, purchasing, and research and development.
(ii) It owns trade mark registrations for the Mark in one hundred and ninety four countries.
(iii) The Mark is used in connection with a very broad range of goods and services including, but not limited to, the following main categories: Information Systems & Electronics; Power & Industrial Systems and Consumer Products.
(iv) The Domain Name is confusingly similar to the Mark. The only distinctive part of the Domain Name is the element "HITACHI", which is identical to the Complainantís Mark in its entirety. The Domain Name as a whole clearly suggests an association with HITACHI products or HITACHI services in that consumers would be lead to believe that <ehitachi.com> is the e-business website of the Complainant, or an entity associated with the Complainant.
(v) Given the long-standing registrations and use of the Mark by the Complainant and members of the Hitachi Group, as well as the Markís distinctiveness and fame, the Mark is not one which traders would legitimately choose to adopt unless seeking to create an impression of association with the Complainant. Further, it is inconceivable that the Respondent would be unaware of the existence of the Mark, reputation and goodwill that the Complainant has established internationally over the course of the past nine decades in association with the Mark. Consumers would likely consider any web site linked to <ehitachi.com> to be affiliated with, sponsored or endorsed by the Complainant, or a Hitachi Group company.
(vi) Since the Mark is unique to the Complainant, and the Complainant has never authorized or licensed its use by the Respondent, the Respondent cannot be said to have legitimately chosen the Domain Name unless it was seeking to create an impression of an association with the Complainant. Since there is no such authorized association, the Respondentís interests in the Domain Name cannot be said to be legitimate.
(vii) From the time the Complainant first became aware of the registration of the Domain Name, the only use the Respondent has made of the Domain Name has been to point or link it to a succession of websites for businesses involved in the sale of electronic products on the internet and with which the Respondent is associated. Given that internet users will often use a trade-mark to guess at a domain name, visitors to <ehitachi.com> would reasonably have the expectation of finding a website that is maintained or authorized by the Complainant to promote or otherwise provide information about its products and services which include a broad range of electronic and computer-related products, particularly those available on-line. The Complainant submits that the Respondent is well aware of this, and registered the Domain Name for the sole purpose of taking advantage of this fact to promote and direct internet traffic to its own businesses, which also sell computer and electronic products.
(viii) On August 24, 1999, a representative of the Complainant, Mr. David T. Cunningham, Counsel for Hitachi America, Ltd., contacted Mr. Sterling Harris, the Administrative Contact for the Domain Name by telephone and advised him that the Respondent was violating the Complainantís trade-mark, that the Complainant requests that the Domain Name be transferred to it, and that a formal cease and desist letter setting out its concerns would be sent. Mr. Cunningham proceeded to send the cease and desist letter to Mr. Harris at Ijam, Inc. on August 31, 1999. In this letter he again advised the Respondent of the Complainantís rights in its famous trade-mark HITACHI, and its concern that the Respondent's use of a domain name containing this mark would be likely to cause confusion in the marketplace, dilute the trade-mark and constitute a deceptive trade practice. He also requested that the Respondent transfer the Domain Name to Hitachi America using the enclosed Registrant Name Change Agreement.
(ix) On September 1, 1999, Mr. Cunningham was contacted by telephone by Mr. Tim Curtin, who identified himself as the attorney for the Respondent. This individual is also the Registered Agent for Ijam, Inc. according to the Georgia State corporate database record for that company. Mr. Curtin offered, on behalf of the Respondent, to sell the Domain Name to the Complainant for USD 500,000. That offer was rejected. The Complaint exhibits an affidavit by Mr. Cunningham attesting to these facts.
(x) Mr. Cunningham sent a second cease and desist letter by certified mail to the Respondent on December 7, 1999. Delivery of this letter was refused by the Respondent, and was accordingly re-sent by Mr. Cunningham. No response was ever received from the Respondent, nor did it cease its use of the Domain Name.
(xi) In a further attempt to achieve an amicable resolution in this matter, the Complainant sent a third and final cease and desist letter through outside counsel (the Complainant's authorized Representative in this administrative proceeding) to the Respondent (by registered mail, fax and e-mail) on August 31, 2000, at which time the Respondent was still using the Domain Name. In addition to reiterating its concerns, the Complainant also offered to reimburse the Respondent for its out-of-pocket costs incurred in connection with the registration of the Domain Name in exchange for the transfer of the Domain Name to it. Once again, no response was received from the Respondent.
As noted above, no Response has been filed.
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the ICANN policy, as follows:
As to element (i), the Panelist has no hesitation in accepting the Complainantís submission that the only distinctive element of the Domain Name is the very well-known name HITACHI, the Complainantís trade mark. The addition of the letter "e" as a pre-fix in the context of a domain name is wholly descriptive of some association with electronic commerce, i.e. a website for some part of the Complainantís business. The Domain Name is undoubtedly confusingly similar to the trade mark HITACHI.
As to element (ii) of paragraph 4(a) of the ICANN Policy, the Respondent has done nothing to demonstrate that it has any rights or legitimate interests in the Domain Name. There is nothing to suggest that any of the circumstances mentioned in paragraph 4(c) of the ICANN Policy apply (ie before notice of the dispute preparation to use the Domain Name, being commonly known by the Domain Name or making a legitimate non-commercial or fair use of the Domain Name). The facts put forward by the Complainant suggest (see paragraph 5(vii) above) that the Respondentís interest in the Domain Name was not in connection with a bona fide offering of goods or services, but rather to take advantage of the reputation of the Complainantís Mark to attract potential purchasers for products not of the Complainantís manufacture. In the absence of any justification from the Respondent of its activities in relation to the Domain Name, the Panelist concludes that the Complainant has established Element (ii).
So far as element (iii) is concerned it is sufficient that the Complainant demonstrates that one of the four circumstances mentioned in paragraph 4(b) of the ICANN Policy applies. The Complainant has sought to show that all four circumstances are present in this case. This Panelist considers it sufficient to conclude that circumstances (i) and (iv) are present here.
Paragraph 4(b)(i) of the Policy can be paraphrased as follows:-
"circumstances indicating that [the Respondent] has registered or [has] acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the Respondent's] out-of-pocket costs directly related to the domain name;"
The offer to sell the Domain Name for USD 500,000 referred to in paragraph 5A(ix) above would suggest that the Respondent registered the Domain Name having in mind the possibility of selling it to the Complainant for a large sum of money. In the absence of any denial from the Respondent, the Panelist is prepared to accept that, even if this was not the Respondentís primary intent, the offer to sell the Domain Name for such a large sum of money is in itself evidence of registration and use in bad faith.
Paragraph 4(b)(iv) can be paraphrased in the third person as follows:-
"by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location, or of a product or service on [Respondent's] web site or location."
Clearly, the facts recited in paragraph 5A(vii) establish that the Respondentís activities fall within the terms of (vi) of paragraph 4(b) of the Policy.
The Panelist therefore concludes that the Respondent registered and has been using the Domain Name in bad faith.
In the light of the findings in paragraph 7 above, the Panelist concludes that:-
- the domain name "ehitachi.com" is confusingly similar to the trademark HITACHI of the Complainant;
- the Respondent has no rights or legitimate interests in the domain name;
- the domain name has been registered and is being used in bad faith.
Accordingly, the Panelist orders that the domain name "ehitachi.com" be transferred to the Complainant, Kabushiki Kaisha Hitachi Seisakusho (Japan Corporation), d/b/a Hitachi, Ltd.
Dated: January 26, 2001