WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kabushiki Kaisha Hitachi Seisakusho d/b/a Hitachi Ltd. v. Hi! Tachi Group
Case No. D2002-0335
1. The Parties
Complainant is Kabushiki Kaisha Hitachi Seisakusho d/b/a Hitachi Ltd., represented by Shapiro Cohen, Mr. Jonathan C. Choen and Ms. Chantal Bertosa, 112 Kent Street, Suite 2001, Ottawa, Ontario, Canada, hereinafter "the Complainant".
Respondent is Hi! Tachi Group, Pablo Ramirez, Bolivia Principal 1, Bolivia, hereinafter "the Respondent".
2. Domain Name and Registrar
The domain name in dispute is <hitachigroup.com>, hereinafter "the Domain Name".
The registrar for the disputed domain name is AIT Domains Corporation, 421 Maiden Lane, Fayetteville, North Carolina, United States of America.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) Complainant initiated the proceeding by the filing of a Complaint, received by the WIPO Arbitration and Mediation Center ("the Center") on April 8, 2002. On April 11, 2002, the Center sent an Acknowledgement of Receipt of Complaint to the Complainant.
(b) On April 15, 2002, the Center transmitted a Request for Registrar Verification to the registrar, with the Registrarís Verification received by the Center on April 15, 2002 confirming that the domain name at issue was registered through AIT Domains Corporation.
(c) On April 16, 2002, the Center transmitted Notification of the Complaint and Commencement of the Administrative Proceeding to the Respondent, after having satisfied itself that the Complainant had complied with all formal requirements pursuant to the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 ("the Policy"), the Rules for the Policy approved by ICANN on October 24, 1999 ("the Rules"), and the WIPO Supplemental Rules for the Policy ("the Supplemental Rules").
(d) No Response has been submitted by the Respondent. Accordingly, the Center issued a Notification of Respondent Default on May 8, 2002.
(e) In view of the Complainantís designation of a single panelist, the Center invited Mr. Peter Nitter to serve as a panelist. Having received his Statement of Acceptance and Declaration of Impartiality and Independence, the Center formally appointed him as single panelist. The parties were notified of the Appointment of Administrative Panel on May 23, 2002.
(f) The single panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules. The Administrative Panel shall issue its decision based on the Complaint, the Policy, the Rules and the Supplemental Rules. The proceedings have been conducted in English.
4. Factual Background
Complainant is a leading global electronics company, and Complainant and the other members of the Hitachi Group engage in manufacturing, sales and services worldwide.
Complainant has presented copies of trademark registrations of the word mark HITACHI in Japan, United States of America, Brazil, Costa Rica and Bolivia, and listings showing registration of the same mark in several other countries.
Complainant has previously acquired the domain names <hitachi2000.net>, <hitachistore.com> and <ehitachi.com> through administrative proceedings.
The Respondent has registered the domain name <hitachigroup.com>.
The Complainant has attempted to contact Respondent, but has received no response to their e-mails. The phone number given in connection with the registration of the Domain Name is improper to make a connection.
The Complainant has presented transcripts from e-mail correspondence between Complainant and the former registrant of the Domain Name. As the former registrant is not a part of the present proceedings, the Panel will not discuss this correspondence further.
5. Partiesí Contentions
The Complainant asserts that:
Identical Or Confusingly Similarity With A Trademark
The Domain Name is confusingly similar to Complainantís trademark, because the element "group" is a generic, descriptive term that lacks distinctiveness, and therefore adds nothing to the domain name as a whole. The Domain Name as a whole suggests that it is being used in association with the Hitachi Group of companies.
Rights Or Legitimate Interests In The Domain Name
The Respondent does not show any legitimate interest in respect of the Domain Name. The Respondent and its predecessors do not have, and have never had, any relationship with the Complainant, nor have they been authorized by Complainant to use the mark HITACHI for any purpose.
The Domain Name has never been used in connection with the bona fide offering of goods or services prior to notice of the dispute.
Since the Complainantís mark HITACHI is unique to the Complainant, is famous worldwide and since Complainant has never authorized its use by Respondent, Respondent cannot have legitimately chosen the domain name <hitachigroup> unless it was seeking to create an impression of an association with Complainant. Since there is no such authorized association, Respondentís interest in the domain name is not legitimate.
Complainant made several attempts to contact Respondent, but as of the date of the Complaint, no reply from the Respondent had been received.
As of March 19, 2002, the corporate records in the Bolivian National Chamber of Commerce show no listing for Hi! Tachi Group, thereby confirming that the Respondent is not a legitimate corporate entity.
In view of the facts of the case, there is no credible evidence that Respondent has used, or made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services.
The facts of the case show that there is no possibility that the Respondent is commonly known by the Domain Name or that he has any legitimate interest in the Domain Name.
The Respondent is not currently making any legitimate non-commercial or fair use whatsoever of the Domain Name.
Registration And Use In Bad Faith
There is evidence of bad faith registration and use of the Domain Name by the Respondent.
Respondent has acquired any attendant risks or liabilities from the previous registrant of the Domain Name, and therefore must be responsible for actions taken by the previous registrant, including the offer to exchange the Domain Name for another domain name.
Respondent registered the Domain Name in order to prevent Hitachi from reflecting its trademark in a corresponding domain name.
Respondentís registration of a domain name in the name of a non-existing entity shows a pattern of conduct consistent with a Respondent seeking to prevent a trademark owner from reflecting its trademark in a domain name.
It is inconceivable that Respondent would be unaware of the HITACHI mark and trade name, and associated fame, reputation and goodwill that Complainant has established internationally over the past nine decades. Visitors to a website at <www.hitachigroup.com> would therefore likely consider it to be affiliated with, sponsored or endorsed by Hitachi or a Hitachi Group company.
The Domain Name is so obviously connected with Complainant and its group companiesí products and services, that its very use for any purpose by someone without connection with the Complainant suggests opportunistic bad faith.
All of the Respondentís actions or inactions are indicative of the registration and use of the Domain Name in bad faith, and of its intent to continue using the Domain Name for no other purpose than to disrupt the business of Complainant, or to eventually reap commercial gain by attracting consumers to a website by means of confusion with the Complainantís trademark.
The Complainant, therefore, requests the Administrative Panel issue a decision that the Domain Name be transferred to the Complainant.
The Respondent has not submitted a Response, and is thus in default. Respondent has neither made any submissions after the Notification of Respondent Default.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three tests that a Complaint must satisfy in order to succeed. The Complainant must satisfy that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of such domain name; and
(iii) the domain name has been registered and is being used in bad faith.
As it has not been sufficiently proved by the Complainant that the Respondent is identical to or can be identified with its predecessors, the Panel cannot attach importance to the correspondences between Complainant and the former registrants of the Domain Name.
6.1 Identical or confusingly similar to a trademark or a service mark in which the Complainant has rights
The Panel finds based on the evidence that the Complainant has rights to the trademark HITACHI.
The Domain Name at issue is <hitachigroup.com>.
The Panel considers that, as found in several earlier Panel decisions, the suffix .com does not influence on the consideration of similarity.
The Domain Name consists of the Complainantís trademark HITACHI and the addition "group". The Panel finds that the Complainantís trademark is distinctive and that it is also a very well known mark.
The Panel agrees with the Complainant that the word "group" is generic and descriptive, and lacks distinctiveness. This word is not sufficient to give the Domain Name an individual meaning, but to the contrary it will lead to the comprehension that the Domain Name is connected to the Complainantís trademark and to the Hitachi Group companies.
On the basis of these considerations, the Panel finds that the Domain Name is confusingly similar to the Complainantís trademarks.
6.2 Rights or legitimate interest in the domain name
The Panel has considered the allegations by the Complainant as to the lack of rights or legitimate interests of the Respondent in respect of the Domain Name.
Respondent is not a representative or licensee of the Complainant, nor has Respondent any other authorization to use the Complainantís trademarks.
As a result of default, the Respondent has not contested the allegations put forward by the Complainant.
The Panel has visited the <www.hitachigroup.com> web site of the Respondent in order to investigate whether there could be found any evidence as to Respondents rights or legitimacy of interest with regard to the Domain Name. The address does not lead to any active web site, and so the Panel could not find any such evidence.
The Panel finds that the Respondent has no rights or legitimate interest in the Domain Name.
6.3 Registration and use in bad faith
The Panel has considered Complainantís allegations and evidences with regard to the Respondentís registration and use of the Domain Name in bad faith.
Complainant has put forward evidence that his trademarks are well known, and the Panel finds that the trademarks of the Complainant in all probability have been known to Respondent when registering the Domain Name.
Given the Complainantís numerous trademark registrations and its wide reputation in connection with the mark HITACHI, it is hard to conceive that the Respondent could legitimately use the Domain Name. The Panel agrees with the Complainant that it is not likely that any trader would choose a name including the trademark HITACHI if not to create an impression of association with the Complainant or the Hitachi Group companies.
At the moment there is no web site corresponding to the Domain Name, thus the Respondent does not conduct any legitimate commercial or non-commercial business activity under the Domain Name. Respondentís registration of the Domain Name thus appears to be an intentional attempt to prevent the Complainant from reflecting its trademark in a corresponding domain name.
As stated in previous cases the fact that the Respondent operates under a name that is not a registered business name also indicates bad faith. This is supported by the fact that the contact details given in connection with the registration are insufficient.
By not submitting a Response, Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the Domain Name in bad faith.
Based on the above discussion, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith.
The Panel has found that the Domain Name <hitachigroup.com> is confusingly similar to a trademark held by the Complainant, and that the Respondent has no rights to or legitimate interest in the Domain Name. The Panel further finds that the Domain
Name has been registered in bad faith, and that it is being used in bad faith.
Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel decides that the domain name <hitachigroup.com> be transferred to the Complainant.
Peter G. Nitter
Dated: June 6, 2002