WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kabushiki Kaisha Hitachi Seisakusho (Japan Corporation), d/b/a Hitachi, Ltd. v. Hilaire Shioura
Case No. DWS2004-0002
1. The Parties
The Complainant is Kabushiki Kaisha Hitachi Seisakusho (Japan Corporation), d/b/a Hitachi, Ltd., Chiyoda-ku, Tokyo, Japan, represented by Shapiro Cohen, Canada.
The Respondent is Hilaire Shioura, Evanston, Illinois, United States of America.
2. The Domain Name and Registrar
The disputed domain name <hitachi.ws> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2004. On May 28, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On May 28, 2004, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 June 3, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2004. The Response was filed with the Center on June 23, 2004.
The Center appointed Zbyněk Loebl as the sole panelist in this matter on July 8, 2004. 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.
4. Factual Background
The Complainant Hitachi Ltd. (hereinafter “Hitachi”) was founded in 1910. The trademark HITACHI (hereafter referred to as the “Trademark”) was first registered at the Japanese Patent Office in Kanji in 1923, and in Roman characters in 1953. Hitachi owns trademark registrations and applications in over 200 countries including the United States of America. Hitachi is among others the registered proprietor of the following US trademark: HITACHI, Registration Number 701,266, Registration Date: 1960/07/19.
Hitachi discovered on December 9, 2003, the registration of the domain name <hitachi.ws> after receiving from the Respondent an e-mail offering to sell the domain name. From at least that time until May 27, 2004, this domain name has been used in association with a website offering domain name registration and related services.
In response to the above mentioned offer to sell, Hitachi sent a cease and desist letter to the Respondent on December 18, 2003, requesting the Respondent to cease any further infringement of Hitachi’s rights related to the Trademark.
On January 25, 2004, Hitachi received an e-mail from the Respondent stating among other points that his offer to sell was prompted by an offer to buy which he assumed was coming from Hitachi. Hitachi denies having sent any such communication and the Respondent has not provided any evidence of any such correspondence. The Respondent further referred to a disclaimer posted on the “www.hitachi.ws” website stating that <hitachi.ws> is not affiliated, related or connected to Hitachi. Such disclaimer contained a link to another web page with additional information including as an explanatory paragraph about Hitachi being a geographical description for a city, village and river. This wording was placed on the website after receipt of the cease and desist letter mentioned above.
On the disclaimer page the Respondent directed enquiries to an e-mail address, and subsequently, to another e-mail address. However on other pages of the website as available on May 5, 2004, the Respondent identified his business under other denominations not including the trademark.
Hitachi had further communications with the Respondent in view of reaching an amicable settlement. Such communications were unsuccessful in resolving the dispute.
5. Parties’ Contentions
Complainant contends that the disputed domain name is confusingly similar, and is in fact identical with, the trademarks owned by the Complainant.
The Complainant contends that it owns trademark registrations and applications in over 200 countries including the United States of America. The Complainant asserts that the trademark is a famous trademark.
The Complainant further contends that the Respondent has no legal rights or legitimate interests in the disputed domain name and it invokes the following principal arguments:
- The Respondent has never had any relation with Hitachi nor has he been authorized in any manner to use the Trademark;
- The Respondent has never been commonly known by the domain name and has not conducted business under the domain name; instead, the Respondent used the domain name simply as an alternative URL pointing to Respondent’s own website and domain names derived from his personal name and entirely unrelated to the Complainant or its Trademark; and
- There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name. After receiving the cease and desist letter from the Complainant, the Respondent sought to deliberately create a false association between himself/his business and the Hitachi name and Trademark.
The Complainant further asserts that the Respondent registered and is using the disputed domain name in bad faith. The following main arguments were made by the Complainant in this respect:
- Given the worldwide famous character of the Trademark, the Respondent must have a constructive knowledge of the Trademark before registering the domain name. It is obvious that its use and registration by someone unconnected with Hitachi suggests “opportunistic bad faith;
- The Respondent attempted to extract a substantial amount of money from Hitachi that greatly exceeds reasonable out-of-pocket costs related to registration of the domain name;
- The Respondent has engaged in a prior pattern of unfair conduct since it has, in at least one other significant case, appropriated a well-known third party Trademark as a domain name without legitimate purpose;
- The conduct of the Respondent prior to the filing of the Complaint to the Panel demonstrates that the Respondent has registered the domain name primarily for the purpose of disrupting Hitachi’s business and by using the domain name intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion; and
- The Respondent’s arguments that the Complainant cannot claim exclusive rights (trademark or otherwise) in HITACHI because of (a) the term is a geographic origin, and (b) there are alternative meanings or phonetic equivalents of HITACHI in Kanji, and that the Respondent is thus entitled to use the same, are irrelevant and disingenuous.
The Respondent sent two communications relating to the Complaint within the time period set forth in paragraph 5(a) of the Rules for the submission of a response.
The Panel finds that none of these two communications meets the requirements set forth in paragraph 5(b) of the Rules, mainly the communications were not submitted in hard copy, did not include a telephone number of the Respondent or the certifying statement set forth in paragraph 5(b)(viii) of the Rules.
The Panel however acknowledges hereby that the Respondent contends in principle that Hitachi is a geographical description in Japan, that there are various meanings attributable to the Kanji term “hitachi”, that the Complainant does not offer business activities similar to those offered by the Respondent and claims that it intends Hitachi City and Hitachi-Ota to have complete use of <hitachi.ws> following completion of these proceedings. The Respondent also challenged the information by the Complainant that the Respondent was offering the disputed domain name for sale to the Complainant.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the famous Trademark registered and used by the Complainant in many countries.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has presented evidence and argued convincingly that the Respondent has no rights or legitimate interest in the disputed domain name. The Respondent failed to demonstrate any rights or legitimate interests in the disputed domain name.
No information was presented to prove that the Respondent has been commonly known by the disputed domain name. It is evident from materials presented by the Complainant that the Respondent has used several domain names pointing to Respondent’s personal name and to his website and domain name derived from his personal name.
The Respondent challenges the validity of numerous trademarks of the Complainants identical to the disputed domain name and uses this challenge as the argument for his right to use the term “hitachi” alongside the Complainant. The Panel agrees with the Complainant that the reasons given by the Respondent for his challenges are irrelevant, due to world-wide recognition of the well-known character of the trademark “HITACHI”. The arguments used against the Complainant were tried in previous WIPO cases and were similarly rejected (e.g. Kabushiki Hitashi v. Jorge Borborema (WIPO Case No. DTV2001-0030), Sankyo Co., Ltd v. Zhu Jiajun (WIPO Case No. D2000-1791), etc.);
No information was presented to prove that before sending the Complainant’s cease and desist letter, the Respondent was using, or made demonstrable preparations to use, the disputed domain name with a bona fide offering of goods or services.
Based on the arguments and evidence brought by the parties hereto and described in Sections 4 and 5 above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel considers that, based on the evidence presented by the Complainant and taking into consideration the above-mentioned allegations of the Respondent, the Respondent registered the disputed domain name in bad faith.
The Panel finds it clear that the Respondent had to have prior knowledge of the Complainant’s well-known Trademark when the Respondent registered the disputed domain name.
It has been previously held that the registration of a domain name confusingly similar to a well-known trademark is an indication of “opportunistic” bad faith:
“It is highly unlikely that the Respondent has selected the domain name without having knowledge of the Complainant’s use of his mark. He must not only have had the Complainant’s mark in mind when he registered the domain name but he must also have been aware of the deception and confusion that would inevitably follow if he uses the domain name. (see Red Bull GmbH v. Harold Gutch, WIPO Case No. D2000-0766, or Veuve Clicquot Ponsardin, Maison Fondue en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).
Furthermore, the fact not disputed by the Respondent that the Respondent sent an email to the Complainant offering to sell the disputed domain name to the Complainant is in itself an indication of bad faith registration and use of a domain name, as confirmed for instance in Nokia Corporation v. David Wills, WIPO Case No. DWS2001-0004 concerning <nokia.ws>.
The Panel finally considers that the facts established in paragraph 5A clearly evidence an intentional attempts to attract for commercial gain Internet users to the <hitachi.ws> website by creating a likelihood of confusion as set forth in paragraph 4(b)(iv) of the Policy (see, among others Nokia Corporation v. David Wills, WIPO Case No. DWS2001-0004, and Chanel, Inc .v. Estco Technology Group, WIPO Case No. D2000-0413 ).
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, <hitachi.ws> be transferred to the Complainant.
Dated: July 23, 2004