WIPO Arbitration and Mediation Center
Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Pearson Network S.A.
Case No. D2006-1271
1. The Parties
The Complainant is Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd), Tokyo, Japan, represented by Allmark Trademark, United States of America.
The Respondent is Pearson Network S.A., Panama, Republic of Panama.
2. The Domain Name and Registrar
The disputed domain name <hitachi-pavilion.com> is registered with Le Grand Nom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2006 . On October 4, 2006, the Center transmitted by email to Le Grand Nom, Inc. a request for registrar verification in connection with the domain name at issue. On October 4, 2006, Le Grand Nom, Inc. 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 10, 2006. The Center verified that the Complaint together with the amendment to 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 October 18, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2006.
The Center appointed Professor Leon Trakman as the Sole panelist in this matter on November 16, 2006. 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.
Nine days after the expiry of the term for the Respondent’s Response, the Center received an e-mail, copied to neither the Respondent nor the Complainant, in which a counsel requested to be sent “all administrative correspondence and the official version of the Complaint” in this case. Leaving aside the failure to copy interested parties, the Panel notes that the Respondent’s default and the further delay until receipt of this e-mail obviate the need for the Panel to address this message.
4. Factual Background
Complainant, Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) (hereinafter, “Hitachi Ltd.”), is one of the world’s largest companies. According to Complainant’s Annual Report for 2005, total sales for Hitachi Ltd. exceeded $84 billion.
The trademark HITACHI was first registered in Japan in 1953, and has been used by the Complainant and its subsidiary companies. According to the Hitachi Directory of International Trademarks, the Complainant owns trademark registrations for HITACHI and its family of HITACHI marks in over 200 countries. Complainant is also the owner of thirty eight (38) separate trademark registrations which contain the mark HITACHI within the United States, where both the Respondent and Registrar are located. These trademark registrations cover a wide variety of goods and services, ranging from semiconductors and technology related products, to consumer electronics and insurance services.
The Hitachi Product Catalog for 2006 demonstrates that Hitachi Ltd. offers a wide array of goods and services, including consumer electronics, information technology, computers, semiconductors, software, scientific instruments, transportation and industrial machinery, among others.
The domain name for <hitachi-pavilion.com> was originally created and owned by Hitachi Ltd. in conjunction with the 2005 World Expo, held in Aichi Prefecture, Japan, from March to September 2005. As a component of that World Expo, Hitachi Ltd. organized and hosted a special “Pavilion,” with a theme focusing on the global environment.
Regarding Respondent, in March 2006, the disputed domain name was purchased by “Pearson Network S.A.,” through a Rob Pearson. That entity has an address located in the Republic of Panama, although it has a phone number with a Virginia area code. The Registrar for the disputed domain address is listed as Le Grand Nom, Inc., Minneapolis, Minnesota.
In typing Respondent’s disputed domain name, <hitachi-pavilion.com>, users are re-directed to “www.naughty.com”. This site constitutes a pornographic web portal, with a variety of links to graphic pornographic websites and materials. There is no reference at Respondent’s website to either “Hitachi” or “pavilion.” There are also no references to any goods or services outside of the field of “adult entertainment.” The website provides no information about either Hitachi Ltd., or its Pavilion Exhibit at the 2005 World Expo.
5. Parties’ Contentions
Complainant alleges that its name is highly visible world wide. In connection with its use of the HITACHI trademark, Complainant alleges further that it has expended hundreds of millions of dollars to promote and advertise the HITACHI brand, and that these efforts have resulted in HITACHI being one of the world’s most recognizable trademarks. Complainant asserts further that, as a result of the longstanding, extensive, and exclusive use of the unique HITACHI trademark throughout the world, this mark has become indisputably famous.
In recognition of its global reputation, Complainant adduces evidence that HITACHI has been listed as a “famous” trademark by the AIPPI in Japan, and that it has been granted a defensive trademark registration by the Japan Trademark Office, to prevent the registration of identical trademarks in classes not covered by the Complainant’s registration.
Complainant adduces further evidence that it has registered over 300 domain names comprising or consisting of the mark HITACHI.
Beginning in April of 2006, Complainant asserts that it became aware of Respondent’s use of the domain name <hitachi-pavilion.com>. In typing in the disputed domain name, Complainant asserts that visitors are directed to a website containing graphic pornographic images and links to other “adult” websites. Complainant alleges further that, while the disputed domain name refers to “Hitachi”, and the “Hitachi Pavilion”, the site does not in any way refer to Hitachi products or services, or to its exhibit held at the 2005 World Expo.
Complainant provides a copy of a cease and desist letter that it sent to Respondent on June 13, 2006. In that letter, Complainant requested that Respondent immediately cease using the <hitachi-pavilion.com> domain name, and take immediate steps to transfer the domain name to Complainant. As of the date of this Complaint’s filing, Complainant maintained that it had received no reply, nor had Respondent complied with the request to transfer the domain name to Complainant. As a result, Complainant filed the instant Complaint.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel takes notice of the fact that Complainant clearly has exclusive rights to use the HITACHI trademark, and that Respondent has registered and is using a domain name which is almost identical to Complainant’s famous mark. It holds further that the use of the <hitachi-pavilion.com> domain name has the effect of causing confusion among consumers who gain access to the site. In using the term “pavilion,” Respondent simply has added a descriptive term to Complainant’s famous trademark HITACHI, with the effect of re-directing Complainant’s customers to its own and other pornographic websites.
As was held in prior WIPO panel decisions concerning the HITACHI mark, the addition of generic or descriptive terms such as “store,” “power tools” or “group,” does not serve to distinguish the disputed domain name from Complainant’s famous HITACHI mark. (See Hitachi Ltd. vs. DRP Services WIPO Case No. D2004-0344; “Hitachi Ltd. vs. Hi Tachi! WIPO Case No. D2002-0335 and “Hitachi Ltd. vs. Yosi Hasidem” WIPO Case No. D2000-1542).
Nor has Respondent any connection with Hitachi Ltd by which to explain its use of the Hitachi name, or to gainsay that of the disputed domain name is confusingly similar. As a result, the Panel holds that the disputed domain name is almost identical to and certainly confusingly similar to that of Complainant’s mark.
B. Rights or Legitimate Interests
Respondent has no rights to or any legitimate interests in the disputed domain name. The listed owner of the disputed domain name is Pearson Network, S.A., which is allegedly based in Panama. The listed Administrative Contact is listed as Rob Pearson. Neither Pearson Network S.A. nor Rob Pearson is in any way related to Complainant or its subdivisions. Nor have either Pearson Network S.A. or Rob Pearson been granted any license or other form of permission by Hitachi Ltd. to use the mark HITACHI. Neither have Pearson Network, S.A. or Rob Pearson ever been “commonly known” as either “Hitachi” or “hitachi-pavilion”. Nor did they ever have any connection with the Hitachi Ltd. “Pavilion Exhibit” at the 2005 World Expo.
The Panel holds that Respondent has no right to, or legitimate interest in the disputed domain name to re-direct users to its pornographic web portal and to its webpage with the domain address “www.naughty.com”. Respondent has no connection whatsoever with the Hitachi Pavilion Exhibit, presented by Hitachi Ltd. at the 2005 World Expo. The content on that webpage is wholly unrelated to Complainant’s business, since it includes graphic images of “hard-core” sexual acts, and links to other pornographic websites. Nor is any mention made on Respondent’s website of either “Hitachi” or the Pavilion Exhibit hosted by Hitachi Ltd. at the 2005 World Expo. Nor do any of the “links” on Respondent’s website concern either Hitachi Ltd., or its Pavilion Exhibit. Respondent has simply used the “famous” HITACHI trademark to direct visitors to pornographic websites that have no business affiliation with Complainant.
Respondent’s website does not constitute a proper use of the HITACHI trademark. Respondent has no connection with Hitachi Ltd. or its subdivisions; and Respondent’s use of the disputed domain name serves to undermine the HITACHI brand by associating it with graphic pornographic images and content. The Panel concludes that Respondent has no right or legitimate interest in the <hitachi-pavillion.com> domain name.
C. Registered and Used in Bad Faith
Given the world wide reputation of Complainant and its globally known mark, and Respondent’s use of a confusingly similar domain name to which it has no rights or legitimate interests, it is reasonable to presume that Respondent was aware of Complainant’s rights to the HITACHI trademark. In knowingly choosing to register and use a domain name that comprises Complainant’s famous trademark for the explicit purpose of attracting Internet users to its pornographic website that bears no relationship to Complainant’s business, it is also reasonable to conclude that Respondent has acted in bad faith. Such bad faith is evident in Respondent’s intentionally creating confusion between the disputed domain name and Complainant’s famous mark, in luring users to its “www.hitachi-pavilion.com” website and in there presenting users with graphic pornographic images that have no connection to Hitachi Ltd. The Panel cites Hitachi Ltd. vs. DRP Services WIPO Case No. D2000-1542, and Hitachi Ltd. v. Arthur Wrangle, WIPO Case No. D2005-1105, in which these Panels held that disputed domain names were used in bad faith by Respondent to attract, for commercial gain, Internet users to its website and by purposefully creating and trading on the ensuing confusion.
The UDRP expressly provides that, in registering and using a domain name to intentionally attract Internet users to a respondent’s website for commercial gain, and “by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement”, Respondent has acted in bad faith. paragraph 4(b)(iv) of the Policy.
Respondent’s actions are in bad faith in related respects: in intentionally confusing Internet users for its commercial gain and in re-directing them to its graphic pornographic website. Prior panels have held that such conduct constitutes ipso facto evidence of bad faith. See Volksbank eG Wolfsburg v. 01040980.com, WIPO Case No. D2004-0048 (citing to a number of UDRP decisions finding bad faith in cases of redirection to pornographic websites); and Reed Elsevier Inc. v. Dover, NAF Case No. FA0501000408246 (holding that “the simple use of a mark to redirect traffic to a pornography website is ipso facto, bad faith). Implicit in the UDRP is the principle that the use of a domain name constitutes bad faith when a respondent seeks to, or recklessly has the effect of, tarnishing the good name of a complainant whom that respondent willfully seeks to associate with pornographic material. Such is the case at hand in which Respondent is falsely associating the famous and well respected HITACHI trademark with graphic pornographic content.
As a result of these actions, the Panel holds that Respondent registered and is using the domain name <hitachi-pavilion.com> in bad faith.
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-pavilion.com>, be transferred to the Complainant.
Date: November 27, 2006