WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hitachi Ltd. v. Value Domain
Case No. D2010-1433
1. The Parties
The Complainant is Hitachi Ltd. of Tokyo, Japan represented by Sanderson & Co, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Value Domain of Osaka-fu, Japan.
2. The Domain Name and Registrar
The disputed domain name <hitachi-am.com> is registered with eNom Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2010. On August 26, 2010, the Center transmitted by email to eNom, a request for registrar verification in connection with the response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 September 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 26, 2010.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 29, 2010.
The Center appointed Kazuko Matsuo as the sole panelist in this matter on October 18, 2010. 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.
Absent exceptional circumstances, the panel is required to forward its decision to the Center by November 1, 2010 in accordance with Rules, paragraph 15.
4. Factual Background
The Complainant, Hitachi, Ltd. is a very famous Japanese company and in the 2009 Fortune Global 500, it was ranked 52nd among the world’s largest corporations and 3rd in the Electronics, Electrical Equipment Industry.
The Complainant owns 12 CTM trademarks, including Registration No. 208645 with respect to almost all 42 International Classifications, and more than 460 Japanese trademarks in various goods and services. It also owns trademark registrations in over 175 countries for the term “hitachi” and its family of HITACHI marks.
The respondent registered the domain name <hitachi-am.com> with eNom Inc on June 6, 2010.
5. Parties' Contention
Identical or confusingly similar to the trademark or service mark in which the Complainant has rights.
The Complainant claims that in addition to the trademark registrations of HITACHI stated in the above section 4, its trademarks HITACHI and variants such as HITACHI CAPITAL have been extensively used in respect of services that include financial and monetary services; asset management: payment, leasing and loan services; and credit consultancy.
In addition to those registered marks specified above, the Complainant also possesses many other registered marks and/or pending applications in other countries.
The Complainant contends that the disputed domain name consists of “hitachi-am.com” and the Complainant’s trademarks consist of “hitachi”. The “.com” component in the disputed domain name is just a generic top level domain identifier. The remainder of the domain is comprised of the Complainant’s trademark and “-am” which can be seen from the website shown on the Respondent's domain is merely an abbreviation of the descriptive words “asset management”. The domain name is therefore substantially similar to the registrations of HITACHI, as the other words present are not distinctive and are descriptive of the financial services that are offered by the Complainant, e.g., the provision of asset management services.
Clearly, the word “hitachi” contained in the Respondent's domain name is identical or confusingly similar to the Complainant’s trademark rights.
In conclusion, therefore, the public would easily associate the domain name with the Complainant’s marks and be misled into believing that the domain name is associated with the Complainant. Hence, the disputed domain name and the Complainant’s marks are confusingly similar.
B. The Respondent has no right or legitimate interests in respect to the domain name
1) The Complaint is selling its products in various continents having a sales network in most countries throughout the world.
As a result of Complainant’s longstanding, extensive, and exclusive use of the HITACHI mark throughout the world, the HITACHI trademark has become one of the world’s most recognizable trademarks. In recognition of this fact, HITACHI has been listed as a “famous” trademark by the AIPPI in Japan, and has also been granted a defensive trademark registration by the Japan Patent Office, so as to prevent the registration of identical trademarks in classes not covered by the Complainant’s registrations.
2) Also, many prior WIPO UDRP decisions affirmed the “fame” of the HITACHI trademark. For example Hitachi Ltd. v. Pearson Network S.A., (“hitachi-pavilion.com”) WIPO Case No. D2006-1271; Hitachi Ltd. v Arthur Wrangle, (<hitachisemiconductor.com>) WIPO Case No. D2005-1105; Hitachi Ltd. v. DRP Services (<hitachipowertools.com >), WIPO Case No. D2004-0344; and Hitachi Ltd. v. Click Consulting Ltd., (<hitachinoki-contest.com>) WIPO Case No. D2007-0809.
3) Among the Hitachi Group of companies there is Hitachi Capital Corporation, established on September 10, 1957, which specializes in financial services and asset management. Hitachi Capital is a well-known company in the financial sector having overseas branches in the United Kingdom of Great Britain and Northern Ireland, the United States of America, the People’s Republic of China, Hong Kong, SAR of China and Singapore.
The Respondent is not licensed to use the Complainant’s trademarks, nor is the Respondent in any way associated with the Complainant’s group of companies.
The Respondent is in no way authorised by or affiliated with the Complainant. However, even if they were, as was confirmed in Nikon, Inc. and Nikon Corporation v.Technilab, Inc., WIPO Case No. D2000-1774 (February 26, 2001) such a relationship does not necessarily confer the right to register domain names containing a mark.
4) Moreover, the Complainant has sent cease and desist letters to the registrar and hosting company warning them about the infringement and urging them to block this website. Due to the Complainant’s efforts the website is currently blocked, but notarized printouts made on August 3, 2010, are provided as annexes to the Complaint.
The websites at the domain name formerly displayed a series of pages which referred to financial services purportedly offered by a Japanese company called Hitachi Asset Management Limited. Investigations however can find no evidence that this company exists in Japan or any major territory. There is also no evidence that the company operates from the address stated on the website. Clearly no evidence of a bona fide link between the Respondent and “Hitachi Asset Management Limited” can be found.
(5) In conclusion, the disputed domain name is identical or confusingly similar to the Complainant’s mark, and the Respondent is not using the domain name in connection with a bona fide offering of goods or services. Nor is such use a legitimate noncommercial or fair use.
C. The domain name was registered and is being used in bad faith.
By the use of the mark HITACHI in the Respondent's domain name, the Respondent intentionally attempted (and continues to attempt) to use the reputation of the Complainant so that users will be lured to websites not owned or authorised by the Complainant. The Respondent is not using the disputed domain name for any bona fide purpose. The Respondent is blocking the Complainant from registering or using the domain name and is interrupting their business by directing potential customers to competitors or falsely making those customers believe there is an association between the Respondent and the Complainant.
The Respondent’s registration and use of the disputed domain name are in bad faith because the Respondent intentionally attempted to attract members of the public who had an interest in purchasing or obtaining additional information about HITACHI services, and then forwarding them to other websites.
Furthermore, the Respondent recently was the subject of a complaint by the Complainant in respect of another domain containing the word “hitachi”. In that case the complaint was upheld by the panel and the domain name transferred to the Complainant (Hitachi Ltd. v. Value-Domain Com, Value Domain, WIPO Case No. D2010-0754).
In the light of its past behavior and current activities, the Respondent is demonstrating a clear pattern of behavior by which it intends to gain commercially from the misuse of another’s reputation or from blocking the legitimate use by others of the disputed domain name.
The Respondent did not reply to the Complaint's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceedings:
(A) the contested domain name is identical or confusingly similar to a trademark or service mark in which the Complainants has rights; and
(B) the Respondent has no rights or legitimate interests in respect of the contested domain name; and
(C) the contested domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the owner of the trademark HITACHI registered in numerous countries. The Respondent's domain name completely comprises the Complaint's trademark HITACHI with the only difference being the mere addition of the generic top level domain identifier and an abbreviation of the descriptive words "asset management" and a hyphen after "HITACHI". Therefore, the disputed domain name is substantially similar to the registered trademark HITACHI.
The panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy.
B. Rights of Legitimate Interest
The Complainant has made a prima facie showing of the Respondent's lack of rights or legitimate interests in the disputed domain name. There is nothing in the record to suggest the Respondent's use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of services, to suggest that it has been commonly known by any portion of the disputed domain name, or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Therefore, the burden shifts to the Respondent to prove otherwise. However, the Respondent has not responded to the Complainant's claim.
The Panel can only make its decision based on the information and evidence submitted before it and given the circumstances believes that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Respondent did not respond to the Complainant's contentions.
In light of the similarity between the disputed domain name and the trademarks, and the lack of any record suggesting the Respondent's rights or legitimate interests in the disputed domain name, it is reasonable to believe that the Respondent registered the domain name in an attempt to use the reputation of the Complaint. The Respondent is not using the disputed domain name for any bona fide purpose. It has attempted to attract Internet users, for commercial gain, to its own website and inviting a likelihood of confusion as to the source or affiliation of the Respondent's website or location or of a goods or service on the Respondent's website. This falls directly under paragraph 4(b)(iv) of the Policy regarding the Respondent's bad faith in registering and using a domain name.
The Panel is satisfied that the Complaint has met the requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <hitachi-am.com> be transferred to the Complainant.
Dated: November 2, 2010