WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hitachi High Technologies America, Inc. v. Kevin Chen

Case No. D2016-1003

1. The Parties

The Complainant is Hitachi High Technologies America, Inc. of Schaumburg, Illinois, United States of America, represented by Ladas & Parry, United States of America.

The Respondent is Kevin Chen of Shenzhen, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <buyhiq.com> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 18, 2016. On May 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2016, the Registrar transmitted by email to the Center its verification 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on May 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2016. On June 13, 2016, the Center notified the Respondent of Default.

On June 13, 2016, the Respondent sent an email to the Center indicating "My English is not good, I agreed to sell this domain name." Another acknowledgement email was received from the Respondent on the same day.

The Center appointed Jane Lambert as the sole panelist in this matter on June 24, 2016. 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 supplies and services semiconductor manufacturing equipment, analytical instrumentation, scientific instruments, and bio-related products as well as industrial equipment, electronic devices, and electronic and industrial materials. It is the registered proprietor of the trade mark HIQ which was registered with the United States Patent and Trademark Office for liquid crystal displays and driver boards and circuit boards for liquid crystal displays in class 9 under registration number 3,451,429 filed in 2006 and registered in 2008.

Nothing is known about the Respondent other than the allegations in the Complaint and the attachments thereto.

There is exhibited to the Complaint at Annex E a screen dump of a website at "www.buyhiq.com" offering liquid crystal display equipment for sale. The home page of the site bears the trade marks of several electronic equipment manufacturers one of which is Hitachi. The Panel was unable to find that web page when she searched for it.

5. Parties' Contentions

A. Complainant

The Complainant claims the transfer of the disputed domain name on the grounds that all three elements set forth in paragraph 4(a) of the Policy are satisfied, namely:

(1) The disputed domain name consists of the Complainant's trade mark HIQ plus the word "buy";

(2) The Respondent has no rights to or legitimate interests in the disputed domain name; and

(3) The Respondent has registered and used the disputed domain name in bad faith.

As to the first ground the Complainant points to its United States trade mark registration which the disputed domain name incorporated in its entirety with the addition of the imperative "buy". It submits that the word "buy" does nothing to distinguish the disputed domain name and neither does the suffix ".com".

On the second ground, the Complainant has found no evidence that the Respondent made any effort to use the disputed domain name in connection with a non-infringing offering of goods or services, that he was commonly known by the disputed domain name prior to its registration or that he has been making a legitimate noncommercial or fair use of the disputed domain name. It contends that the use to which the Respondent has put the disputed domain name is not bona fide, legitimate, noncommercial or fair. Having made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name it argues that it is up to the Respondent to justify himself.

With regard to the third ground the Complainant contends that the mere registration of a domain name that incorporates the trade mark of a well-known electronic components supplier was an act of bad faith in itself. The Respondent's use of the disputed domain name as the URL for its website amounts to use in bad faith since the sale of equipment under the Complainant's mark by anyone other than the Complainant would infringe that trade mark. The Complainant does not attempt to fit the Respondent's use into any of the circumstances set out in paragraph 4(b) of the Policy but contends that those circumstances are illustrative and not exhaustive and that the Respondent's registration and use of the disputed domain name is in bad faith.

B. Respondent

The Respondent made no submissions in response to the Complaint other than the emails mentioned in paragraph 3 above which was received after the Center had notified the Respondent that he was in default.

6. Discussion and Findings

The grounds upon which a Panel can order the transfer of a domain name are set out in paragraph 4(a) of the Policy:

"You are required to submit to a mandatory administrative proceeding in the event that a third party (a 'complainant') asserts to the applicable Provider, in compliance with the Rules of Procedure, that

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present."

If, and only if, the Panel finds that each and every one of those probanda has been proved to his or her satisfaction he or she must order the transfer or cancellation of the domain name in accordance with paragraph 4(i) of the Policy ex debito justitiae.

A. Identical or Confusingly Similar

The Panel finds the first element to be present.

The disputed domain name incorporates the Complainant's United States trade mark in its entirety. Thus the disputed domain name is similar to the Complainant's mark.

The insertion of the word "buy" before the trade mark imports confusion in that it suggests that it is the Complainant's website, that of an authorized distributor or possibly even a parallel importer or dealer in used HIQ equipment. It appears from the screen dump at Annex E to the Complaint that the Respondent's site is none of those things.

B. Rights or Legitimate Interests

The Panel is satisfied that the second element is present.

Paragraph 4(c) of the Policy sets out a number of circumstances by which a respondent can prove that he or she has rights or legitimate interests in a disputed domain name. The Complainant has considered all of them and has found no evidence that any of them applies.

Those circumstances are not exhaustive but there is nothing in the Complaint or annexes to indicate any other reason why the Respondent might have a right or legitimate interest in the disputed domain name.

The Respondent had an opportunity to produce evidence or make representations but failed to avail himself of that opportunity.

C. Registered and Used in Bad Faith

This is element of paragraph 4(a) of the Policy presented difficulty to the Panel, at least initially.

The reason for the difficulty is that the Respondent does or at least did operate a website for the supply of liquid crystal displays that might well genuine Hitachi stock bearing the Complainant's trade mark that was lawfully obtained. The registration of a trade mark confers upon the proprietor the exclusive right to use the mark in relation to the goods for which the mark was registered but it does not confer a monopoly of the distribution of such goods and, in particular, it does not prevent a dealer or parallel importer from describing lawfully obtained marked goods that he offers for sale by reference to their mark pursuant to trade mark law principles. On the other hand, that does not appear to be the case here for the Respondent does not confine himself to the supply of HIQ equipment as his site offers to display many makes of liquid crystal display equipment.

The Complainant says that the mere registration of a domain name that incorporates the Complainant's trade mark is ipso facto an act of bad faith. Paragraph 2 of the Policy requires a registrant to represent and warrant to the Registrar that to his knowledge the registration of the domain name will not infringe upon or otherwise violate the rights of any third party. There can be no difficulty where the domain name is the corporate name of a well-known company such as BP or Rolls-Royce or a fashion label such as GUCCI or PRADA but the Panel considers that HIQ is not a widely-known name and liquid crystal displays are not a typical consumer item. It is not reasonable to expect a registrant to search the database of every trade mark registry before applying to register a domain name. In this case, perhaps it is possible to infer knowledge of the Complainant's trade mark since the Respondent's website specialized in the sale of liquid crystal display equipment.

The Complainant makes the valid point that the circumstances set out in paragraph 4(b) of the Policy are indicative rather than exhaustive and that it is possible to find conduct that does not fit comfortably within any of those circumstances that nevertheless evidences registration and use in bad faith. However, it appears to the Panel that paragraph 4(b)(iv) of the Policy does apply to this case:

"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location."

The Panel has already held that the insertion of the word "buy" before the HIQ trade mark "imports confusion in that it suggests that it is the Complainant's website, that of an authorized distributor or possibly even a parallel importer or dealer in used HIQ equipment". An e-commerce site is obviously intended for commercial gain. Each of the ingredients of the sub-paragraph is to be found.

The Panel is required by the first three lines of paragraph 4 of the Policy to treat the circumstances mentioned in sub-paragraph 4(b)(iv) of the Policy as evidence of registration and use of the disputed domain name in bad faith. In the absence of any other evidence, the Panel must conclude that the third element is present.

7. Decision

For 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 <buyhiq.com> be transferred to the Complainant.

Jane Lambert
Sole Panelist
Date: July 6, 2016