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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle

Case No. D2005-1105

 

1. The Parties

The Complainant is Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd), Chiyoda-ku, Tokyo, of Japan, represented by Allmark Trademark, United States of America.

The Respondent is Arthur Wrangle, New Dehli, of India.

 

2. The Domain Name and Registrar

The disputed domain name <hitachisemiconductor.com> is registered with Basic Fusion, Inc..

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2005. On October 21, 2005, the Center transmitted by email to Basic Fusion, Inc. a request for registrar verification in connection with the domain name at issue. On November 8, 2005, the Center was informed that the disputed domain name was not registered with Basic Fusion. On November 15, 2005, the Center transmitted by email to Enom a request for registrar verification in connection with the domain name at issue. On November 15, 2005, Enom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 18, 2005. 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 November 23, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2005.

The Center appointed Ian Blackshaw as the sole panelist in this matter on December 20, 2005. 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 is one of the world’s largest companies, offering a wide range of goods and services, including those in the fields of consumer electronics, information technology, computers, semiconductors, software, scientific instruments, transportation and industrial machinery, to name but a few. In support of this, the Panel has been provided with a copy of the Hitachi Product Catalog for 2005. According to the Complainant’s Annual Report for 2004, of which again the Panel has been provided with a copy, total sales for the Complainant exceeded $81 billion. On the basis of these efforts worldwide, the “HITACHI” name has become highly recognizable.

The trademark “HITACHI” was first registered in Japan in 1953, and has since been used exclusively by the Complainant and its subsidiary companies. The Complainant owns trademark registrations for “HITACHI” and its family of “HITACHI” marks in over 200 countries. Evidence of this has been provided to the Panel in the form of the Hitachi Directory of International Trademarks. Within the United States, where both the Respondent and Registrar are located, the Complainant is also the owner of thirty eight (38) separate trademark registrations which contain the mark “HITACHI.” A Lexis printout of “HITACHI” USA trademark registrations has been provided to the Panel. These trademark registrations cover a wide variety of goods and services, including, in particular, “semiconductor and integrated foundry services, namely, the custom manufacture and assembly of electrical and electronic products and semiconductors to the order and specification of others…” (US Reg. No. 2872141).

In the past year, the Complainant became aware of the use by the Respondent of the domain name at issue. Since this domain name both contains the “HITACHI” trademark, and has the effect of attracting Internet users by confusing them as to the ownership of the website, the Complainant sent a ‘cease and desist letter’ to the Respondent on August 9, 2005. In this letter, a copy of which has been provided to the Panel, the Complainant requested that the Respondent both stop using the domain name at issue, and take steps to transfer the domain name to the Complainant. The Respondent did not reply to the Complainant’s ‘cease and desist letter’ prompting the filing of the present Complaint.

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions in support of the Complaint:

A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))

The Complainant is one of the world’s largest companies, with global sales of $81 billion. And, in connection with its use of the “HITACHI” trademark, the Complainant has expended hundreds of millions of dollars to promote and advertise the “HITACHI” brand. These efforts have resulted in “HITACHI” being one of the world’s most recognizable trademarks. 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 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 Trademark Office, to prevent the registration of identical trademarks in classes not covered by the Complainant’s registration. An excerpt of the Famous Trademarks in Japan by AIPPI has been provided to the Panel. The Complainant has also registered over 300 domain names comprising or consisting of the mark “HITACHI.” As a result, the Complainant clearly has exclusive rights to use the “HITACHI” trademark.

The Respondent is using the domain name at issue. As is obvious from the content of the website, this domain address is referring to “Hitachi Semiconductor.” As noted above, a significant portion of the Complainant’s business relates to the manufacture, sale and servicing of “semiconductors” and related products. In using this domain name, the Respondent has simply added the generic term “semiconductor” to the Complainant’s trademark “HITACHI.” As has been established in several prior WIPO panel decisions concerning the “HITACHI” mark (see Hitachi Ltd. v. DRP Services (<hitachipowertools.com>) WIPO Case No. D2004-0344; Hitachi Ltd. v. Hi Tachi!, (<hitachigroup.com>) WIPO Case No. D2002-0335 and Hitachi Ltd. v. Yosi Hasidem, (<hitachistore.com>) WIPO Case No. D2000-1542), the adding of generic or descriptive terms, such as “power tools”, “group”, or “store,” does nothing to detract from the distinctiveness of the famous “HITACHI” mark. As a result, the Respondent is using a domain name which is almost identical to the Complainant’s mark. As a whole, this domain name suggests that it is being used in conjunction with the Hitachi semiconductor division. As this is not the case, this use of the domain name by the Respondent will lead to confusion in the marketplace.

B. The Respondent has no rights or legitimate interests in respect of the domain name;

(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))

As noted in Section A above, the Complainant has been using the mark “HITACHI” continuously and exclusively since at least 1953. The Complainant owns trademark registrations for “HITACHI” in over 200 countries, including thirty eight (38) within the United States alone. As has been acknowledged in several prior WIPO UDRP decisions, the Complainant has indisputable trademark rights and goodwill in the “HITACHI” name. See Hitachi Ltd. v. Yosi Hasidem,WIPO Case No. D2000-1542 and Hitachi Ltd. v. DRP Services, WIPO Case No. D2004-0344. The Complainant has also been using the name “HITACHI” in connection with “semiconductors” for several years, and this is supported by U.S. Reg. No. 2872141, a copy of which has been provided to the Panel. As a result of this continuous use of the mark “HITACHI,” and its status as a “famous” mark, the Complainant has rights and legitimate interests in the domain name at issue.

As plainly as the Complainant has rights and legitimate interests in this domain name, the Respondent has no such rights or legitimate interests in this domain name. The listed owner of the domain name is CampsActionNetwork, based out of Bellingham, Washington, U.S.A. The listed Administrative Contact is listed as an individual. Neither CampsActionNetwork nor this individual is in any way related to the Complainant or its subdivisions, and, in particular, neither has been granted any license by the Complainant to use the name “HITACHI.” Neither have either CampsActionNetwork nor D.R. Lemonde ever been “commonly known” as either “HITACHI” or “hitachisemiconductor.” In sum, there is simply no legitimate reason for neither CampsActionNetwork nor D.R. Lemonde to hold this domain name.

In addition to the fact that the Respondent has neither rights nor legitimate interests in the domain name, there is also no bona fide offering of goods or services being carried out by use of this name. When the domain address for hitachisemiconductor is accessed, it directs the online user to a webpage with the term <hitachisemiconductor.com> at the top of the page. This web page contains a listing of “Main Categories,” which has “Hitachi Semiconductor” as the top listing. A copy of the <hitachisemiconductor.com> website has also been provided to the Panel. In the next column, there is a heading for “Sponsored Searches,” and these provide links to a variety of websites which sell mostly “obsolete” Hitachi parts. For example, one such link is entitled “Hitachi Semiconductors – Part Search,” and directs the user to <4StarElectronics.com>, which indicates it is an “independent reseller” of Hitachi parts. Again, a copy of this website has been provided to the Panel. Although such “redirection” of visitors indicates “commercial use” of this domain address by the Respondent, it is certainly not a “legitimate use” of this domain address. It should also be noted that none of the business entities listed in the “Sponsored Search” listings are either authorized resellers of the Complainant, nor are they its licensees. Importantly, the Respondent has no connection with the Complainant or its subdivisions. The Respondent has no legitimate right nor interest in the domain name at issue.

C. The domain name was registered and is being used in bad faith.

(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))

As noted in Section A above, the Complainant’s mark “HITACHI” is a famous trademark, and is instantly recognizable as a source of electronics, consumer goods, semiconductors, telecommunications. In spite of the obvious “famousness” of the “HITACHI” trademark, the Respondent actively pursued the <hitachisemiconductor.com> domain. Given the considerable fame of the Complainant’s mark, it is inconceivable that the Respondent was not aware of the Complainant’s rights to the “HITACHI” trademark. This is equally true for the Complainant’s semiconductor division. By knowingly choosing a domain name comprising the Complainant’s famous trademark, the Respondent has placed itself in an untenable legal position. The Respondent has not only secured the domain address, but is also intentionally attempting to attract Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark.

As noted in Section B above, once visitors are lured to the <hitachisemiconductor.com> website, they are presented with a list of links operated by companies with no connection with the Complainant. As was the situation in Hitachi Ltd. v. DRP Services WIPO Case No.D2004-0344, this disputed domain name is being used by the Respondent for the purpose of attracting, for commercial gain, Internet users to its website by creating confusion.

Citing Overstock.com Inc. v. Larus H. List, WIPO Case No. D2004-0215. According to the provisions of the UDRP, the registration and use of a domain name to intentionally attract Internet users to the respondent’s website for commercial gain, “by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement” of the respondent, constitutes bad faith (UDRP para. 4(b)(iv)). As a result of this wrongful use of the “HITACHI” trademark, the Respondent is directly engaging in bad faith conduct

B. Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions or take any other part in these proceedings.

 

6. Discussion and Findings

To qualify for cancellation or transfer of the domain name at issue, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

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

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondent failed to file a Response, the Panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default (Cortefiel S.A. v. Miguel Garcнa Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is established case law that where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The domain name at issue incorporates the trademark HITACHI, which is owned and has been commercially used and promoted by the Complainant in and for the purposes of its business and the sale of its products as a trademark for many years. Furthermore, the Panel accepts and recognizes that the Complainant’s trademark HITACHI has the legal status and as such the legal protection of a famous trademark. Thus, there is a clear misuse and infringement on the part of the Respondent of the Complainant’s well-known trademark, and such use is also in breach of the Policy.

The Panel agrees with the Complainant’s contention that the addition of the word “semiconductor” is descriptive and adds no distinctiveness or source of origin elements whatsoever to the domain name at issue, which essentially incorporates the Complainant’s trademark.

In view of this, the Panel finds that the domain name registered by the Respondent is identical or confusingly similar to the trademark HITACHI, in which the Complainant has clearly demonstrated to the satisfaction of the Panel that it has well-established and commercially valuable rights through registration and long exclusive commercial use.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

- Whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

- Whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the domain name at issue.

In particular, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the domain name at issue in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the domain name at issue for a website that purports to be that of the Complainant.

Likewise no evidence has been adduced that the Respondent has commonly been known by the domain name; nor is the Respondent making a legitimate non-commercial or fair use of the domain name; nor has the Respondent been authorized or licensed by the Complainant to use the Complainant’s famous trademark HITACHI as part of the domain name at issue.

Furthermore, the adoption by the Respondent of a domain name identical to the Complainant’s trademark inevitably leads to the diversion of the Complainant’s consumers to the Respondent’s website (see further on this point below) and the consequential tarnishing of the Complainant’s trademark. In other words, the Respondent is trading for commercial gain on the good name and worldwide fame and reputation of the Complainant’s business and trademark and unfairly attracting to its own business and activities the substantial goodwill that the Complainant has established over many years in its name and marks, evidence of which has been provided to the Panel, without any right or legal justification for doing so.

Therefore, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the domain name at issue.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.”

Based on the evidence provided in the case file, the Panel agrees with the Complainant’s contention that the Respondent by registering the domain name at issue is trading on the Complainant’s valuable goodwill established in its trademark HITACHI over many years. Indeed, in the absence of any evidence to the contrary, of which none is forthcoming on the part of the Respondent, the Respondent’s registration of the domain name at issue would not appear to be accidental, but deliberate and calculated to exploit the Complainant’s renown in the electronics field in general and the semiconductors field in particular.

Again, by registering and using the domain name at issue incorporating the Complainant’s trademark, HITACHI, the Respondent is misleading Internet users and consumers into thinking that it is, in some way or another, connected, sponsored or affiliated with the Complainant and its business, or the Respondent’s activities are approved or endorsed by the Complainant, none of which, in fact, is the case.

The Respondent appears to be trading on the Complainant’s goodwill and reputation, which the Complainant has built up over many years. This, without any explanations by the Respondent to the contrary, of which none have been forthcoming, constitutes bad faith. See the case of eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633, where it was stated that:

“The Domain Name consists of the EBAY trademark plus the addition of the country name Korea. Because the Domain Name incorporates the identical EBAY trademark, a consumer or user of the Internet viewing a website located at the “www.ebaykorea.com” domain address would be likely to assume that the website or operator is somehow sponsored by or affiliated with eBay, when it is not.”

Furthermore, the design and content of the Respondent’s website and its ‘links’ as described above, particularly the one referring Internet users to an independent reseller of Hitachi parts, constitute a usurpation of the Complainant’s intellectual property; such website being calculated to mislead Internet users and consumers into thinking that the Respondent has some legal relationship with the Complainant and its business or that the Complainant has approved the use of the domain name at issue, neither of which, in fact, is the case. This creates confusion and the likelihood in the minds of consumers and Internet users of an association or affiliation between the Respondent with the legitimate business activities of the Complainant, which again is not, in fact, the case. And, therefore, in the view of the Panel, constitutes further evidence of bad faith on the part of the Respondent.

Finally, the failure by the Respondent to reply to the Complainant’s ‘cease and desist letter’ (referred to above) and also to file any answer to the present Complaint or otherwise participate in the present proceedings, in the view of the Panel, also suggests bad faith on the part of the Respondent.

Therefore, the Panel concludes that the Respondent has registered and is using the domain name at issue in bad faith.

 

7. Decision

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 <hitachisemiconductor.com> be transferred to the Complainant.


Ian Blackshaw
Sole Panelist

Dated: January 4, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-1105.html

 

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