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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi, Ltd.) v. Click Consulting, Ltd.

Case No. D2007-0809

 

1. The Parties

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

The Respondent is Click Consulting, Ltd., of Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <hitachinoki-contest.com> is registered with DomainDoorman, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2007. On June 5, 2007, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the domain name at issue. On June 6, 2007, DomainDoorman, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. 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 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2007.

The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on July 19, 2007. 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 trademark upon which the Complaint is based is HITACHI. According to the documentary evidence and contentions submitted, Complainant owns a number of trademark registrations for the HITACHI trademark around the world, including 37 United States of America Trademark Registrations. The HITACHI trademark was first registered in Japan in 1953.

According to the documentary evidence and contentions submitted, Complainant is one of the largest companies in the world and offers a wide variety of goods and services in the fields of consumer electronics, information technology, computers, semiconductors, software, scientific instruments, transportation and industrial machinery, among others.

The HITACHI brand name and trademark are highly recognizable as acknowledged by at least two prior WIPO UDRP decisions. Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi, Ltd.) v. Pearson Network S.A., WIPO Case No. D2006-1271; Hitachi, Ltd. v. Arthur Wrangle, WIPO Case No. D2005-1105. Reference is made to Complainant’s attestation that HITACHI has been recognized as one of the most widely-known trademarks in Japan.

According to the documentary evidence and contentions submitted, Complainant owns a number of domain names registrations incorporating the HITACHI trademark. The disputed domain name was originally owned and used by Complainant in connection with a series of photo exhibitions and contests involving the word “hitachinoki”, allegedly meaning “Hitachi’s Tree” in English. This website was eventually closed down by Complainant in June 2006.

Respondent registered the domain name <hitachinoki-contest.com> with DomainDoorman, LLC on September 1, 2006,, as indicated in the Registrar’s Whois service through which the panel verified an independent search on July 28, 2007. On May 21, 2007, Complainant sent a cease and desist letter to Respondent, requiring the transfer of the disputed domain name. Complainant states that no response was ever received.

5. Parties’ Contentions

A. Complainant

Complainant contends that the domain name < hitachinoki-contest.com > is based upon the HITACHI trademark and, relying on prior WIPO UDRP decisions, argues that the adding of generic and descriptive terms, such as “store”, “power tools” or “group” does not detract from the distinctiveness of the famous HITACHI trademark. Therefore, Complainant states that the disputed domain name is nearly identical to the Complainant’s trademarks.

Complainant further contends that Respondent does not have legitimate rights or interests regarding the disputed domain name because (i) Respondent is not the owner of any United States trademark registration protecting the name “hitachi”, and is not commonly known by the name “hitachi” or by the domain name at issue; (ii) Respondent does not have any relationship with either Complainant or its subdivisions, and has not been granted any license by Complainant to use the names “hitachi” or “hitachinoki-contest”, and (iii) Respondent is not making any bona fide offering of goods and services in connection with the use of the disputed domain name.

Complainant further contends that the bad faith of Respondent in registering and using the disputed domain name results from the following elements: (i) Respondent knew of the existence of Complainant’s trademark in view of the considerable fame of the HITACHI name, (ii) the disputed domain name was created to attract Internet users by creating a likelihood of confusion with Complainant’s mark; and (iii) Respondent shows a pattern of conduct consisting of the bad faith use of well-known trademarks of third parties.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Effect of the Default

The consensus view is that a respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

This Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response. As a result, the Panel infers that the Respondent does not deny the facts asserted and contentions made by Complainants from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441, LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084, Ross-Simons, Inc. v. Domain.Contac., WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and the Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.

The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.

B. Identical or Confusingly Similar

This Panel concurs with the opinions of prior WIPO UDRP panels, which have held that when a domain name wholly incorporates a complainant’s registered mark that is sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Hitachi, Ltd. v. Arthur Wrangle, supra; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615.

That is particularly true where the trademark is highly recognizable and famous, as in the instant case. In the disputed domain name the HITACHI trademark stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark, all the more so as the domain name was previously owned by Complainant. Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159. Therefore, the disputed domain name is clearly confusingly similar to Complainant’s widely-known trademarks.

Also the Panel notes, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.

Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.

C. Rights or Legitimate Interests

The Panel finds as reasonable Complainant’s contentions that (i) Respondent is not the owner of any United States trademark registration protecting the denomination HITACHI, and is not commonly known by the name “hitachi” or by the domain name at issue, and that (ii) Respondent does not have any relationship with either Complainant or its subdivisions, and has not been granted any license by Complainant to use the names “hitachi” or “hitachinoki-contest”.

Complainant further argues that there is no bona fide offering of goods or services because the disputed domain name resolves to a website with a homepage containing “sponsored links” which direct the Internet user to various websites offering either Hitachi products or competing products for sale. Reference is made to Annex 10 to the Complaint.

The Panel has taken note, through an independent search conducted on July 28, 2007, of the website to which the disputed domain name resolves. An Internet user in Brazil is directed to a homepage in Portuguese containing sponsored links in English offering products and services, some of which are unrelated to Complainant’s business activities. However, most of the links are related to Japan and Japanese interests.

The critical issue here is whether use of a domain name for purposes of offering “sponsored links” creates a legitimate right to a domain name. In Deutsche Telekom AG v. Dong Wong, WIPO Case No. D2005-0819, the panel held that respondent’s use of the domain name for a commercial website with links to competitors of the complainant cannot constitute a bona fide use of the domain name pursuant to paragraph 4(c)(i) of the Policy.

That panel relied on Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809, where that panel held that bona fide use does not exist when the intended use is a deliberate infringement of another’s rights. That ruling applies equally in the instant case. The evidence indicates that Respondent intends to infringe on Complainant’s trademark rights and take advantage of the notoriety of the HITACHI name.

The Panel finds that the Complainant has satisfied its burden of providing sufficient evidence to show that Respondent lacks rights to or legitimate interests in the disputed domain name. It has been established by previous WIPO UDRP decisions that, “while the overall burden of proof rests with the complainant, the burden of proof shifts to the respondent where the complainant establishes a prima facie case showing lack of rights and legitimate interests of the respondent to the disputed domain name”. Caixa DґEstalvis I Pensions de Barcelona(“la Caixa”) v. Young N, WIPO Case No. D2006-0406; Croatia Airlines dd v. Modern Empires Internet Ltd., WIPO Case No. D2003-0455.

In failing to submit a response, the Respondent has not provided the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.

In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.

D. Registered and Used in Bad Faith

It is very unlikely that Respondent would have registered the domain name <hitachinoki-contest.com> unless Respondent would have known (i) of the existence of the HITACHI trademark, (ii) that the domain name at issue was originally owned by Complainant and used in connection with a series of photo exhibitions and contests involving the word “hitachinoki”, and (iii) that the disputed domain name would confer on Respondent some type of economic advantage.

Respondent could easily have known of Complainant’s trademarks and domain names, particularly in this case where the disputed domain name was abandoned by Complainant a few months before it was registered by Respondent.

This Panel concurs with previous WIPO UDRP decisions holding that incorporating a widely-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements. As decided before, “knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith”. Caixa DґEstalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.

It is clear that the disputed domain name is being used to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s famous trademark as to the source, sponsorship, affiliation or endorsement of the Respondent. This is bad faith use for the purpose of the Policy.

Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.

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 <hitachinoki-contest.com> be transferred to the Complainant.

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Manoel J. Pereira dos Santos
Sole Panelist

Date: August 2, 2007