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Kabushiki Kaisha Hitachi Seisakusho (Japan Corporation), d/b/a Hitachi, Ltd. v. DRP Services [2004] GENDND 944 (5 July 2004)

1. The Parties

The Complainant is Kabushiki Kaisha Hitachi Seisakusho (Japan Corporation), d/b/a Hitachi, Ltd. of Tokyo, Japan, represented by Dr. Victoria Carrington, Shapiro Cohen of Ottawa, Ontario, Canada.

The Respondent is DRP Services of Jerusalem, Israel.

2. The Domain Name and Registrar

The disputed domain name <hitachipowertools.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2004. On May 12, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On May 12, 2004, iHoldings.com Inc. d/b/a DotRegistrar.com 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”),

- 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 May 18, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2004. Notification was made through Post/Courier wherein the Complaint was sent with attachments, and fax and e-mail wherein the Complaint was sent without any attachments. The Administrative Panel finds that the WIPO Center has satisfied its notification obligations under Rule 2(b).

The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2004.

The Center appointed Pavan Duggal as the sole panelist in this matter on June 22, 2004. 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 in this administrative proceeding is “Kabushiki Kaisha Hitachi Seisakusho (Japan Corporation), d/b/a Hitachi, Ltd.”, a company organized under the laws of Japan and having principal place of business in Tokyo, Japan. The dispute in the present complaint is concerned with the registration of the domain name <hitachipowertools.com>.

The trademark ‘HITACHI’ was first registered at the Japanese Patent Office in 1953, and has since then been used exclusively by the Complainant and its subsidiary companies. The Complainant owns trademark registrations for ‘HITACHI’ and a family of ‘HITACHI’ marks in over 200 countries. ‘HITACHI’ has also been registered in Israel, the Respondent’s country of origin, in 1999. In addition the following domain names are used by the Hitachi Power Tools Division: <hitachi-powertools.de>, <hitachi-poerwtools.co.uk>, <hitachi-powertools.be>, <hitachi-powertools.nl>, <hitachi-powertools.fr>, <hitachi-powertools.es>, <hitachi-powertools.it>, <hitachi-powertools.hu> and <hitachi-powertools.au>.

The Complainant has unsuccessfully tried to contact the Respondent by fax, e-mail and telephone. The Complainant has also sent the Respondent a cease-and-desist letter dated February 24, 2004. There has been no response to any of these communications from the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions in brief are as under:

The Complainant, Kabushiki Kaisha Hitachi Seisakusho (Japan Corporation), d/b/a Hitachi, Ltd., was founded in 1910, and has been using the trade name and mark ‘HITACHI’ continuously since then, which was registered at the Japanese Patent Office in 1953. The Hitachi Group currently consists of over 1,000 companies in over 37 countries, including Israel, and ‘HITACHI’ has been used by them exclusively. More specifically, the Hitachi Power Tools division has existed for over 50 years and is also a world-wide entity.

The Complainant owns trademark registrations for ‘HITACHI’ and a family of ‘HITACHI’ marks in over 200 countries. ‘HITACHI’ as a trademark has also been registered in Israel, the Respondent’s country of origin, in 1999.

The mark ‘HITACHI’ is used in connection with a wide variety of goods and services, including information systems and electronics, power and industrial systems, consumer electric/electronic products, broadcasting, network service, transportation etc.

Further, the companies in the Hitachi Power Tools division use the mark ‘HITACHI’ in association with a very broad range of power tools in categories such as metalworking, woodworking, dust and debris removal etc.

In addition, the Japan Patent Office has recognized ‘HITACHI’ as a well-known trademark and has accordingly granted it defensive trademark registration, so as to prevent the registration of identical trademarks in classes not covered by the Complainant’s registration.

The Hitachi Group has registered over 300 domain names, including domain names comprising or consisting of the mark ‘HITACHI’. In addition, the following domain names are used by the Hitachi Power Tools Division: <hitachi-powertools.de>, <hitachi-poerwtools.co.uk>, <hitachi-powertools.be>, <hitachi-powertools.nl>, <hitachi-powertools.fr>, <hitachi-powertools.es>, <hitachi-powertools.it>, <hitachi-powertools.hu> and <hitachi-powertools.au>.

The Complainant contends that it is inconceivable that the Respondent would be unaware of the Complainant or its mark and trade-name and its Hitachi Power Tools division. It is also contended that a domain name containing the ‘HITACHI’ mark and corresponding in its entirety exactly to its Power Tools division could not have been legitimately adopted, unless one were trying to create a false impression of association with the Complainant, its Power Tools division or any other related Hitachi companies, products or services, particularly in view of the large family of <hitachi-powertools> domain names registered by the Complainant across a broad range of ccTLDs.

Thus the Complainant contends that the disputed domain name is both confusingly similar to its mark ‘HITACHI’ and tradename and identical to the name of its Hitachi Power Tools division.

The Complainant has further contented that the Respondent has no rights or legitimate interest in respect of the domain name. The Complainant avers that the Respondent does not have nor has ever had any relationship with the Complainant, nor has the Complainant ever authorized, licensed or otherwise permitted the Respondent to use the mark ‘HITACHI’ or to register or use any domain name which incorporates the mark or the name of any of the Complainant’s corporate divisions or entities.

The Complainant points out that the disputed domain name resolves to a generic advertising website which contains a series of automatically generated links to the websites of various companies unrelated to Hitachi, and in some cases selling products that compete with the Complainant’s goods. The contention is that the Respondent has registered the disputed domain name with the sole intent of generating advertising revenue for itself by means of Internet traffic, which traffic consists of users who would reasonably have the expectation of finding a website maintained by the Complainant. Further, according to the Complainant, the Respondent has never used the domain name <hitachipowertools.com> in connection with bona fide offering of goods or services.

It is further contended that the Respondent is not, nor ever has been, commonly known by the domain name or that it has acquired trademark or service mark rights in the name.

The Complainant states that the Respondent is making no legitimate non-commercial or fair use of the disputed domain, as the only use by the Respondent has been to use the domain name in connection with a generic, revenue generating (and therefore commercial) advertising site that is completely unrelated to and unauthorized by the Complainant.

It is contended by the Complainant that the Respondent has provided false contact information and made efforts to disguise its identity and that the same is an indicator of bad faith. It is stated that the contact information given by the Respondent corresponds to a museum in Jerusalem, which has no connection with the Complainant.

The Complainant contends that the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its mark and that the Respondent is using the domain name inappropriately to generate revenue for itself.

The Complainant finally contends that the advertising associated with the disputed domain name not only generates revenue for the Respondent but also promotes confusion on the part of the visitors to the site.

It has been stated that no other legal proceedings have been commenced or terminated in connection with or relating to the domain name that is subject of the Complaint.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(1) That the domain name registered by the Respondent is identical or confusingly similar to a service mark or trade mark in which the Complainant has rights; and

(2) That the Respondent has no legitimate interests in respect of the domain name; and

(3) That the domain name has been registered and used in bad faith.

A. Identical or Confusingly Similar

It is the case of the Complainant that the trademark on which this complaint is based namely ‘HITACHI’, was first registered with the Japanese Patent office in 1953, and since then it has been used by Hitachi and, under license, by its subsidiary companies both in Japan and many countries abroad. Further the Hitachi Power Tools division has existed for over 50 years in countries like Asia/Oceania, Europe, North America and Japan.

Further the Complainant and its related companies have collectively registered over 300 domain names wherein they provide information about their company and the products and services that they offer. The domain name as a whole does give the impression that the registered domain name is in some way related to the Complainant and their products and services.

The Complainant has been using the domain name continuously since 1953, and is well known for the same.

The Complainant has demonstrated that it has rights in the trademark ‘HITACHI’ by providing various trademark registration information indicating the Complainant’s ownership of trademark registrations.

Further, the fact that the Complainant has registered various domain names by the name of “Hitachi-Powertools” in different countries as proved by its various WHOIS database shows that “Hitachi” as well as Hitachi-Powertools are recognized worldwide and are a well known entity.

Thus, just by the removal of the hyphen from the domain name, which is basically inserted to mark a space in the text, only serves to reinforce the contention that the trademark and domain name are identical and confusingly similar. The same was held in Halifax plc v. Sontaja Sunducl, WIPO Case No. D2004-0237.

“Hitachi” is the distinctive element of the Complainant’s trademark, which is reproduced identically in the Respondent’s domain name. It has been well established by previous panel decisions that the domain name extension - such as .com - does not prevent two marks from being considered to be identical (see The Little Gym International, Inc. v. Domainstuff.com, WIPO Case No. D2003-0466, Cigna Intellectual Property, Inc. v. Yun Sung Lee, WIPO Case No. D2003-1042).

For these reasons, the Panel finds that the domain name is identical and, at the very least, confusingly similar, to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel has gone through the various documents filed by the Complainant along with the Complaint and has noted the Certificates of Registration of Trademark dated October 29, 1953 (issued by the Japanese Patent Office) and July 19, 1960, (issued by the USPTO). These certificates show that the Complainant holds rights on the name “Hitachi”. The Panel also notes the comments of the distinguished Panelist in Kabushiki Kaisha Hitachi Seisakusho d/b/a Hitachi Limited v. Yosi Hasidim, WIPO Case No. D2000-1542, acknowledging the Complainant’s extensive and world-wide trademark rights and goodwill. The continuous use of the trademark ‘HITACHI’ by the Complainant since 1953, till date for various items and the ownership of various “Hitachi-Powertools” domain names clearly shows that the Complainant has got rights and legitimate interests in the domain name <hitachipowertools.com>.

The Respondent neither replied to Complainant’s cease and desist letter nor did he file a Response.

There is nothing on the record to show that the Respondent has any legitimate interests in respect of the domain name <hitachipowertools.com>. This is further evident from the fact that the domain name resolves to a search engine/advertising site that contains automatically generated links to websites of various companies unrelated to Hitachi. Thus it is evident that the Respondent has no legitimate interests in the disputed domain name. It is clear that the site is being used to generate revenue and direct Internet traffic. In addition, the Respondent has been granted no license by the Complainants to use its name “Hitachi” and neither is the Respondent related in any way to the Hitachi Power Tools division.

There appears to be no bona fide offering of goods or services being carried out by use of the disputed Domain name. Besides the Respondent is not commonly known by the concerned domain name unlike the Complainant who have made a name for themselves with their trademark ‘HITACHI’ and their Hitachi Power Tools division.

It was held in Ford Motor Company v. International Newcastle, WIPO Case No. DBIZ2002-0185 that where the Complainant asserts that the Respondent has no rights or legitimate interests and where the Respondent fails to contest such assertions, the Panel is entitled to infer that Respondent has no such rights or interests. It had further cited the case Alcoholics Anonymous v. Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011 as authorities to support the same.

In Cancer Treatment Centers of America, Inc. (CTCA) v. Henry Chan, WIPO Case No. D2003-0611, also it was held that once lack of legitimate rights or interests has been alleged by a Complainant, the Respondent is obliged to adequately address this issue. It was also held that this finding is supported by various means which are available to a Respondent under the Policy to show legitimate rights or interests, on a balance of probabilities. The Panel in that case relied on MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205, wherein: “The Panel, as permitted by paragraph 14(b) of the Rules, draws the inference from the Respondent’s failure to respond to this administrative proceeding, that the Complainant is correct in its assertion that the Respondent has no rights or legitimate interest in the domain name” finds that the Complainant has established prima facie that the Respondent lacks rights or legitimate interests and therefore has successfully met its second burden, under Policy paragraph 4(a)(ii).

Thus, on the basis of the material available on record, the panel comes to the conclusion that the Respondent has no rights or legitimate interests in respect of the domain name <hitachipowertools.com>.

C. Registered and Used in Bad Faith

The contact information that has been given by the Complainant is that of the “Israel Museum, Jerusalem” which shows no connection with DRP Services, the Respondents. The Panel agrees with the Complainant that the giving of false contact information and attempts at disguising its identity is an indicator of bad faith.

The Respondents’ failure to reply to the Complainant’s various attempts to contact them indicates bad faith as well.

The Respondent is in default to respond in this proceeding thereby failing to invoke any element or circumstance which could indicate the good faith nature of his registration and use of the domain name.

The Panel notes the decisions in Hershey Foods Corporation and Hershey Chocolate & Confectionery Corporation v. DRP Services (Hersheychocolateworld-Com-Dom), WIPO Case No. D2003-0841 and the two cases before the National Arbitration Forum, namely Harcourt, Inc. v. DRP Services Claim Number: FA03111000208588 and Innomed Technologies, Inc. v. DRP Services Claim Number: FA0312000221171. It is clear that the Respondent is in the habit of registering third party trademarks in order to create revenue for itself.

In Billa Aktiengesellschaft v. Ganea Nicolae, WIPO Case No. DRO2002-0001, the Panel held “the fact that Respondent has registered at least two other domain names identical to well-known trademarks as a pattern of conduct clearly indicates that Respondent has registered the Domain Name in order to prevent Complainant from reflecting their trademark and tradename in a corresponding domain name.” This applies to the Respondent in this case, who it appears, has engaged in similar activity of registering domain names in order to direct internet traffic and create revenue for itself earlier as well. This clearly constitutes a case of bad faith

Considering the Complainant’s world-wide presence, the Respondent could not have been unaware of the Complainant’s trademark. It seems also highly likely that the Respondent was aware of the Complainant’s Hitachi Power Tools division. Therefore by knowingly choosing a domain name comprising and consisting of the Complainant’s trademark, the Respondent has intentionally created a situation which is at odds with the legal rights and obligations of the Complainant.

As mentioned above the domain name resolves to a search engine/advertising site that contains automatically generated links to websites of various companies unrelated to Hitachi. The disputed domain name is obviously being used by the Respondent for purposes of attracting, for commercial gain, Internet users to its website by creating confusion. This confusion is created by use of the Complainant’s mark ‘HITACHI’, as well as the name of the Hitachi Power Tools division.

In Overstock.com Inc. v. Larus H. List, WIPO Case No. D2004-0215, it was held that, the facts show that Respondent has registered and used the domain name to intentionally attempt to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website, falling under the illustrative situation provided for in paragraph 4(b)(iv) of the Policy evidencing registration and use in bad faith. The same applies in the present case.

The above contentions and the silence of the Respondent on the matter clearly show bad faith on the part of the Respondent. The panel is therefore, of the opinion that the registration and use of the disputed domain name by the Respondent is in bad faith. The Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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, <hitachipowertools.com> be transferred to the Complainant.

Pavan Duggal
Sole Panelist

Dated: July 5, 2004