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Kabushiki Kaisha Hitachi Seisakusho (Japan Corporation), d/b/a Hitachi, Ltd. v. Shanghai Meihu Leather Co., Ltd. [2005] GENDND 562 (21 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kabushiki Kaisha Hitachi Seisakusho (Japan Corporation), d/b/a Hitachi, Ltd. v. Shanghai Meihu Leather Co., Ltd.

Case No. D2005-0528

1. The Parties

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

The Respondent is Shanghai Meihu Leather Co., Ltd., Boca Raton, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <“ú—§.com>(<xn--wgv287b.com>) is registered with Melbourne IT Limited.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the gCenterh) on May 16, 2005. On May 18, 2005, the Center transmitted by email to Melbourne IT Limited a request for registrar verification in connection with the domain name at issue. On May 19, 2005, Melbourne IT Limited transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the gPolicyh), the Rules for Uniform Domain Name Dispute Resolution Policy (the gRulesh), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the gSupplemental Rulesh).

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 7, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondentfs default on June 28, 2005.
The Center appointed Hong Xue as the Sole Panelist in this matter on July 7, 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.

The Panel has not received any further requests from the Complainant or the Respondent regarding other submissions, waivers or extensions of deadlines. There is no need as an exceptional matter, to hold any in-person hearings as necessary for deciding the Complaint, as provided for by the Rules, paragraphs 12 and 13. Therefore, the Panel has decided to proceed under the customary expedited nature contemplated for this type of domain name dispute proceeding.

The language of the proceeding is English, as being the language of the Domain Name Registration and Service Agreement, pursuant to the Rules, paragraph 11(a), and also in consideration of the fact that there is no express agreement to the contrary by the Parties. In addition, pursuant to the Rules, paragraph 10(b), and in consideration of the circumstances of this administrative Proceeding, the Panel, for the purpose to ensure that each Party is given a fair opportunity to present its case, takes into account the evidential materials provided in other languages as well.

4. Factual Background

The Complainant has the trademark rights over g“ú—§h, g“ú—§HITACHIh and gHITACHIh through extensive registration and consistent use in many countries. gHITACHIh is the transliteration of the phonetic sound of the Chinese Simplified characters for g“ú—§h. The Complainantfs registrations for the mark g“ú—§h date back to 1923 in Japan, 1980 in China, 1965 in Hong Kong, SAR of China, and 1972 in the Republic of Korea.

The mark is used in connection with a very broad range of goods and services, including: Information systems and electronics such as mainframe computers, software, computer terminals and peripherals etc.; power and industrial systems such as nuclear power plants, thermal power plants and rolling stock etc.; consumer electric / electronic products such as home appliances, TVs and VCRs etc.; materials such as synthetic resin materials and wires and cables, etc.; various services including broadcasting, network service, transportation, etc.

The Respondent registered the disputed domain name <“ú—§.com> on May 26, 2003.

5. Partiesf Contentions

A. Complainant

The Complainant has used the marks g“ú—§h, g“ú—§HITACHIh and gHITACHIh continuously since it was founded in 1910, and has hundreds of longstanding registrations for these marks in over 200 countries around the world, including in countries or areas of Chinese character inheritance and the United States. HITACHI is the transliteration of the phonetic sound of the Chinese Simplified characters for g“ú—§h. The Complainantfs registrations for the mark g“ú—§h date back to 1923 in Japan, 1980 in China, 1965 in Hong Kong, SAR of China and 1972 in the Republic of Korea.
Since 1910, the Complainant has extensively used these marks by itself and under license with subsidiary companies located in over 37 countries, including China and the United States, the countries where the Respondent appears to be located.

The Complainant has promoted these marks extensively and internationally in association with its wares and services for several decades and continues to do so. The Japanese Patent Office has recognized the Complainantfs mark g“ú—§h as well known and has granted the Complainant numerous defensive registrations in respect of the marks.

In addition, the Complainant and its related companies have collectively registered an extensive international domain name portfolio consisting of well over three hundred domain names across most ccTLDs and gTLDs comprising or consisting of the mark g“ú—§h.

Therefore, the Complainant submits that the disputed domain name is identical to its trademark and there is no element in the disputed domain name that could possibly distinguish it from and negate confusion with the Complainantfs trademark.

The Complainant submits that the Respondent does not have and has never had any relationship with the Complainant, any of its related companies, nor has the Complainant ever authorized, licensed or otherwise permitted the Respondent to use the mark or to register or use any domain name which incorporates the mark. Accordingly, there is no evidence that the Respondent has any rights or legitimate interests in the domain name under the Policy.

The Complainant notes that the Respondent has provided false contact information that is an indicator of bad faith. The Complainantfs attempted communications with the Respondent elicited no response from the Respondent and fax was undelivered as the fax number was either false or incomplete and therefore not in service. Moreover, searches of online telephone directories failed to locate any listings for a gShanghai Meihu Leather Co. Ltd.h (or any entity with a similar name) or a gZeng Qiumeih (Administrative Contact) at Boca Raton, Florida address that was of record in the WHOIS in April 2005. Similarly, the actual street address g12345 Blue Lake Driveh could not be located using a reverse address lookup.

Although the domain name is currently inactive, there always exists the possibility that the Respondent will eventually use the disputed domain name in association with some kind of website or business. In this regard, the UDRP cases have clearly established that in given factual situations, the concept of bad faith use of a domain name includes non-use or inaction on the part of the Respondent.

The Complainant submits that all of the Respondentfs actions or inactions mentioned above are indicative of the registration and use of the disputed domain name in bad faith.

The Complainant requests the disputed domain name be transferred to it.

B. Respondent

The Respondent did not reply to the Complainantfs contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Pursuant to the Policy, paragraph 4(a)(i), a complainant must prove that the domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights.

In line with such provision, the Complainant must prove two aspects, i.e. it enjoys the trademark rights; and, the disputed domain name is identical with or confusingly similar to its trademark or service mark.

It is not disputable that the Complainant has the trademark registrations over g“ú—§h in many countries and has been using the mark g“ú—§h extensively and consistently for many years. The Panel, therefore, finds that the Complainant enjoys the right in the mark g“ú—§h.

The disputed domain name <“ú—§.com>, except for the generic top-level domain designation g.comh, is identical with the Complainantsf mark.

The Complainant has successfully proved the two foregoing aspects, the Panel, therefore holds that the Complaint fulfills the condition provided in the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests. Where, as here, the Complainant has raised a prima facie presumption of the Respondentfs lack of such rights or interests, and Respondent has failed to submit the Response to rebut the Complainantfs presumption, the Panel is entitled to accept Complainantfs assertion. As provided for by the Rules, paragraph 14, the Panel may draw such inference from the Respondentfs default, as it considers appropriate.

In addition, neither can the fact that the disputed domain name <“ú—§.com> is an internationalized domain name in the Chinese Simplified Characters infer any rights or legitimate interests of the Respondent. g“ú—§h is not a generic term in the Chinese Language and has always been used as the trademark of the Complainant.

The Panel therefore finds that Complaint fulfills the condition provided in the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant contends that the disputed domain name is registered and used in bad faith. The Respondent fails to respond to such contention.

The Complainant submits that the Respondentfs provision of false contact information with respect to the disputed domain name registration is an accepted indicator of bad faith. The Complainantfs submission has been proven by the Complainantfs several unsuccessful attempts to contact the Respondent pursuant to the Respondentfs contact information listed in the WHOIS record. Despite the changes made to the contact information, the Complainant discovered that neither the telephone number nor the post address of the Respondent (or Administrative Contact) could be actually located.

The Respondentfs provision of false contact information is a breach to its own commitment in the Registration Agreement that all the information provided be complete and accurate. The Panel finds the Complainantfs contention persuasive and able to prove the Respondentfs bad faith in registration. See Hunton & Williams v. American Distribution Systems, Inc. et al., WIPO Case No. D2000-0501, in which the panel citing the non-exhaustive nature of the Policy, paragraph 4(b) found that respondentfs bad faith was evidenced by hiding its true identity behind several different trade names, by using a post office box address instead of its actual address, and by using false names for contact persons such as gBilling Contacth instead of the name of an actual person.

Furthermore, the Complainant submits that the Respondentfs non-use of the disputed domain name also demonstrates the Respondentfs bad faith. Such argument can be supported by the principle established in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, which ruled that, in certain circumstances, inactivity by the respondent may amount to the domain name being used in bad faith.

The Panel finds that the Respondentfs bad faith by passively holding the disputed domain name can be proved in all the circumstances considered in the Telstra case:

(i) the Complainantfs trademark has a strong reputation and is widely known, as evidenced by its substantial use in China, the United States and other countries;

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name;

(iii) the Respondent has taken active steps to conceal its true identity, by operating under a fake business name that cannot even be found on telephone directories;

(iv) the Respondent has actively provided, and failed to correct, false contact information, in breach of its registration agreement; and

(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainantfs rights under trademark law.

Based on the above finding, the Panel rules that the Respondent registered and used the disputed domain name in bad faith pursuant to the Policy, paragraph 4(b), and thus the Complaint fulfills the condition provided in the Policy, paragraph 4(a)(iii).

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, <“ú—§.com>, be transferred to the Complainant.

Dated: July 21, 2005