Kabushiki Kaisha Hitachi Seisakusho (Japan Corporation) v. Hi! Tachi Group

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kabushiki Kaisha Hitachi

Seisakusho d/b/a Hitachi Ltd. v. Hi! Tachi Group

Case No. D2002-0335

1. The Parties

Complainant is Kabushiki Kaisha Hitachi Seisakusho d/b/a Hitachi Ltd., represented by Shapiro Cohen, Mr. Jonathan C. Choen and Ms. Chantal Bertosa, 112 Kent Street, Suite 2001, Ottawa, Ontario, Canada, hereinafter "the Complainant".

Respondent is Hi! Tachi Group, Pablo Ramirez, Bolivia Principal 1, Bolivia, hereinafter "the Respondent".

2. Domain Name and Registrar

The domain name in dispute is <hitachigroup.com>, hereinafter "the Domain Name".

The registrar for the disputed domain name is AIT Domains Corporation, 421 Maiden Lane, Fayetteville, North Carolina, United States of America.

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) Complainant initiated the proceeding by the filing of a Complaint, received by the WIPO Arbitration and Mediation Center ("the Center") on April 8, 2002. On April 11, 2002, the Center sent an Acknowledgement of Receipt of Complaint to the Complainant.

(b) On April 15, 2002, the Center transmitted a Request for Registrar Verification to the registrar, with the Registrar’s Verification received by the Center on April 15, 2002 confirming that the domain name at issue was registered through AIT Domains Corporation.

(c) On April 16, 2002, the Center transmitted Notification of the Complaint and Commencement of the Administrative Proceeding to the Respondent, after having satisfied itself that the Complainant had complied with all formal requirements pursuant to the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 ("the Policy"), the Rules for the Policy approved by ICANN on October 24, 1999 ("the Rules"), and the WIPO Supplemental Rules for the Policy ("the Supplemental Rules").

(d) No Response has been submitted by the Respondent. Accordingly, the Center issued a Notification of Respondent Default on May 8, 2002.

(e) In view of the Complainant’s designation of a single panelist, the Center invited Mr. Peter Nitter to serve as a panelist. Having received his Statement of Acceptance and Declaration of Impartiality and Independence, the Center formally appointed him as single panelist. The parties were notified of the Appointment of Administrative Panel on May 23, 2002.

(f) The single panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules. The Administrative Panel shall issue its decision based on the Complaint, the Policy, the Rules and the Supplemental Rules. The proceedings have been conducted in English.

4. Factual Background

Complainant is a leading global electronics company, and Complainant and the other members of the Hitachi Group engage in manufacturing, sales and services worldwide.

Complainant has presented copies of trademark registrations of the word mark HITACHI in Japan, United States of America, Brazil, Costa Rica and Bolivia, and listings showing registration of the same mark in several other countries.

Complainant has previously acquired the domain names <hitachi2000.net>, <hitachistore.com> and <ehitachi.com> through administrative proceedings.

The Respondent has registered the domain name <hitachigroup.com>.

The Complainant has attempted to contact Respondent, but has received no

response to their e-mails. The phone number given in connection with the

registration of the Domain Name is improper to make a connection.

The Complainant has presented transcripts from e-mail correspondence between

Complainant and the former registrant of the Domain Name. As the former

registrant is not a part of the present proceedings, the Panel will not

discuss this correspondence further.

5. Parties’ Contentions

5.1 Complainant

The Complainant asserts that:

Identical Or Confusingly Similarity With A Trademark

The Domain Name is confusingly similar to Complainant’s trademark, because

the element "group" is a generic, descriptive term that lacks

distinctiveness, and therefore adds nothing to the domain name as a whole.

The Domain Name as a whole suggests that it is being used in association

with the Hitachi Group of companies.

Rights Or Legitimate Interests In The Domain Name

The Respondent does not show any legitimate interest in respect of the

Domain Name. The Respondent and its predecessors do not have, and have never

had, any relationship with the Complainant, nor have they been authorized

by Complainant to use the mark HITACHI for any purpose.

The Domain Name has never been used in connection with the bona fide offering

of goods or services prior to notice of the dispute.

Since the Complainant’s mark HITACHI is unique to the Complainant, is famous

worldwide and since Complainant has never authorized its use by Respondent,

Respondent cannot have legitimately chosen the domain name <hitachigroup>

unless it was seeking to create an impression of an association with Complainant.

Since there is no such authorized association, Respondent’s interest in

the domain name is not legitimate.

Complainant made several attempts to contact Respondent, but as of the

date of the Complaint, no reply from the Respondent had been received.

As of March 19, 2002, the corporate records in the Bolivian National Chamber

of Commerce show no listing for Hi! Tachi Group, thereby confirming that

the Respondent is not a legitimate corporate entity.

In view of the facts of the case, there is no credible evidence that Respondent

has used, or made demonstrable preparations to use, the Domain Name in connection

with a bona fide offering of goods or services.

The facts of the case show that there is no possibility that the Respondent

is commonly known by the Domain Name or that he has any legitimate interest

in the Domain Name.

The Respondent is not currently making any legitimate non-commercial or

fair use whatsoever of the Domain Name.

Registration And Use In Bad Faith

There is evidence of bad faith registration and use of the Domain Name

by the Respondent.

Respondent has acquired any attendant risks or liabilities from the previous

registrant of the Domain Name, and therefore must be responsible for actions

taken by the previous registrant, including the offer to exchange the Domain

Name for another domain name.

Respondent registered the Domain Name in order to prevent Hitachi from

reflecting its trademark in a corresponding domain name.

Respondent’s registration of a domain name in the name of a non-existing

entity shows a pattern of conduct consistent with a Respondent seeking to

prevent a trademark owner from reflecting its trademark in a domain name.

It is inconceivable that Respondent would be unaware of the HITACHI mark

and trade name, and associated fame, reputation and goodwill that Complainant

has established internationally over the past nine decades. Visitors to

a website at <www.hitachigroup.com> would therefore likely consider

it to be affiliated with, sponsored or endorsed by Hitachi or a Hitachi

Group company.

The Domain Name is so obviously connected with Complainant and its group

companies’ products and services, that its very use for any purpose by someone

without connection with the Complainant suggests opportunistic bad faith.

All of the Respondent’s actions or inactions are indicative of the registration

and use of the Domain Name in bad faith, and of its intent to continue using

the Domain Name for no other purpose than to disrupt the business of Complainant,

or to eventually reap commercial gain by attracting consumers to a website

by means of confusion with the Complainant’s trademark.

The Complainant, therefore, requests the Administrative Panel issue a decision

that the Domain Name be transferred to the Complainant.

5.2 Respondent

The Respondent has not submitted a Response, and is thus in default. Respondent

has neither made any submissions after the Notification of Respondent Default.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three tests that a Complaint must satisfy

in order to succeed. The Complainant must satisfy that:

(i) the domain name is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect

of such domain name; and

(iii) the domain name has been registered and is being used in bad

faith.

As it has not been sufficiently proved by the Complainant that the Respondent

is identical to or can be identified with its predecessors, the Panel cannot

attach importance to the correspondences between Complainant and the former

registrants of the Domain Name.

6.1 Identical or confusingly similar to a trademark or a service

mark in which the Complainant has rights

The Panel finds based on the evidence that the Complainant has rights to

the trademark HITACHI.

The Domain Name at issue is <hitachigroup.com>.

The Panel considers that, as found in several earlier Panel decisions,

the suffix .com does not influence on the consideration of similarity.

The Domain Name consists of the Complainant’s trademark HITACHI and the

addition "group". The Panel finds that the Complainant’s trademark

is distinctive and that it is also a very well known mark.

The Panel agrees with the Complainant that the word "group" is

generic and descriptive, and lacks distinctiveness. This word is not sufficient

to give the Domain Name an individual meaning, but to the contrary it will

lead to the comprehension that the Domain Name is connected to the Complainant’s

trademark and to the Hitachi Group companies.

On the basis of these considerations, the Panel finds that the Domain Name

is confusingly similar to the Complainant’s trademarks.

6.2 Rights or legitimate interest in the domain name

The Panel has considered the allegations by the Complainant as to the lack

of rights or legitimate interests of the Respondent in respect of the Domain

Name.

Respondent is not a representative or licensee of the Complainant, nor

has Respondent any other authorization to use the Complainant’s trademarks.

As a result of default, the Respondent has not contested the allegations

put forward by the Complainant.

The Panel has visited the <www.hitachigroup.com> web site of the

Respondent in order to investigate whether there could be found any evidence

as to Respondents rights or legitimacy of interest with regard to the Domain

Name. The address does not lead to any active web site, and so the Panel

could not find any such evidence.

The Panel finds that the Respondent has no rights or legitimate interest

in the Domain Name.

6.3 Registration and use in bad faith

The Panel has considered Complainant’s allegations and evidences with regard

to the Respondent’s registration and use of the Domain Name in bad faith.

Complainant has put forward evidence that his trademarks are well known,

and the Panel finds that the trademarks of the Complainant in all probability

have been known to Respondent when registering the Domain Name.

Given the Complainant’s numerous trademark registrations and its wide reputation

in connection with the mark HITACHI, it is hard to conceive that the Respondent

could legitimately use the Domain Name. The Panel agrees with the Complainant

that it is not likely that any trader would choose a name including the

trademark HITACHI if not to create an impression of association with the

Complainant or the Hitachi Group companies.

At the moment there is no web site corresponding to the Domain Name, thus

the Respondent does not conduct any legitimate commercial or non-commercial

business activity under the Domain Name. Respondent’s registration of the

Domain Name thus appears to be an intentional attempt to prevent the Complainant

from reflecting its trademark in a corresponding domain name.

As stated in previous cases the fact that the Respondent operates under

a name that is not a registered business name also indicates bad faith.

This is supported by the fact that the contact details given in connection

with the registration are insufficient.

By not submitting a Response, Respondent has failed to invoke any circumstances

that could demonstrate that it did not register and use the Domain Name

in bad faith.

Based on the above discussion, the Panel finds that the Respondent has

registered and is using the Domain Name in bad faith.

7. Decision

The Panel has found that the Domain Name <hitachigroup.com> is confusingly

similar to a trademark held by the Complainant, and that the Respondent

has no rights to or legitimate interest in the Domain Name. The Panel further

finds that the Domain

Name has been registered in bad faith, and that it is being used in bad

faith.

Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules,

the Panel decides that the domain name <hitachigroup.com> be transferred

to the Complainant.

Peter G. Nitter

Sole Panelist

Dated: June 6, 2002