WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi, Ltd) v. Traverito Traverito
Case No. D2007-0953
1. The Parties
The Complainant is Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi, Ltd), Tokyo, Japan, represented by Allmark Trademark, United States of America.
The Respondent is Traverito Traverito, Barcelona, Spain.
2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2007. On June 29, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On July 24, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the Respondent’s contact details. In response to a notification by the Center indicating that the registrant of record had been identified by Moniker Online Services, LLC as being different to the entity originally named in the Complaint, due to the Respondent’s use of a privacy shield, the Complainant filed an amendment to the Complaint on July 31, 2007 substituting the present Respondent. 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 August 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2007.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on October 1, 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 Complainant is one of the world’s largest companies, offering a wide variety of goods and services including consumer electronics, computers and semiconductors. The Complainant’s Annual Report for 2006 states that its annual sales exceeded $80 billion.
The Complainant’s HITACHI trademark was first registered in Japan in 1953 and has since been used exclusively by the Complainant and its subsidiaries. The Complainant is the owner of a family of HITACHI registered trademarks in over 175 countries including a variety of marks covering a wide range of goods in both the United States, where the Registrar is located, and Spain/The European Union, where the Respondent is based.
The disputed domain name was registered by the Respondent on May 12, 2005. The website associated with the disputed domain name provides a series of hyperlinks concerned with grants and foundations.
5. Parties’ Contentions
A. Complainant
The Complainant has expended hundreds of thousands of dollars to promote and advertise the HITACHI brand. These efforts have resulted in HITACHI being one of the world’s most recognizable trademarks. 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, so as to prevent the registration of identical trademarks in classes not covered by the Complainant’s registration.
The Complainant cites Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Pearson Network S.A.,WIPO Case No. D2006-1271 and Kabushiki Kaisha Hitachi, Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle,WIPO Case No. D2005-1105 as examples of past decisions where the Panel has accepted the famous nature of the Complainant’s HITACHI mark. The Complainant asserts that it has registered over 300 domain names comprising or consisting of the mark HITACHI.
The Complainant notes that the disputed domain name directs the online user to a webpage containing a list of links pointing to websites which are neither affiliated nor authorized by the Complainant in any manner whatsoever.
The Complainant submits that the most obvious feature of the disputed domain name is the Complainant’s famous trademark HITACHI which is merely combined with the generic term “foundation”. The Complainant cites the cases of Kabushiki Kaisha Hitachi Seisakusho (Japan Corporation), d/b/a Hitachi, Ltd. v. DRP Services,WIPO Case No. D2004-0344 (“”); Kabushiki Kaisha Hitachi Seisakusho d/b/a Hitachi Ltd. v. Hi Tachi!,WIPO Case No. D2002-0335 (“”) and Kabushiki Kaisha Hitachi Seisakusho (Japan Corporation) d/b/a Hitachi Limited v. Yosi Hasidem,WIPO Case No. D2000-1542 (“”) in support of its assertion that the adding of a generic or descriptive term to the Complainant’s mark does nothing to detract from its distinctiveness.
The Complainant states that it has indisputable trademark rights and goodwill in the HITACHI name and has rights and legitimate interests therein, whereas the Respondent does not. The Respondent has never been commonly known as “HITACHI” or “hitachifoundation” and has been granted no license by the Complainant to use either of these names. There is no bona fide offering of goods or services being carried out by the use of the disputed domain name. The Respondent’s redirection of visitors by using the disputed domain name is a commercial use but is not a legitimate one.
The Complainant asserts that the HITACHI mark is world famous and instantly recognizable as a source of electronics and consumer/other goods such that it is inconceivable that the Respondent was not aware of the Complainant’s rights when it registered the disputed domain name. The Respondent is intentionally attempting to attract Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark. When visitors click on the links on the Respondent’s website the Respondent likely receives “pay per click” fees from the entities supplying the links. The 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.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. Given its extensive trading history under the registered trademark HITACHI, for which it maintains a wide variety of trademark registrations in jurisdictions worldwide, the Panel has no hesitation in finding that the Complainant has established rights in its HITACHI trademark. The disputed domain name is not identical to this trademark in that it reproduces the mark as the dominant component of the domain name together with a generic and descriptive word, namely “foundation”.
The Complainant’s HITACHI trademark is widely known. In the Panel’s opinion, the addition of a descriptive word such as “foundation” to this mark fails to distinguish the disputed domain name from the mark. The lack of white space in the disputed domain name is not significant, being a technical requirement of the domain name system, and likewise the generic top level domain “.com” may be disregarded as wholly generic. On this comparison, the Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant is required under paragraph 4(a)(ii) of the Policy to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in a disputed domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your 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; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
As the Respondent did not respond to the Complaint, it did not submit any evidence demonstrating rights or legitimate interests in the disputed domain name. The Complainant asserts that the Respondent has no such rights or legitimate interests and submits that the Respondent has never been commonly known as “HITACHI” or “hitachifoundation” and has been granted no license by the Complainant to use either of these names. The Complainant also asserts that there is no bona fide offering of goods or services being carried out by the use of the disputed domain name and that the Respondent’s use is commercial but is not legitimate.
Given the nature of the website associated with the disputed domain name the Panel agrees with the Complainant that it is most likely that the Respondent either is receiving or intends to receive “pay per click” revenue from it. This is clearly a commercial use but it is not a bona fide offering of goods or services, trading directly as it does upon the fame of the Complainant’s trademark. It is clear to the Panel that the Respondent is relying upon the name HITACHI within the disputed domain name to bring visitors to its website. In the Panel’s opinion, the use of the disputed domain name in this manner does not confer any conceivable rights or legitimate interests upon the Respondent.
In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant is required under paragraph 4(a)(iii) of the Policy to prove that the Respondent has registered and used the disputed domain name in bad faith.
On this subject, the Complainant asserts that, given the fame of its HITACHI mark, it is inconceivable that the Respondent was not aware of the Complainant’s rights when it registered the disputed domain name and that the Respondent has intentionally attempted to attract Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark.
It appears to the Panel that the Respondent registered the disputed domain name with the intention of targeting the fame of the Complainant’s trademark for revenue generating purposes by way of “pay per click” linking on its website. The Panel is also satisfied that, in terms of paragraph 4(b)(iv) of the Policy, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The circumstances surrounding the Respondent’s conduct are therefore indicative of registration and use of the disputed domain name in bad faith. The Respondent did not file a Response which might have brought evidence of any good faith activity to the Panel’s attention; in fact the Panel cannot conceive of any potential good faith activity with regard to the disputed domain name.
Accordingly, the Panel finds that the Respondent registered and used the disputed domain name 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 be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Dated: October 15, 2007
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