The Complainant is Hitachi, Ltd. of Tokyo, Japan, represented by King & Wood Mallesons, China.
The Respondent is Chaiyong sakunkitcharoen of Nakhon Pathom, Thailand. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with OnlineNic, Inc. d/b/a China-C (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 2, 2014. On July 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 3, 2014, the Registrar 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, together with its Annexes, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 July 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 8, 2014.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on August 13, 2014. 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 single panelist finds that the Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules. The Panel shall issue its decision based on the Complaint, the Policy, the Rules and the Supplemental Rules. The proceedings have been conducted in English in accordance with Paragraph 11(a) of the Rules. 4. Factual Background
The Complainant, which was founded in 1910 under the laws of Japan, is a renowned corporation in the world for a highly diversified product mix ranging from electricity generations systems to consumer products and electronic devices. The Complainant was ranked No. 38 according to Fortune Global 500, 2012. The Complainant also enjoys high fame in not only Japan, but also in other countries all over the world, especially in Asia, including Thailand, where the Respondent is located.
The Complainant is the owner of the trademark HITACHI in numerous countries, including in Japan and Thailand. In Japan, the Complainant enjoys trademark rights for HITACHI in all 45 classes of goods/ services; the trademark HITACHI is also recognized as famous mark in this country. In Thailand, where the Respondent is located, the Complainant owns many prior trademark registrations, including, but not limited to, Trademark Registration No. Kor59859 dated February 24, 1954 for "Elevator (lifts)" in Class 7.
The Disputed Domain Name was registered with the Registrar on July 2, 2009. 5. Parties' Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant asserts that it owns numerous HITACHI trademark registrations around the world, including Japan and Thailand. In Japan, the Complainant enjoys the trademark rights for HITACHI in all 45 classes of goods/ services. The trademark HITACHI is recognized as famous mark and defensive mark in this country. In Thailand, the Complainant is the owner of many HITACHI trademark registrations, including, but not limited to, Thailand Trademark No. Kor59859 dated February 24, 1954 for HITACHI for "Elevators (lifts)" in Class 7.
The Complainant alleges that the distinctive part of the Disputed Domain Name is almost identical to the famous and long time used registered trademark HITACHI and trade name of the Complainant in which the Complainant has rights.
Accordingly, the Complainant contends that it was founded in 1920 under the laws of Japan, and that for over the years, it has focused on the development of business with a highly diversified products mix ranging from electricity generation systems to consumer products and electronics devices; and pays great attention to the protection of its intellectual property rights. The Complainant also enjoys high fame in not only Japan, but also in other countries all over the world, especially in Asia, including Thailand, where the Respondent is located.
The Complaint alleges that the distinctive part of the Disputed Domain Name is composed of the word "siam" and the Complainant's famous trademark HITACHI as well as the word "group". Since the Complainant owns numerous subsidiaries and related companies over the world, the Complainant normally uses the wording "Hitachi Group" to indicate all Hitachi entities. The word "siam" is the former name of Thailand, and such name is still broadly used to indicate Thailand. Thus, the distinctive part of the Disputed Domain Name shall be considered as similar to the Complainant's famous trademark HITACHI, and thus relevant consumers will mistake the Disputed Domain Name as being the Complainant's official domain name in Thailand.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant contends that the Respondent does not own any trademark rights in the wording "hitachi" or similar wordings. Further, the Complainant has never authorized the Respondent to use its HITACHI trademark in any means including registering it as domain name. Thus, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
The Complainant contends that the Respondent incorporated a company called Siam Hitachi Group Limited Partnership in 2003 to operate elevator sale and repair businesses in Thailand. The Complainant sent to the Respondent a cease and desist letter, demanding the Respondent to remove the word "Hitachi" from the Respondent's company name and stop associating itself with Hitachi. When the Respondent refused to cooperate, the Complainant initiated a lawsuit against the Respondent in Thailand.
On May 26, 2006, the Central Intellectual Property and International Trade Court of Thailand issued its decision on the case, under which Respondent was forced to remove the word "Hitachi" from its company name as the Court found that "Hitachi" was a very well-known name in the elevator industry and the Respondent's adoption of the word "Hitachi" as part of its company name were conducted in bad faith with intent to mislead the public into believing that the Respondent was affiliated in some way with Hitachi.
The Complainant further argues that though the Respondent had to remove "Hitachi" from its company name under the said Court Decision, the Respondent did register the Disputed Domain Name for its commercial purpose. Further, the Complainant presented and submitted that the Respondent used the Dispute Domain Name in its name cards, under which the words "Siam HITACHI" and the HITACHI logo were shown and the Respondents was indicated as "Sale Representative" of the Complainant.
The Complainant alleges that the Respondent did register the Disputed Domain Name and then build a website thereunder for the purpose of confusing the Internet users and letting them consider such a website as the official website of an affiliation or related company of the Complainant.
As a consequence, the Complainant contends that the Disputed Domain Name was registered and used in bad faith by the Respondent. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Respondent's failure to file a Response does not automatically result in a decision in favor of the Complainant (see e.g. Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent's default.
In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether each the following three elements are present:
(i) the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(ii) the Disputed Domain Name has been registered and is being used in bad faith.
Consequently, the Panel shall further analyze the eventual concurrence of these three grounds in the present case. A. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the Disputed Domain Name is identical or confusingly similar to its trademark.
First, the Panel finds that the Complainant has clearly evidenced that it has trademark rights in and to HITACHI, which was registered well before the Disputed Domain Name was registered. Also, it is evidenced that the Complainant has a lengthy use of its trademark HITACHI for its commercial activities, and in particular to offer elevators (lifts) and other products ranging from electricity generation systems to consumer products and electronics device worldwide.
Second, the Panel finds that the Disputed Domain Name comprises the Complainant's distinctive and well-known HITACHI trademark, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the prefix "siam" and the suffix "group". The prefix "siam", which indicates the former name of Thailand and is still broadly used to indicate Thailand, may be considered as a geographical term, while "group" is undisputedly a generic term, which may, in combination with "hitachi", create a term that denotes the whole Hitachi Group of companies.
The Panel finds that "hitachi" remains the dominant element in the Disputed Domain Name. Thus, in the Panel's view, the addition of the said prefix and suffix does nothing to distinguish the Disputed Domain Name from the HITACHI trademark, nor to dispel the risk of confusing similarity, as it was found in previous UDRP decisions (see e.g., Playboy Enterprises International Inc. v. Melancia, WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassM, WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoN / Domain Name for Sale,WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Midas Search Limited,WIPO Case No. D2004-0986; Six Continents Hotels, Inc., Inter-Continental Hotels Corporation v. South East Asia Tours,WIPO Case No. D2004-0388).
Third, the Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain (gTLD) ".com" to the Disputed Domain Name does not constitute an element so as to avoid confusing similarity for purposes of the Policy (see e.g. Volkswagen AG v. Privacy Protection Services,WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc,WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
On the basis of the foregoing findings, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's HITACHI trademark, and the first element under paragraph 4(a)(i) of the Policy is established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent's rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
"When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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".
The Panel finds that the Complainant has submitted contentions that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not reply to the Complainant's contentions and, therefore, has not refuted the Complainant'scontentions.
Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant's asserted facts, that no license, permission or authorization of any kind to use the Complainant's trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in HITACHI in any country in the world.
The Panel finds that before the date of notice to the Respondent of the dispute, the Disputed Domain Name resolved to a website selling and repairing elevators under various brands. In this regard, the Panel proceeds with the test in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (Oki Data) as follows:
Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have rights or legitimate interests in the domain name if its use meets certain requirements, which are described in the Oki Data decision :
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent's relationship with the trademark owner; and
- the respondent must not try to "corner the market" in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
The Panel finds, similarly to other UDRP panels, that the Oki Data criteria are appropriate even when the respondent is not an authorized reseller (see, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc.,WIPO Case No. D2007-1524). However, in this particular case, the Panel finds that the use of the Disputed Domain Name does not fulfill the Oki Data criteria.
Indeed, the Respondent appeared to sell not only Hitachi products but also products of other manufacturers, who may compete directly against Hitachi. Besides, the Panel finds that there was no evidence on the Respondent's disclosure of its relationship with the Complainant. Amongst other things, the Panel finds that the Respondent was using the HITACHI logo on the website under the Disputed Domain Name without any evidence on consent or permission by the Complainant. By clicking such logo, Internet users would be directed to exactly the official website of the Complainant at "". Such acts could, in the Panel's view, mislead the consumer into believing that there was an association or relation otherwise between the Respondent and Complainant, where in fact no such connection existed.
For these reasons, the Panel finds that the Respondent's use of the Disputed Domain Name cannot be considered to be a bona fide offering of goods or services under the Oki Data criteria.
Moreover, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name.
The Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant's assertions and evidence with regard to the Respondent's registration of the Disputed Domain Name and the Panel's independent researches, the Respondent had full knowledge of the Trademark and had an intention to gain profit by riding on the good reputation of the Complainant.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element under paragraph 4(a)(ii) of the Policy is established. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location".
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of "registration and use of a domain name in bad faith".
The Panel finds that the Complainant has put forth sufficient evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant's contentions and, therefore, has not refuted the Complainant's contentions. Registration in bad faith
The Panel further finds that the Complainant's trademark HITACHI has been registered on a worldwide basis, and enjoys significant reputation. The Complainant's HITACHI trademark has been in use in, among others, Thailand, where the Respondent resides, and of which the geographical term "siam" is added to the Disputed Domain Name.
The Complainant also owns and operates the website under the domain name , to which the Disputed Domain Name is identical, except the addition of the geographical term "siam" and generic word "group". Both the Complainant's trademark HITACHI, which was first registered in Thailand in 1954, and domain name , which was registered in 1989, well predate the Disputed Domain Name. Hitachi is, in the mind of a reasonable person, neither descriptive nor generic in respect of any products or services.
These facts show that the Respondent did not register the Disputed Domain Name in a fortuity. The Respondent knew or should have known of the Complainant and the Complainant's trademark HITACHI and domain name before its registration of the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant's goodwill. Use in bad faith
The Panel finds that in addition to the adoption of the famous HITACHI mark uniquely distinctive part in the Disputed Domain Name, the Respondent used the Complainant's HITACHI logo on the website, which was actually link to the official website of the Complainant, and did not disclose the actual relationship with the Complainant on that website.
Therefore, the Panel finds that the Respondent intentionally used the Disputed Domain Name to mislead consumers into believing that the website under the Disputed Domain Name is associated, fostered or recommended by the Complainant. The Panel infers from such behaviour that the Respondent's purpose in using the Disputed Domain Name is to capitalize on the reputation and goodwill of the Complainant's trademark, and thus generate unjustified revenues. Such behaviour is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent.
The Panel also notes the Complainant's contention that the Respondent was one of the defendants in a lawsuit initiated by the Complainant in 2006 relating the trade name of a company named Siam Hitachi Group Limited Partnership. Although the Complainant does not submit strong evidence as to prove that the second defendant in the mentioned lawsuit and the Respondent is one and the same person, as the Respondent does not rebut the said contention in any way, the Panel tends to infer in favour of the Complainant in this regard. As such, provided that the Respondent is actually the second defendant in the mentioned lawsuit, there should be another indication of bad faith in registration and use of the Disputed Domain Name on the part of the Respondent by its intentionally registering and using a domain name comprising the word "hitachi" after such word had been compelled to be removed from the trade name of the said company under a Court Decision.
Taking into account all of the above, the Panel finds that the Disputed Domain Name was registered and is being used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, and the third element under paragraph 4(a)(iii) of the Policy is established. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant.
Pham Nghiem Xuan Bac
Sole Panelist
Date: August 26, 2014
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