The Complainant is Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi, Ltd) of Tokyo, Japan, represented by Rouse Legal, Viet Nam.
The Respondent is Hai Dang of Ho Chi Minh City, Viet Nam. 2. The Domain Name and Registrar
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 October 21, 2014. On October 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 23, 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 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 October 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 18, 2014.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on December 2, 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. 4. Factual Background
The following summary sets out the uncontested factual submissions made by the Complainant:
4.1 The Complainant was founded in 1910 in the Ibaraki Perfecture, Hitachi, Japan and is amongst the largest Japanese multinational engineering and electronics conglomerate.
4.2 The Complainant operates in eleven business segments: Information and Telecommunication Systems, Social Infrastructure, High Functional Materials and Components, Financial Services, Power Systems, Electronic Systems and Equipment, Automotive Systems, Railway and Urban Systems, Digital Media and Consumer Products, Construction Machinery, and Other Components and Systems, in around 100 countries in the world, including Japan, China, Taiwan, Province of China, South-East Asia, South Asia and Middle East.
4.3 The Complainant has amongst others, been developing and manufacturing elevators and escalators for the past 90 years and now has 23 affiliated companies for elevators and escalators in Japan, China, Taiwan, Province of China, South-East Asia and Middle East.
4.4 The Complainant has registered the HITACHI trademark in various countries.
- The earliest registration for the HITACHI trademark was in 1952 in Japan.
- In Viet Nam, the following HITACHI trademarks have also been registered:
Trademark
Registration Number
Registration Date
Class(es)
HITACHI
2428
March 28, 1991
01, 02, 06, 07, 08, 09, 10, 11, 12, 17, 18, 19, 20, 28
HITACHI
72
June 17, 985
06, 07, 08, 09, 10, 11, 12
HITACHI
3020
June 28,1991
01, 06, 07, 08, 09, 10, 11, 12
HITACHI
7135
December 29, 1992
35, 36, 37, 38, 39, 40, 41, 42
HITACHI
8173
April 30, 1993
16
HITACHI
45035
February 7, 2003
40
HITACHI
206796
May 30, 2013
09, 11, 35
HITACHI
172368
September 22, 2011
01, 07,09, 11, 37, 40, 42
- The Complainant and its affiliated companies operate numerous websites whose domain names incorporate the word "hitachi", such as , and . 5. Parties' Contentions A. Complainant
5.1 The Complainant asserts that HITACHI is a well-known trademark. The Complainant contends further that the disputed domain name is confusingly similar to the Complainant's HITACHI trademark for the following reasons:
(a) the disputed domain name comprises of the Complainant's HITACHI trademark as its dominant feature.
(b) the addition of the Top-Level Domain (gTLD) ".com" is inconsequential when determining similarities between domain names and trademarks.
(c) the addition of the suffix "thangmay" does not detract from the overall impression formed by the public that the disputed domain name is owned by or related to the Complainant. In fact, the suffix "thangmay" means "elevator" in Vietnamese and can be literally interpreted as HITACHI elevators, being one of the products registered under the HITACHI trademark, sold and marketed by the Complainant.
5.2 The Complainant further contends that the Respondent does not have any rights or legitimate interests to the disputed domain name because:
(a) the Respondent has not adduced any evidence to indicate the Respondent's rights to the disputed domain name.
(b) the Respondent cannot be using "hitachi" as a descriptive word as "hitachi" has no meaning in English.
(c) the Complainant had registered and used the HITACHI trademark in Viet Nam since 1985, long before the disputed domain name was registered on July 25, 2013.
(d) the Respondent is not in any way related to the Complainant's business, is not one of its agents and does not carry out any activity or has any business with the Complainant. The Complainant has not licensed or authorised the Respondent in any way including to register or to use the disputed domain name.
(e) the Respondent must have been aware of the Complainant's rights to the HITACHI trademark and the Complainant's business at the point of registration of the disputed domain name given that the Respondent had embedded a link on the landing page of the website at the disputed domain name to the Complainant's official website and represented itself to be conducting business under a company known as Hitachi Elevator Vietnam Ltd. when it is not an authorised service provider, franchisee or licensee of the Complainant.
5.3 The Complainant further contends that the Respondent registered and/or used the disputed domain name in bad faith and relies on the following:
(a) the Complainant has not found any evidence to suggest that the Respondent has any rights or legitimate interests to the HITACHI trademark including any licenses or authorisations from the Complainant.
(b) the Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant's trademark as the source, sponsorship, affiliation or endorsement of its website.
(c) the Respondent had registered and designed the disputed domain name in bad faith to profit from consumer confusion as:
(i) the design and features found in the website at the disputed domain name is similar to the Complainant's official website.
(ii) the Respondent promoted various products of the Complainant at the website at the disputed domain name, including HITACHI branded elevators and escalators.
(iii) the Respondent included in the website at the disputed domain name, an introduction to HITACHI Viet Nam and its activities in Viet Nam. The Respondent had also embedded a link on its landing page to the Complainant's official website. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel is satisfied with the evidence adduced by the Complainant to evidence its rights to the HITACHI trademark. The HITACHI trademark has been registered by the Complainant in numerous jurisdictions and has been used extensively on a worldwide basis. This has also been confirmed by several URDP decisions (see Hitachi Ltd. v. Pearson Network S.A., WIPO Case No. D2006-1271; Hitachi Ltd. v Arthur Wrangle, WIPO Case No. D2005-1105; and Hitachi Ltd. v. DRP Services , WIPO Case No. D2004-0344).
The disputed domain name comprises of the Complainant's HITACHI trademark in its entirety with the additional suffix "thangmay", which the Complainant explains to be the Vietnamese translation for the word "elevator". The addition of this descriptive word does not detract one's attention from the distinctive features of the disputed domain name, which is HITACHI. On the contrary, it could be understood by someone to mean that the disputed domain name resolves to an authorised site for HITACHI products in Viet Nam, particularly as the Respondent had stated on the landing page that the website is by HITACHI Elevator Vietnam Ltd.
As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant's HITACHI trademark for the purposes of the Policy. B. Rights or Legitimate Interests
The Complainant's prima facie assertions have not been rebutted by the Respondent to indicate whether it has any rights or legitimate interests to the disputed domain name. There was also no evidence put forward by the Respondent to indicate that the Respondent was licensed or authorised by the Complainant to use the HITACHI trademark.
The Complainant has adduced sufficient evidence that the disputed domain name is being used by the Respondent solely for commercial gain. The disputed domain name resolves to a website located at "www.", which offers HITACHI products and does not disclose the Respondent's relationship with the Complainant. The Complainant asserts that the Respondent is not an authorised service provider of the Complainant's products and has never had a business relationship with the Complainant. Therefore, by operating such a website under the disputed domain name, the Respondent is in effect creating a false impression or is likely to create such a false impression that the Respondent is an authorized supplier of the Complainant's products without express authority of the Complainant.
In the circumstances, the Panel cannot find any justification, right or legitimate interest on the part of the Respondent to the words comprising the disputed domain name or to the disputed domain name itself.
Based on the above circumstances, the Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant. C. Registered and Used in Bad Faith
The Panel agrees with the contention by the Complainant that the Respondent had knowledge of the Complainant's rights to the HITACHI trademark when it registered and started using the disputed domain name.
The factors that were taken into account to arrive at this conclusion include:
(a) the date of registration of the disputed domain name which was on July 25, 2013. This is long after the Complainant has registered and started using the HITACHI trademark in Viet Nam in 1985.
(b) the notoriety of the trademark through the widespread and long use of the HITACHI trademark by the Complainant at a global level well before the disputed domain name was registered by the Respondent.
(c) the fact that the disputed domain name resolved to a website that, although in the Vietnamese language, included references to the HITACHI trademark and logo.
The Panel cannot find any justification for the registration and use of the disputed domain name in such circumstances, except to find that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website.
As such, the Panel finds that bad faith has been demonstrated under paragraph 4(b)(iv) of the Policy. 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.
Syed Naqiz Shahabuddin
Sole Panelist
Date: December 17, 2014
Full & Egal Universal Law Academy