The Complainant is Hitachi, Ltd. (Kabushiki Kaisha Hitachi Seisakusho), Japan, represented by Krishna & Saurastri, India.
The Respondent is Domains By Proxy, LLC, United States of America / kurmi boys, services, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2021. On January 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 20, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 22, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Respondent sent an email communication on January 23, 2021. The Complainant filed an amended Complaint on January 25, 2021. The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2021. The Center notified the Commencement of Panel Appointment Process on February 18, 2021. The Center appointed Alistair Payne as the sole panelist in this matter on March 3, 2021. 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 based in Tokyo, Japan, operates a global industrial conglomerate offering various products including in the areas of social infrastructure, information technology solutions, high function materials & components, healthcare solutions, automotive solutions, construction machinery, industrial products & services and consumer durables. This group notably includes Hitachi Automotive Systems, Ltd., which has since 1964 provided automotive related products and services to customers and now operates through 56 subsidiaries worldwide, including in India. In the year to March 31, 2020 Hitachi Automotive Systems, Ltd. and its subsidiaries recorded consolidated revenues of 811.6 billion yen. The Complainant trades under the HITACHI trade mark for which it owns trade mark registrations worldwide, including in India where it owns word mark registration 155314 registered from August 27, 1952. It also owns a portfolio of domain names including the HITACHI mark from which it maintains websites, including The Respondent, based in Delhi, India registered the disputed domain name on March 16, 2020. It currently resolves to a parking site, which contains pay-per-click links. 5. Parties’ Contentions A. Complainant The Complainant submits that it owns registered trade mark rights as described above. It says that the inclusion of the word “automotive” does not avoid confusion and in fact serves to increase confusion because it suggests that the use of the disputed domain name pertains to the Complainant’s automotive business segment and, in this regard, the Complainant notes the domain names that its group of companies already owns for The Complainant submits that it is the prior user of the HITACHI mark and that to the best of its knowledge the Respondent has never been commonly known by the disputed domain name and has never acquired any trade mark or service mark rights in the disputed domain name. It further says that no licence, permission or authorisation of any kind has been granted by the Complainant or any of its group companies to the Respondent to use the HITACHI trade mark in any manner or to incorporate it into a domain name. The Complainant says that, to the best of its knowledge, the Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. On the contrary, says the Complainant, the Respondent has made illegitimate, unfair use of the disputed domain name, with intent for illicit commercial gain. Specifically, the Respondent is using the disputed domain name in connection with an employment-related and identity theft scam, by impersonating the Complainant in an effort to obtain personal information and to make illicit commercial gains from innocent job-seekers. This case, says the Complainant, is similar to the circumstances in Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International Inc. v. Isaac Isaac,WIPO Case No. D2011-1275, in which the panel found that the respondent had no rights or legitimate interests in the domain name at issue in that case. The Complainant submits that incorporating a widely-known trade mark as a domain name is a clear indication of bad faith in itself, even without considering other elements (see Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi, Ltd.) v. Click Consulting, Ltd.,WIPO Case No. D2007-0809) and says that where, as in this case, the reputation of a complainant in a given mark is significant and the mark has strong similarities to the disputed domain name, then the likelihood of confusion is such that bad faith on the part of the respondent may be inferred (Petróleo Brasileiro S.A. – Petrobras v. Excellent Vision,WIPO Case No. D2013-2062). It submits that where a trade mark such as HITACHI has achieved tremendous global reputation and goodwill and is widely-known across the world, then the Panel may conclude that the Respondent knew or should have known that the disputed domain name would be identical or confusingly similar to the Complainant’s mark. The Complainant submits that the Respondent is using the disputed domain name in connection with an employment-related and identity-theft scam, by impersonating the Complainant in an effort to obtain personal information from innocent job-seekers. It says that the Respondent approaches unsuspecting individuals posing to be an Indian HR Consultant of Hitachi Automotive Systems, Ltd. and conducts a “telephonic interview” for a job opportunity in Hitachi Automotive Systems, Ltd. The Respondent conducts the interview in English but with a Japanese accent. In addition to the telephone interview, the Respondent addresses emails to the target while using or keeping in copy the email address “[…]@hitachi-automotive.info”.These emails are aimed to deceive unsuspecting recipients into believing that they have secured a job as “Senior Manager (Sales/ Product Marketing)” in “Hitachi Automotive Industry Japan” and calls upon the targeted recipient to provide scanned copies of personal/ confidential documents such as a passport, passport sized photograph, highest qualification certificate, current company offer letter or salary slip. The Complainant has provided examples of these emails in support of its Complaint. The Complainant submits that the Respondent’s conduct in using the disputed domain name in connection with an employment related and identity-theft scam, by impersonating the Complainant in an effort to obtain personal/ confidential information and documents from innocent job seekers, clearly could cause confusion resulting in commercial gain by the Respondent and therefore falls within paragraph 4(b)(iv) of the Policy. Finally, the Complainant says that the Respondent’s use of privacy/ proxy service to conceal its identity and contact information further supports an inference of bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has demonstrated that it owns various trade mark registrations worldwide for its HITACHI trade mark, including in India where it owns word mark registration 155314 registered from August 27, 1952. The disputed domain name wholly incorporates the Complainant’s trade mark. The fact that the descriptive English word “automotive” follows HITACHI and a hyphen prior to the “.info” Top-Level Domain, does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s registered trade mark. As a result, the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests The Complainant has submitted that it is the prior user of the HITACHI mark and to the best of its knowledge the Respondent has never been commonly known by the disputed domain name and has never acquired any trade mark or service mark rights in the disputed domain name. It contends further that it has not granted any licence, permission or authorisation of any kind to the Respondent to use the HITACHI trade mark in any manner or to incorporate it into a domain name. The Complainant has said that, to the best of its knowledge, the Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. It appears on the contrary that the Respondent is using the disputed domain name in connection with an employment-related and identity theft scam, by impersonating the Complainant in an effort to obtain personal information and to make illicit commercial gains from innocent job-seekers. This is clearly not a bona fide use of the disputed domain name and the Respondent has failed to explain its conduct or to rebut the case made out by the Complainant. For these reasons, as outlined under Part C below and consistent with the decision in similar circumstances in Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International Inc. v. Isaac Isaac,WIPO Case No. D2011-1275, the Panel findsthat the Respondent has no rights or legitimate interests in the disputed domain name and that the Complaint also succeeds under this element of the Policy. C. Registered and Used in Bad Faith The Complainant’s HITACHI mark has been used by the Complainant and its group for many years and its registration in India, where the Respondent is based, pre-dates the registration of the disputed domain name in March 2020 by many decades. Considering also the very substantial degree of renown attaching to the Complainant’s HITACHI mark worldwide based on its very substantial and widespread use and the Complainant group’s substantial internet presence by 2020, including concerning its automotive related business, the Panel finds that the Respondent must have been aware of the Complainant’s HITACHI mark when it registered the disputed domain name. The use of the disputed domain name to support an email account that is used by the Respondent to impersonate the Complainant fraudulently in an effort to obtain personal information from would be job seekers for the purposes of what appears to be potential identity-theft scams clearly amounts to use in bad faith under the Policy. The Complainant has provided evidence on the record of emails and letters sent by email, ostensibly in the name of Hitachi Automotive System Ltd but apparently sent by the Respondent for this purpose. It is notable that the main letter of offer was sent from a Tokyo address with the HITACHI trade mark and tag line at the top of the letter and was creatively but unrealistically signed by one “Frank Sinatra”. This was all a complete fiction and no such employment campaign existed, as confirmed by another email sent by the Complainant’s real subsidiary, Hitachi Automotive, System Ltd., for the purpose of these proceedings. The Policy was designed to help prohibit fraud. The use of the disputed domain name for a fraudulent email scheme in this manner falls squarely within the bounds of use in bad faith, without the need for it to qualify under any of the sections of paragraph 4(b) of the Policy. Accordingly, the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith and the Complaint also succeeds under this section 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 Alistair Payne
Sole Panelist
Date: March 12, 2021
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