WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kabushiki Kaisha Hitachi Seisakusho d/b/a Hitachi Ltd v. J.K. Vavlitis Ltd
Case No. DCY2007-0001
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 J.K. Vavlitis Ltd, Nicosia, Cyprus.
2. The Domain Name and Registrar
The disputed domain name is registered with the University of Cyprus.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2007 against an unknown Respondent. On November 12, 2007, the Center transmitted by email to the University of Cyprus a request for registrar verification in connection with the domain name at issue. On November 14, 2007, the University of Cyprus transmitted by email to the Center its verification response providing the registrant and its contact details. The Complainant filed an amendment to the Complaint on November 17, 2007 identifying the new 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 November 30, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2007.
The Center appointed Tobias Zuberb�hler as the sole panelist in this matter on January 3, 2008. 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 claims to be one of the world’s largest companies, offering a wide array of goods and services in the field of consumer electronics and various other fields. According to the Complainant’s Annual Report 2006, total sales exceeded USD 80 billion. In terms of worldwide fame, the Complainant was recently ranked 48th out of 500 companies by Fortune Magazine.
The trademark HITACHI was first registered in Japan in 1953, and the Complainant currently owns trademark registrations for HITACHI and related marks in over 175 countries. In Cyprus, where the Respondent is domiciled, Complainant owns 31 separate trademark registrations containing the mark HITACHI. HITACHI has been listed as a famous trademark by the AIPPI in Japan. In addition, the Complainant has registered over 300 domain names comprising or consisting of the mark HITACHI.
The disputed domain name was registered by the Respondent in August 2007 and is currently inactive.
5. Parties’ Contentions
A. Complainant
The Complainant objects to the use of the disputed domain name by the Respondent and bases its Complaint on the following grounds:
1. The mere addition of the TLDs “.com” and “.cy” to the Complainant’s famous trademark does not prevent a finding of confusing similarity.
2. The Respondent makes no legitimate non-commercial or fair use of the domain name at issue. The Complainant has no relationship with the Respondent and has never authorized the Respondent to use the Complainant’s marks or its trade name as a domain name. The Respondent has not commonly been known by the domain name and does not conduct any legitimate commercial or non-commercial business activity under the domain name.
3. By knowingly choosing a domain name comprised entirely of Complainant’s famous trademark, Respondent has registered the domain name in bad faith. The Respondent’s passive holding of the domain name at issue constitutes bad faith use of the domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is comprised of the Complainant’s trademark HITACHI, the generic TLD identifier “.com”, and the country code TLD for Cyprus, “.cy”. The mere addition of the TLDs “.com” and “.cy” does not prevent a finding of confusing similarity.
The Complainant has thus fulfilled the requirements under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the domain name at issue. The Complainant, having made a prima facie case which remains unrebutted, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the considerable fame of the Complainant’s mark, it is inconceivable that the Respondent was not aware of the Complainant’s rights to the HITACHI trademark. By knowingly choosing a domain name comprised entirely of the Complainant’s famous trademark, Respondent has registered the domain name in bad faith. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi, Ltd.) v. Click Consulting, Ltd.,WIPO Case No. D2007-0809.
With regard to the issue of whether Respondent has “used” the domain name in question, the issue of “passive holding” qualifying as “use” has been settled in a large number of Panel decisions. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. This is especially true in the case of undisputedly famous trademarks such as MCDONALDS or HITACHI. See McDonald’s Corporation v. Easy Property,WIPO Case No. D2006-1142; and Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi, Ltd.) v. Click Consulting, Ltd.,WIPO Case No. D2007-0809. Accordingly, the Respondent’s passive holding of the domain name at issue constitutes bad faith use of the domain name.
The Panel thus finds that the Respondent’s conduct constitutes bad faith registration and use in the sense of paragraph 4(a)(iii) of the Policy.
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.
Tobias Zuberb�hler
Sole Panelist
Dated: January 11, 2008
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