WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kabushiki Kaisha Hitachi Seisakusho v. Jorge Borborema
Case No. DTV2001-0030
See Also PDF File: DTV2001-0030
1. The Parties
The Complainant is Kabushiki KaishaHitachi, Seisakusho (Japan Corporation), 6.Lamda-Surugadai 4-chome, Chiyoda-ku, Tokyo,101-8010, Japan.
The Respondent is Jorge Borborema, Icoaraci, Belem, para, 67800 Brazil.
2. The DomainName and Registrar
The Domain Name is (ACE Encoding:).
The Registrar is The .tv Corporation International, 1100 Gkendon Ave., 8thfloor, Los Angeles, California 90024, United States of America.
3. ProceduralHistory
The Complaint was filed by e-mail on December 14, 2001, and sent in hard copyon December 21, 2001. On January 14, 2002, an amendment to the Complaint wasmade by e-mail, and followed in hard copy on January 15, 2002 and by the signedoriginal on January 23, 2002. The payment was properly made.
It was filed in accordance with the Uniform Policy for Domain NameDispute Resolution, adopted by the Internet Corporation for Assigned Names andNumbers (ICANN) on August 26, 1999 (��the Policy��), the Rules for Uniform DomainName Dispute Resolution Policy, approved by ICANN on October 24, 1999 (��theRules��) and the WIPO Supplemental Rules for Uniform Domain Name DisputeResolution Policy (��the Supplemental Rules��).
On January 17, 2002, the Complaint was properly notified to the Respondent in accordance withParagraph 2(a) of the Rules. But, no response was timely filed by the Respondent. On February 26, 2002,namely after his default, the Respondent sent a submission by e-mail.
On February 26, 2002, the AdministrativePanel was properly constituted and notified to the parties.
The date scheduled for the issuance of the Panel��s decision is March 12, 2002.
4. FactualBackground
The Complainant, Hitachi,Ltd. [hereinafter "Hitachi"]has used the trade-mark HITACHI in both Roman and Kanji characters[hereinafter the "MARK", meaning both Roman and Kanji-characterversions]. HITACHI (Roman characters) is the transliteration of the phoneticsound of the Kanji characters for "HITACHI"������inthe Japanese language.
The MARK was first registered at the Japanese Patent Office in Kanjicharacters in 1923, and in Roman characters in 1953. The Roman character MARK is licensed to approximately 600Hitachi subsidiaries in over 35 countries. The Kanji character MARK is licensed to Hitachi subsidiariesin countries or areas of Chinese character inheritance, i.e. Japan, China,Taiwan, Hong Kong and Macau.
The JapanesePatent Office has recognized the MARK as well-known and has granted to Hitachithe defensive mark registrations.
The Complainant and its subsidiariesalso own an extensive domain name portfolio incorporating the MARK, which comprise hundreds of .com registrations, over 200 registrations in the99 unrestricted ccTLDs and over 60 multilingual registrations in Kanjicharacters and Chinese characters.
On November 10, 2000, the Complainantdiscovered that the domain name was registered on September27, 2000, by the registrant identifiedas Roberio Rocoda Ramos(hereinafter referred to as ��R.Ramos��), of Hamamatsu City, ShizuokaPrefecture, Japan.
The Complainant contacted R.Ramos by e-mail onJanuary 23, 2001, requestingdisclosure of any legitimate interest he may have in the Kanji MARK, thereason for his registration and thatbe transferred to it in exchange for reimbursement of registrant'sout-of-pocket registration costs.
The Complainant received an e-mailresponse from R.Ramos on January 29, 2001, in which he claimedto have registered not for himself but for his anonymous "customer" in Brazil, who was prepared totransfer it to Hitachi for a total of USD9,140, which allegedly comprised (1)the actual registration [USD90] and transfer fees [USD50] payable to theRegistrar; (2) R.Ramos' USD1,500 "fee" for his services as"agent" and (3) part of the alleged cost of a homepage that wassupposedly under construction.
In a furthere-mail exchange with R.Ramos, theComplainant again offered to reimburse his out-of-pocket registrationcosts, but sought further particulars of the USD9,140. Further information was also requestedregarding R.Ramos' relationship with his "customer", as well as thepurpose of the homepage. R.Ramosconfirmed the Registrar's registration fee and his own USD1,500"agent's" charges, but he did not know his "customer"personally, nor was he aware of the actual purpose of the registration.
While preparing for this Complaint afterunsuccessful negotiations with R.Ramos, the Complainant discovered on August 1,2001, that R.Ramos transferred the domain name to the Respondent, a Brazilianresident.
On August 3, 2001, the Complainant wrote to theRespondent by e-mail/registered mail to ensure that the Respondent had adequatenotice of Hitachi's trade-mark/trade-name rights in the MARK and was able topersonally consider the Complainant��srequest for the transfer of in exchange for reimbursement of theRespondent's out‑of‑pocket registration expenses. The Complainant alsosummarized in this letter thecommunications with R.Ramos to date and requested disclosure of anyrights Respondent believed he had in .
On September 17, 2001, the Respondent replied by e-mail claiming that he had not registeredin bad faith because "hitati" is the name of a Japanese city. Themessage contained a link to a webpage containing brief details about HitachiCity in Japan.
On September 19, 2001, the Complainant sent a letter to the Respondentnoting that the existence of a city by this name in no way diminishesHitachi's trade-mark/trade-name rights in the word HITACHI, both in Kanji andRoman characters. Further, the Respondent was againoffered reimbursement of its out-of-pocket costs (approximately USD300)associated with registering in exchange for its transfer.
As of the date ofthis Complaint, the Complainant received nofurther communication from the Respondent and remained inactive.
5. Parties��Contentions
A. Complainant
Based on the factual background (4.), the Complainant contends as follows.
1) ThePanel��s Jurisdiction
This dispute is properly withinthe scope of the Policy and the Administrative Panel has jurisdiction to decidethe dispute. The RegistrationAgreement, pursuant to which the domain name that is the subject of thisComplaint is registered, incorporates the Policy.
The Registration Agreement thatwas in effect on this date (updated as of September 15, 2000) provides inparagraph 3 thereof that the registrant agrees to comply with the dotTV policies(which include the Registration Agreement and Dispute Policy), includingamendments and modifications thereto that are made by dotTV during the term ofthe Agreement. Paragraph 13 of theRegistration Agreement incorporates, and subjects the domain name in issue tothe Policy. This RegistrationAgreement has since been amended, the most recent update being datedNovember 6, 2001. The domain name in issue is still subject to thePolicy pursuant to Paragraph 9 and Schedule A, Paragraph 16 of the currentversion of the Agreement.
2) Submissionto this Panel Proceeding
In addition, in accordance withthe Policy 4(a), the Respondent is required to submit to a mandatoryadministrative proceeding because:(1) thedomain name is identical or confusingly similar to a trademark or service markin which the Complainant hasrights; and (2) the Respondent has no rights orlegitimate interests in respect of the domain name; and (3) the domain namewas registered and is being used in bad faith.
3) DomainName Identical to Complainant��s Mark [the Policy 4(a)(1), the Rules 3(b)(ix) (1)]
The Complainantsubmits that the domain name is identical to its MARK in itsentirety. Given Hitachi'slong-standing registrations for and use of the MARK, as well as the MARK'sdistinctiveness and fame, the MARK is not one which traders would legitimatelychoose to adopt in either Kanji or Roman characters unless seeking to create animpression of association with Hitachi. Visitors to a website at would likely consider it to be affiliated with, sponsored or endorsed byHitachi, or its subsidiaries.
Further, it isinconceivable that the Respondent would be unaware of the HITACHI MARK, both inKanji and Roman characters, and the Hitachi trade-name, and associated fame,reputation and goodwill that Hitachi has established internationally, includingamong people of cultures familiar with Kanji or Chinese characters, over thepast nine decades.
4) Lackof Rights or Legitimate Interests [the Policy 4(a)(2),4(c)(i)(ii)(iii)]
The Complainant contends that theRespondent cannot demonstrate rights or a legitimate interest in in accordance with those criteria, nor can it produce any other evidence tojustify its unauthorized use of the MARK in the disputed domain name.
The Respondentdoes not have and has never had any relationship with Hitachi or itssubsidiaries, nor have they ever authorized it to use the MARK for any purpose.
The Respondent has not used nor made demonstrable preparations to use in connection with a bona fide offering of goods or services such that it wouldhave any rights or legitimate interest in this domain name.
The Complainant contends that there isno, nor has there ever been any, evidence or assertion of any facts by theRespondent, R.Ramos, or otherwise to indicate that the Respondent is, or hasever been known by the domain name or any name other than that appearing in theWHOIS record, or that the Respondent has ever acquired any trade-mark,service-mark or other rights in the domain name.
Since the Complainant first discovered the registration of the MARK as a domainname to the present, has not linked to an active web siteinvolved in any fair use offer of goods or services by the Respondent, nor hasthe Respondent established any other presence on the Internet in associationwith .
The Respondent iscurrently making no legitimate non-commercial or fair use whatsoever of .
5) BadFaith [the Policy 4(a), 4(b)(i)(ii)(iii)(iv), the Rules 3(b)(ix)]
The Complainant contends that the registration and use of the domain name by the Respondent is in bad faith for thefollowing reasons.
The Respondent attempted to extract a very substantialamount of money from the Complainant that greatly exceeds its documentedout-of-pocket costs related to the registration of . The Complainant initiated contact bothwith the original registrant and the Respondent and attempted in good faith toresolve this matter on mutually beneficial terms. Although various representations were made to theComplainant during the course of communications regarding certain"charges" in addition to the registration fee (i.e."agency" fees, homepage development costs) that were associated withthe ultimate acquisition of by the Respondent, these extra charges of USD 9,140 were never substantiated by R.Ramos or the Respondentdespite Hitachi's numerous requests.
The Complainant submits that theRespondent registered in order to prevent Hitachi fromreflecting its MARK in this corresponding domain name, particularly in view of(a) the Respondent's lack of any relationship whatsoever with Hitachi,including authorization to use the MARK as part of a domain name or otherwise,(b) the fact that the Respondent cannot demonstrate any rights to orlegitimate interests in as previously described, and (c) theRespondent's refusal to negotiate with the Complainant in good faith and/orprovide credible grounds for its entitlement to a domain name comprisedentirely of the Complainant's MARK, even after being made aware of theComplainant's prior rights to the MARK.
The Complainant submits that theRespondent's conduct prior to the filing of this Complaint has demonstrated (1)its intention to use primarily for the purpose ofdisrupting the business of the Complainant and (2) that there is thepossibility that the Respondent is planning to use to intentionally attract, for commercial gain, Internet users to a website bycreating a likelihood of confusion with the Complainant's MARK as to thesource, sponsorship, affiliation or endorsement of the Respondent's website orof products on such website.
The Complainant has repeatedly asked the Respondent about anypossibility that the Respondent may believe he is entitled in some wayto a domain name comprised solely of the Complainant's MARK in its entirety, but the Respondent ignoredthe Complainant's requests for cooperation and has maintained the registration.
As to the use and non-use of the domain name in issue, the Complainant contends that UDRP cases have clearly established that in given factual situations, the concept of bad faith use of a domain name includes non-use or inaction on the part of the Respondent. This principle, originally enunciated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 has been adopted by numerous UDRP Panels to date, for e.g. The NASDAQ Stock Market, Inc. v Steve Grewal, WIPO Case No. DTV2001-0001.
With respect to the Respondent��s claim that the MARK in Kanji means the name of a city inJapan, thus implying that the Complainant is prevented from claiming exclusiverights (trade-mark or otherwise) to the word HITACHI in Kanji (��Ω), the Complainant contends that this issue is irrevant, becausethe right of private entities which incorporate a geographical or cityname in their domain name may bechallenged by such government or administrative authorities, unless they haveestablished rights or a legitimate interest in such name and in the instantcase, the Respondent has not demonstrated any such legitimate rights orinterest beyond asserting that HITACHI is the name of a city in Japan.
Summing up, the Complainant contends that all of the Respondent'sactions or inactions mentionedabove are indicative of the registration and use of the domain name in badfaith.
6) Inconclusion, the Complainant contendsthat it has shown all three elements required to be proved under the Policy 4(a) and claims that the domain name owned by the Respondent be transferred to theComplainant. B. Respondent
This is a default case.There are no contentions on the part of the Respondent. However, the Respondentsent a submission by e-mail afterwards. The following is a part of thissubmission, which is reproduced for the sake of discretionary considerations ofthe Complaint.
��There are two names calledHitachi in Japan. One is an electric relation and the one is the name of a city,��Hitachithink that something like I'm going to sell hitachi electrical products.but Iam thinking to make a homepage of Hitachi city.There are no relationship ofbetween Hitachi electric relation to Hatachi city��When you register Domein,you're going to register miami, not miami I right? When you registerDomein, you're going to register Japan, not Japan I right? ��That iswhy the name of China is on sale for $100,000.But the name of China country onsale for $ 50��If this name is very important to Hitachi electric relation.whythey don't buy it before I baught,i have registed this name day 27 sept 2000 hitachieletric have first contact to mr ramos day 23 jan 2001 (four mounts after),dottv had started to domein register few month homepage still not open,so there is no prove that I have bad faith.��(sic)
6. Discussionand Findings
1) Jurisdictionand Authority
The Registration Agreement,pursuant to which the domain name that is the subject of thisComplaint is registered, incorporates the Policy. Therefore, thisdispute is properly within the scope of the Policy and the Administrative Panelhas jurisdiction to decide the dispute.
2) TheSubmission of the Respondent to this Panel Administrative Proceeding
In accordance with Paragraph 4(a) of the Policy, the Respondent is required to submit toa mandatory administrative proceeding because (1) the domain name isidentical or confusingly similar to a trademark or service mark in which theComplainant has rights; and (2) theRespondent has no rights or legitimate interests in respect of the domain name;and (3) the domain name wasregistered and is being used in bad faith.
3) Identicalor Confusingly Similar [Paragraph 4(a)(i) of the Policy andParagraph 3(b)(ix) of the Rules]
The domain name is the Kanji characters of HITACHI which is identical to the Mark in its entirety.
As the Complainant contends, the Mark isnot one which traders would legitimately choose to adopt in either Kanji orRoman characters unless seeking to create an impression of association withHitachi. Further, it isinconceivable that the Respondent would be unaware of the HITACHI MARK, both inKanji and Roman characters, and the Hitachi trade-name, and associated fame,reputation and goodwill that Hitachi has established internationally, includingamong people of cultures familiar with Kanji or Chinese characters, over thepast nine decades.
There are already some cases regarding the Mark. For examples, Hitachi, Ltd. v. Fortune International Development Ent. Co. Limited., WIPO Case No. D2000-0412; Hitachi, Ltd. v. Yosi Hasidim, WIPO Case No. D2000-1542 and Hitachi, Ltd. v. Ijam, Inc., WIPO Case No. D2000-1557, regarding , and respectively, which were all transferred to Hitachi because they were found to be prima facie identical or confusingly similar to its MARK since the dominant portion of each domain name comprised Hitachi's distinctive MARK in its entirety, and the additional elements were all descriptive and generic that were found to add nothing to the domain names as a whole.
The domain name in this Complaint is comprised solelyof the Kanji Mark in its entirety, without any other elements that couldpossibly distinguish the domain name and negate confusion with Hitachi��s MARK.The same reason applies to the instant case where, as the Respondent asserts,the domain name is for the city of HITACHI, unless he shows that he has any rights or alegitimate interest in it. Additionally, the word HITACHI (Roman andKanji) has long been a registered trade-mark used extensively by theComplainant, it is now an internationally well-known trade-mark. Moreover, even in Japan the wordHITACHI (in both Roman and Kanji characters) is generally identified withHitachi, Ltd., its goods and services, rather than the city.
4) Lackof Rights or LegitimateInterest [Paragraph 4(a)(ii) and Paragraph 4(c) of the Policy]
The Respondent has not any rights or a legitimateinterest in , because theRespondent does not have and has never had any relationship with Hitachi or itssubsidiaries, nor have they ever authorized it to use the MARK for any purpose.
The Respondent has not used nor made demonstrable preparations to use in connection with a bona fide offering of information such that it would have any rights or a legitimate interest in this domainname. Furthermore, the Respondentis currently making no legitimate non-commercial or fair use whatsoever of .
Even if, as the Respondent contends, the domainname means that for thecity of Hitachi, the Respondent has not shown any legitimate interest inregistering and using such Mark.
5) BadFaith [Paragraphs 4(a) and(b) ofthe Policy and Paragraph 3(b)(ix) of the Rules]
As is shown in the Factual Background (4.),when the Complainant firstcontacted R.Ramos, the registrant of the domain name , R.Ramos claimed to have registered it not for himself but for his anonymous "customer" in Brazil and told that his customer was preparedto transfer it to Hitachi for a total of USD 9,140, which substantially exceeds (1) the actualregistration [USD90] and transfer fees [USD50] payable to the Registrar; (2)R.Ramos' USD1,500 "fee" for his services as "agent" and (3)part of the alleged cost of a homepage.
In the Respondent��s delayed submission, theRespondent contends, ��If this name isvery important to Hitachi electric relation.why they don't buy it before Ibaught,i have registed this name day 27 sept 2000 hitachi eletric have firstcontact to mr ramos day 23 jan 2001 (four mounts after)(sic) �ġ�
Although this part of his submission is notclear, it is highly probable that the Respondent was the anonymous customer ofR.Ramos, because the Respondent himself wrote that he registered it onSeptember 27, 2000, which is the date of the registration of the domain name.Then, the Respondent himself attempted through R.Ramos as his agent to transferthe domain name for valuable consideration in excess of the out-of-pocket costsand registered and used the domain name in bad faith.
Apart from this reasoning, the Respondent maybe held to register and use the domain name in bad faith for the followingreasons. The Respondent��s submission is here again relevant.
He first contends that the domain name means the city of Hitachi, not Hitachi,Ltd. His submission then asserts that the domain name of China only is far moreexpensive than that of China with the country name and questions why the Complainantdid not buy such important domain name, ignoring the fact that the Complainantrepeatedly attempted to buy it at a reasonable price. It follows impliedly thatthe Respondent is aware of the high value of the sole Mark of Hitachi andintended to sell the domain name , which is identical to the Complainant��s Mark and in which the Respondenthas no legitimate interest, at a much higher price than the out-of-pocketcosts. These impliedly show theRespondent��s bad faith.
Finally, the Respondent contends that he cannotbe in bad faith before his homepage is not open. As the Complainantconvincingly proves, the concept of bad faith use of a domain name includesnon-use or inaction on the part of the Respondent.
7. Decision
In accordance with Paragraph 4(i) ofthe Policy and Paragraph 15(a) of theRules, and for all the foregoing reasons, the Panel requires that theregistered domain name be transferred to the Complainant.
Zentaro Kitagawa
Sole Panelist
Dated: March 12, 2002
Full & Egal Universal Law Academy