WIPO Domain Name Decision DTV2001-0030 for 日立.tv

page 1 WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Kabushiki Kaisha Hitachi Seisakusho v. Jorge Borborema Case No. DTV2001– 0030 1.The Parties The Complainant is Kabushiki Kaisha Hitachi, 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 Domain Name and Registrar The Domain Name is (ACE Encoding:). The Registrar is The .tv Corporation International, 1100 Gkendon Ave., 8th floor,Los Angeles, California 90024, United States of America. 3.Procedural History The Complaint was filed by e-mail on December 14, 2001, and sent in hard copy onDecember 21, 2001. On January 14, 2002, an amendment to the Complaint was madeby e-mail, and followed in hard copy on January 15, 2002 and by the signed original onJanuary 23, 2002. The payment was properly made. It was filed in accordance with the Uniform Policy for Domain Name DisputeResolution, adopted by the Internet Corporation for Assigned Names and Numbers(ICANN) on August 26, 1999 (“the Policy”), the Rules for Uniform Domain NameDispute Resolution Policy, approved by ICANN on October 24, 1999 (“the Rules”) andthe WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy(“the Supplemental Rules”). On January 17, 2002, the Complaint was properly notified to the Respondent inaccordance with Paragraph 2(a) of the Rules. But, no response was timely filed by theRespondent. On February 26, 2002, namely after his default, the Respondent sent asubmission by e-mail. page 2 On February 26, 2002, the Administrative Panel was properly constituted and notifiedto the parties. The date scheduled for the issuance of the Panel’s decision is March 12, 2002. 4.Factual Background The Complainant, Hitachi, Ltd. [hereinafter "Hitachi"] has used the trade-markHITACHI in both Roman and Kanji characters [hereinafter the "MARK", meaning bothRoman and Kanji-character versions]. HITACHI (Roman characters) is thetransliteration of the phonetic sound of the Kanji characters for "HITACHI"inthe Japanese language. The MARK was first registered at the Japanese Patent Office in Kanji characters in1923, and in Roman characters in 1953. The Roman character MARK is licensed toapproximately 600 Hitachi subsidiaries in over 35 countries. The Kanji characterMARK is licensed to Hitachi subsidiaries in countries or areas of Chinese characterinheritance, i.e. Japan, China, Taiwan, Hong Kong and Macau. The Japanese Patent Office has recognized the MARK as well-known and has grantedto Hitachi the defensive mark registrations. The Complainant and its subsidiaries also own an extensive domain name portfolioincorporating the MARK, which comprise hundreds of .com registrations, over200 registrations in the 99 unrestricted ccTLDs and over 60 multilingual registrationsin Kanji characters and Chinese characters. On November 10, 2000, the Complainant discovered that the domain name was registered on September 27, 2000, by the registrant identified asRoberio Rocoda Ramos (hereinafter referred to as “R.Ramos”), of Hamamatsu City,Shizuoka Prefecture, Japan. The Complainant contacted R.Ramos by e-mail on January 23, 2001, requestingdisclosure of any legitimate interest he may have in the Kanji MARK, the reason for hisregistration and that be transferred to it in exchange for reimbursement ofregistrant's out-of-pocket registration costs. The Complainant received an e-mail response from R.Ramos on January 29, 2001, inwhich he claimed to have registered not for himself but for his anonymous"customer" in Brazil, who was prepared to transfer it to Hitachi for a total ofUSD9,140, which allegedly comprised (1) the actual registration [USD90] and transferfees [USD50] payable to the Registrar; (2) R.Ramos' USD1,500 "fee" for his servicesas "agent" and (3) part of the alleged cost of a homepage that was supposedly underconstruction. In a further e-mail exchange with R.Ramos, the Complainant again offered toreimburse his out-of-pocket registration costs, but sought further particulars of theUSD9,140. Further information was also requested regarding R.Ramos' relationshipwith his "customer", as well as the purpose of the homepage. R.Ramos confirmed theRegistrar's registration fee and his own USD1,500 "agent's" charges, but he did notknow his "customer" personally, nor was he aware of the actual purpose of theregistration. page 3 While preparing for this Complaint after unsuccessful negotiations with R.Ramos, theComplainant discovered on August 1, 2001, that R.Ramos transferred the domain name to the Respondent, a Brazilian resident. On August 3, 2001, the Complainant wrote to the Respondent by e-mail/registered mailto ensure that the Respondent had adequate notice of Hitachi's trade-mark/trade-namerights in the MARK and was able to personally consider the Complainant’s request forthe transfer of in exchange for reimbursement of the Respondent'sout-of-pocket registration expenses. The Complainant also summarized in thisletter the communications 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 notregistered in bad faith because "hitati" is the name of a Japanese city. Themessage contained a link to a webpage containing brief details about Hitachi City inJapan. On September 19, 2001, the Complainant sent a letter to the Respondent noting that theexistence of a city by this name in no way diminishes Hitachi's trade-mark/trade-namerights in the word HITACHI, both in Kanji and Roman characters. Further, theRespondent was again offered reimbursement of its out-of-pocket costs (approximatelyUSD300) associated with registering in exchange for its transfer. As of the date of this Complaint, the Complainant received no further communicationfrom the Respondent and remained inactive. 5.Parties’ Contentions A.Complainant Based on the factual background (4.), the Complainant contends as follows. 1)The Panel’s Jurisdiction This dispute is properly within the scope of the Policy and the Administrative Panel hasjurisdiction to decide the dispute. The Registration Agreement, pursuant to which thedomain name that is the subject of this Complaint is registered, incorporates the Policy. The Registration Agreement that was in effect on this date (updated as ofSeptember 15, 2000) provides in paragraph 3 thereof that the registrant agrees tocomply with the dotTV policies (which include the Registration Agreement andDispute Policy), including amendments and modifications thereto that are made bydotTV during the term of the Agreement. Paragraph 13 of the Registration Agreementincorporates, and subjects the domain name in issue to the Policy. This RegistrationAgreement has since been amended, the most recent update being datedNovember 6, 2001. The domain name in issue is still subject to the Policy pursuant toParagraph 9 and Schedule A, Paragraph 16 of the current version of the Agreement. 2)Submission to this Panel Proceeding In addition, in accordance with the Policy 4(a), the Respondent is required to submit toa mandatory administrative proceeding because:(1) the domain name is identical or page 4 confusingly similar to a trademark or service mark in which the Complainant has rights;and (2) the Respondent has no rights or legitimate interests in respect of the domainname; and (3) the domain name was registered and is being used in bad faith. 3)Domain Name Identical to Complainant’s Mark [the Policy 4(a)(1), theRules 3(b)(ix) (1)] The Complainant submits that the domain name is identical to its MARK inits entirety. Given Hitachi's long-standing registrations for and use of the MARK, aswell as the MARK's distinctiveness and fame, the MARK is not one which traderswould legitimately choose to adopt in either Kanji or Roman characters unless seekingto create an impression of association with Hitachi. Visitors to a website at would likely consider it to be affiliated with, sponsored or endorsed by Hitachi, or itssubsidiaries. Further, it is inconceivable that the Respondent would be unaware of the HITACHIMARK, both in Kanji and Roman characters, and the Hitachi trade-name, andassociated fame, reputation and goodwill that Hitachi has established internationally,including among people of cultures familiar with Kanji or Chinese characters, over thepast nine decades. 4)Lack of Rights or Legitimate Interests [the Policy 4(a)(2),4(c)(i)(ii)(iii)] The Complainant contends that the Respondent cannot demonstrate rights or alegitimate interest in in accordance with those criteria, nor can it produceany other evidence to justify its unauthorized use of the MARK in the disputed domainname. The Respondent 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 inconnection with a bona fide offering of goods or services such that it would have anyrights or legitimate interest in this domain name. The Complainant contends that there is no, nor has there ever been any, evidence orassertion of any facts by the Respondent, R.Ramos, or otherwise to indicate that theRespondent is, or has ever been known by the domain name or any name other than thatappearing in the WHOIS 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 domain nameto the present, has not linked to an active web site involved in any fair useoffer of goods or services by the Respondent, nor has the Respondent established anyother presence on the Internet in association with . The Respondent is currently making no legitimate non-commercial or fair usewhatsoever of . 5)Bad Faith [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 the following reasons. page 5 The Respondent attempted to extract a very substantial amount of money from theComplainant that greatly exceeds its documented out-of-pocket costs related to theregistration of . The Complainant initiated contact both with the originalregistrant and the Respondent and attempted in good faith to resolve this matter onmutually beneficial terms. Although various representations were made to theComplainant during the course of communications regarding certain "charges" inaddition to the registration fee (i.e. "agency" fees, homepage development costs) thatwere associated with the ultimate acquisition of by the Respondent, theseextra charges of USD 9,140 were never substantiated by R.Ramos or the Respondentdespite Hitachi's numerous requests. The Complainant submits that the Respondent registered in order to preventHitachi from reflecting its MARK in this corresponding domain name, particularly inview 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 or legitimate interestsin as previously described, and (c) the Respondent's refusal to negotiate withthe Complainant in good faith and/or provide credible grounds for its entitlement to adomain name comprised entirely of the Complainant's MARK, even after being madeaware of the Complainant's prior rights to the MARK. The Complainant submits that the Respondent's conduct prior to the filing of thisComplaint has demonstrated (1) its intention to use primarily for the purposeof disrupting the business of the Complainant and (2) that there is the possibility thatthe Respondent is planning to use to intentionally attract, for commercialgain, Internet users to a website by creating a likelihood of confusion with theComplainant's MARK as to the source, sponsorship, affiliation or endorsement of theRespondent's website or of products on such website. The Complainant has repeatedly asked the Respondent about any possibility that theRespondent may believe he is entitled in some way to a domain name comprised solelyof the Complainant's MARK in its entirety, but the Respondent ignored theComplainant'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 thatUDRP cases have clearly established that in given factual situations, the concept of badfaith 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. NuclearMarshmallows, WIPO Case No. D2000-0003 has been adopted by numerous UDRPPanels to date, for e.g. The NASDAQ Stock Market, Inc. v Steve Grewal, WIPO CaseNo. DTV2001-0001. With respect to the Respondent’s claim that the MARK in Kanji means the name of acity in Japan, thus implying that the Complainant is prevented from claiming exclusiverights (trade-mark or otherwise) to the word HITACHI in Kanji , theComplainant contends that this issue is irrevant, because the right of private entitieswhich incorporate a geographical or city name in their domain name may be challengedby such government or administrative authorities, unless they have established rights ora legitimate interest in such name and in the instant case, the Respondent has notdemonstrated any such legitimate rights or interest beyond asserting that HITACHI isthe name of a city in Japan. page 6 Summing up, the Complainant contends that all of the Respondent's actions or inactionsmentioned above are indicative of the registration and use of the domain name in badfaith. 6)In conclusion, the Complainant contends that it has shown all three elementsrequired to be proved under the Policy 4(a) and claims that the domain name owned by the Respondent be transferred to the Complainant. B.Respondent This is a default case. There are no contentions on the part of the Respondent.However, the Respondent sent a submission by e-mail afterwards. The following is apart of this submission, which is reproduced for the sake of discretionary considerationsof the Complaint. “There are two names called Hitachi in Japan. One is an electric relation and theone is the name of a city,…Hitachi think that something like I'm going to sellhitachi electrical products.but I am thinking to make a homepage of Hitachicity.There are no relationship of between Hitachi electric relation to Hatachicity…When you register Domein, you're going to register miami, not I right? When you register Domein, you're going to register Japan, notJapan I right? …That is why the name of China is on sale for$100,000.But the name of China country on sale for $ 50…If this name is veryimportant to Hitachi electric relation.why they don't buy it before I baught,i haveregisted this name day 27 sept 2000 hitachi eletric have first contact to mr ramosday 23 jan 2001 (four mounts after),dot tv had started to domein register fewmonth homepage still not open ,so there is no prove that I have badfaith.”(sic) 6.Discussion and Findings 1)Jurisdiction and Authority The Registration Agreement, pursuant to which the domain name that is thesubject of this Complaint is registered, incorporates the Policy. Therefore, this disputeis properly within the scope of the Policy and the Administrative Panel has jurisdictionto decide the dispute. 2)The Submission of the Respondent to this Panel Administrative Proceeding In accordance with Paragraph 4(a) of the Policy, the Respondent is required to submitto a mandatory administrative proceeding because (1) the domain name is identical orconfusingly similar to a trademark or service mark in which the Complainant has rights;and (2) the Respondent has no rights or legitimate interests in respect of the domainname; and (3) the domain name was registered and is being used in bad faith. 3)Identical or 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 tothe Mark in its entirety. page 7 As the Complainant contends, 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. Further, it is inconceivable that the Respondentwould be unaware of the HITACHI MARK, both in Kanji and Roman characters, andthe Hitachi trade-name, and associated fame, reputation and goodwill that Hitachi hasestablished internationally, including among people of cultures familiar with Kanji orChinese characters, over the past 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 theywere found to be prima facie identical or confusingly similar to its MARK since thedominant portion of each domain name comprised Hitachi's distinctive MARK in itsentirety, and the additional elements were all descriptive and generic that were found toadd nothing to the domain names as a whole. The domain name in this Complaint is comprised solely of the Kanji Markin its entirety, without any other elements that could possibly distinguish the domainname and negate confusion with Hitachi’s MARK. The same reason applies to theinstant case where, as the Respondent asserts, the domain name is for thecity of HITACHI, unless he shows that he has any rights or a legitimate interest in it.Additionally, the word HITACHI (Roman and Kanji) has long been a registered trade-mark used extensively by the Complainant, it is now an internationally well-knowntrade-mark. Moreover, even in Japan the word HITACHI (in both Roman and Kanjicharacters) is generally identified with Hitachi, Ltd., its goods and services, rather thanthe city. 4)Lack of Rights or Legitimate Interest [Paragraph 4(a)(ii) and Paragraph 4(c) ofthe Policy] The Respondent has not any rights or a legitimate interest 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 inconnection with a bona fide offering of information such that it would have any rightsor a legitimate interest in this domain name. Furthermore, the Respondent is currentlymaking no legitimate non-commercial or fair use whatsoever of . Even if, as the Respondent contends, the domain name means that for thecity of Hitachi, the Respondent has not shown any legitimate interest in registering andusing such Mark. 5)Bad Faith [Paragraphs 4(a) and(b) of the Policy and Paragraph 3(b)(ix) of theRules] As is shown in the Factual Background (4.), when the Complainant first contactedR.Ramos, the registrant of the domain name , R.Ramos claimed to haveregistered it not for himself but for his anonymous "customer" in Brazil and told thathis customer was prepared to transfer it to Hitachi for a total of USD 9,140, whichsubstantially exceeds (1) the actual registration [USD90] and transfer fees [USD50] page 8 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, the Respondent contends, “If this name isvery important to Hitachi electric relation.why they don't buy it before I baught,i haveregisted this name day 27 sept 2000 hitachi eletric have first contact to mr ramos day23 jan 2001 (four mounts after)(sic) …” Although this part of his submission is not clear, it is highly probable that theRespondent was the anonymous customer of R.Ramos, because the Respondent himselfwrote that he registered it on September 27, 2000, which is the date of the registrationof the domain name. Then, the Respondent himself attempted through R.Ramos as hisagent to transfer the domain name for valuable consideration in excess of the out-of-pocket costs and registered and used the domain name in bad faith. Apart from this reasoning, the Respondent may be held to register and use the domainname in bad faith for the following reasons. The Respondent’s submission is here againrelevant. He first contends that the domain name means the city of Hitachi, notHitachi, Ltd. His submission then asserts that the domain name of China only is farmore expensive than that of China with the country name and questions why theComplainant did not buy such important domain name, ignoring the fact that theComplainant repeatedly attempted to buy it at a reasonable price. It follows impliedlythat the Respondent is aware of the high value of the sole Mark of Hitachi and intendedto sell the domain name , which is identical to the Complainant’s Mark andin which the Respondent has no legitimate interest, at a much higher price than the out-of-pocket costs. These impliedly show the Respondent’s bad faith. Finally, the Respondent contends that he cannot be in bad faith before his homepage isnot open. As the Complainant convincingly proves, the concept of bad faith use of adomain name includes non-use or inaction on the part of the Respondent. 7.Decision In accordance with Paragraph 4(i) of the Policy and Paragraph 15(a) of the Rules, andfor all the foregoing reasons, the Panel requires that the registered domain name be transferred to the Complainant. __________________________ Zentaro KitagawaSole Panelist Dated: March 12, 2002

Full & Egal Universal Law Academy