WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kabushiki Kaisha Hitachi Seisakusho (Japan Corporation), d/b/a Hitachi, Ltd. v. Fortune International Development Ent. Co. Limited.
Case No. D2000-0412
1. The Parties
The complainant is Kabushiki Kaisha Hitachi Seisakusho (Japan Corporation), d/b/a Hitachi, Ltd., a company duly incorporated under the laws of Japan and having its principal place of business at 6, Kanda-Surugadai 4-chome, Chiyoda-ku, Tokyo, 101-8010, Japan ("the Complainant").
The respondent is Fortune International Development Ent, Co. Ltd, having its principal place of business at ZuLin Road, Alley 179 No. 2, 4th-5, Taipei, Taiwan ("the Respondent").
2. The Domain Name and Registrar
The domain name the subject of this dispute is <hitachi2000.net> ("the Domain Name"), which was first registered on December 9, 1998.
The registrar of the domain name is Network Solutions Inc. of Herndon, Virginia, USA ("the Registrar").
3. Procedural History
A Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), both of which were implemented by ICANN on October 24, 1999, was received by WIPO in electronic format on May 10, 2000, and in hard copy on May 15, 2000. The latter was accompanied by payment in the required amount for a single Panelist.
On May 15, 2000, a formal Acknowledgment of Receipt (Complaint) was sent to the Complainant.
On May 15, 2000, Request for Registrar Verification was sent to the Registrar, requesting confirmation that it had received a copy of the Complaint from the Complainant, that the domain name was currently registered with it and that the Policy was in effect, and requesting full details of the holder of the Domain Name and advice as to the current status of the Domain Name.
On May 16, 2000, the Registrar confirmed that it had received the Complaint, it is the registrant of the Domain Name, the Respondent is the holder of the Domain Name, and confirmed the Respondentís contact details, advising that the Registrarís 5.0 Service Agreement was in force, and advising that the Domain Name was in ĎActiveí status.
On May 17, 2000, the Complaint was checked by WIPO for compliance with the Policy, the Rules and with the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") and was verified as being satisfactory.
On May 17, 2000, the formal requirements having been met, a Notification of Complaint and Commencement of Administrative Proceeding was sent to the Respondent and the Registrar, advising that the Response was due by June 5, 2000. The Notification was also sent by email, fax and courier to the Respondentís administrative, technical and billing contacts and representative.
Between May 17, 2000, and May 22, 2000, WIPO sent the various emails sent to the Respondent via the email addresses _ HYPERLINK mailto:hchen@wasie __hchen@wasie_.com; _ HYPERLINK mailto:firstname.lastname@example.org; email@example.com;_ _ HYPERLINK mailto:firstname.lastname@example.org email@example.com_ and firstname.lastname@example.org were returned to WIPO as undelivered. In addition, the facsimile numbers provided for the technical and billing contact was not able to be reached.
On June 6, 2000, the Respondent was sent a Notification of Default, advising that the Respondent had failed to file a Response within the allotted time and that any Response filed might or might not be taken into account, at the Panelís discretion. The email contacts as listed above were again not able to be delivered. It appears from the transmissions record that this document was not sent to the Respondent by either post, courier or facsimile.
On June 18, 2000, in view of the Complainants designation of a single panelist, WIPO invited Clive Elliott ("the Panelist") to serve as the panelist in this Proceeding and transmitted a Request for Declaration of Impartiality and Independence to the Panelist.
On June 19, 2000, a Statement of Acceptance and Declaration of Impartiality and Independence from the Panelist was received by WIPO.
On June 19, 2000, a Notification of Appointment of Administrative Panel and Projected Decision Date ("the Appointment Notification") was sent to the Complainant and the Respondent. In accordance with the Complainantís request, the Appointment Notification informed the parties that the Administrative Panel would be comprised of a single panelist, Mr. Clive Elliott ("the Panel"), and advised that the decision should be forwarded to WIPO by July 2, 2000.
On June 19, 2000, the case file was transmitted to the Panel.
Having reviewed the file, the Panel is satisfied that the formal requirements of the Administrative Proceeding have been satisfied.
4. Factual Background
The Complainant asserted and provided evidence in support of the following, which is accepted by the Panel.
The Complainant currently consists of over 1,000 companies in over 37 countries, and is engaged in manufacturing, sales and services employing over 320,000 people worldwide.
The Complainant owns trademark registrations for the word HITACHI ("the Mark") in 194 countries worldwide, including Taiwan (No. 1110, dated May 16, 1974). It has used the HITACHI mark since 1910 and first registered it in 1953.
The Complainant uses the Mark in connection with a broad range of goods and services, including, but not limited to information systems, electronics, software, computer terminals and peripherals, power and industrial systems such as nuclear power plants, thermal power plants and rolling stock, consumer electric/electronic products, synthetic resin materials and wire and cables and services including broadcasting, network services and transportation.
The Mark is recognized by the Japanese Patent Office as a well-known trademark and has granted the Complainant a number of defensive trademark registrations.
The Complainant wrote to the Respondent requesting the transfer of the domain name to it and advised the Respondent of the Complainants registration and ownership of the HITACHI mark. The Complainant offered to reimburse the Respondent for out of pocket expenses in relation to the registration of the domain name.
The Complainant provided affidavits of two members of its staff describing telephone conversations with the Respondent. The Complainant alleges that in those telephone conversations the Respondent demanded USD$100,000 in exchange for the transfer of the Domain Name.
The Respondent has failed to file a Response in this proceeding.
In relation to para 4(a)(i) of the Policy, the Complainant asserts that the name used by the Respondent is confusingly similar to its mark, comprising the Complainantís trademark in combination with a non-distinctive numeral.
In relation to para 4(a)(ii) of the Policy, the Complainant makes a number of assertions.
Firstly, that the Respondent is not a person or organization with whom the Complainant or its group company has any business relationship.
Second, that the Respondent has never been authorized by the Complainant to use the Mark for any purpose, in particular its inclusion in any domain name.
Third, the Respondent cannot fulfil any of the requirements of para 4(c) of the Policy.
Fourth, the Respondent cannot produce any evidence to justify its unauthorized use of the Mark in the Domain Name.
Fifth, in conversations with the representatives of the Respondent the Respondent was invited to describe any legitimate rights it believed it had in the Domain Name but failed to do so.
Sixth, by failing to link the domain name to any active web-site the Respondent has indicated that it has no legitimate business interest in the domain name.
For these reasons the Complainant asserts that that the Respondent has no legitimate right or interest in the Domain Name.
In relation to para 4(a)(iii) of the Policy the Complainant makes a number of assertions.
Firstly, the Respondent attempted to negotiate a payment of USD$100,000 for a transfer of the Domain Name, being a sum well in excess of any out-of-pocket expense related to registration of the Domain Name, as described in para 4(b)(i) of the Policy.
Second, the Respondent is the registered owner of numerous domain names incorporating famous marks owned by parties other than the Respondent, for instance citroen2000.com, bmw2000.com, mercedesbenz2000.com and saab2000.net, as described in para 4(b)(ii) of the Policy. Evidence of 50 such domain names was provided.
Third, a number of Administrative Panel decisions to date under the Policy have analyzed in detail the provisions of para 4(b) of the Policy. In particular, the Complainant notes that the passive registration of a domain name without further action can constitute bad faith in appropriate circumstances (Telstra Corporation Limited v. Nuclear Marshmellows, Case No. D2000-0003 at para 7.9), and that it can be inferred from the registration of a large number of diverse domain names incorporating well-known terms used by well-known global companies across many categories of goods and services that the real business of the registrant is to acquire domain names and to sell them for profit (Nabisco Brands Company v. The Patron Group, Inc. Case No. D2000-0032).
Fourth, the Respondentís passive holding of the domain name coupled with its express demand for valuable consideration and the Respondentís pattern of conduct involving the registration of other domain names corresponding to famous marks indicate the Respondentís bad faith registration and use of the Domain Name.
For these reasons the Complainant asserts that the Respondent has registered and is using the domain name in bad faith.
On the basis of these assertions, the Complainant requests that the Administrative Panel order the transfer of the Domain Name to the Complainant.
The Respondent has not filed a Response in this Proceeding. Having been give notice of the Complaint it is reasonable to infer that the Respondent has chosen to leave the Complainantís allegations unanswered.
6. Discussion and Findings
Para 4(a) of the Policy requires that the Complainant must prove each of the following:
(i) the Domain Name is identical or confusingly similar to the Trade Mark: and
(ii) the Respondent has no right or legitimate interest in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Para 4(b) of the Policy sets out four illustrative circumstances which, if proved, constitute evidence of bad faith as required by para 4(a)(iii) referred to above.
Para 4(c) of the Policy sets out three illustrative circumstances which, if proved, constitute evidence of a right or legitimate interest as described in para 4(a)(ii) referred to above.
Identical or confusingly similar
The Domain Name is prima facie identical or confusingly similar to the Mark, comprising as it does the Mark in combination with the number Ď2000í, which is non-descriptive and adds little to the Domain Name as a whole.
Accordingly, para 4(a)(i) of the Policy is satisfied.
Rights or legitimate interest
The Complainant has alleged that the Respondent has no right or legitimate interest in the Domain Name. The Respondent has been invited to provide evidence of such an interest, by the Complainant and in the course of this Proceeding.
The Respondent has chosen to ignore these opportunities. Such failure leads the Panel to the view, on the evidence and assertions before it, that the Respondent cannot justify its choice of the Domain Name and has no legitimate right or interest therein.
In particular, on the evidence and assertions before it, the Panel accepts that the Respondent is not a person or organization with whom the Complainant or its group company has any business relationship, that the Respondent has never been authorized by the Complainant to use the Mark for any purpose, in particular its inclusion in any domain name, that the Respondent cannot fulfil any of the requirements of para 4(c) of the Policy, that the Respondent cannot produce any evidence to justify its unauthorized use of the Mark in the Domain Name, and that by failing to link the domain name to any active web-site the Respondent has indicated that it has no legitimate business interest in the domain name.
Accordingly, para 4(a)(ii) of the Policy is satisfied.
The Complainant has tendered evidence suggesting that the Respondent was prepared to transfer the Domain Name for a sum substantially exceeding any out-of-pocket expenses related to registration of the Domain Name, as contemplated by para 4(b)(i) of the Policy.
The Complainant has also provided evidence indicating that the Respondent is the registered proprietor of many domain names that incorporate the well-known marks of well-known companies.
The Respondent has not disputed any of the above evidence and has not claimed any right to those other domain names.
In the absence of any conflicting evidence, these two sets of evidence when combined lead the Panel to the conclusion that the registration of the Domain Name was primarily for the purpose of selling or renting it to the Complainant for a sum exceeding any related out-of-pocket expenses. The Respondentís actions therefore constitute evidence of bad faith as described in para 4(b)(ii) of the Policy.
Accordingly, para 4(a)(iii) of the Policy is satisfied.
On the evidence filed, the Domain Name is identical or confusingly similar to the Mark, and the Complainant has shown that the Respondent has no right or legitimate interest in the Domain Name and that the Domain Name was registered and is being used in bad faith.
Accordingly the Panel orders that the Domain Name be transferred to the Complainant.
Clive L. Elliott
Dated: July 2, 2000