The Complainant is Kabushiki Kaisha Hitachi Seisakusho (Japan Corporation),
d/b/a Hitachi, Ltd., Tokyo, Japan, represented by Shapiro Cohen, Canada.
The Respondent is Shanghai Meihu Leather Co., Ltd., Boca Raton, Florida, United
States of America.
2. The Domain Name and Registrar
The disputed domain name <“ú—§.com>(<xn--wgv287b.com>) is registered
with Melbourne IT Limited.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the
gCenter h) on May 16, 2005. On May 18, 2005, the Center transmitted by email
to Melbourne IT Limited a request for registrar verification in connection with
the domain name at issue. On May 19, 2005, Melbourne IT Limited transmitted
by email to the Center its verification response, confirming that the Respondent
is listed as the registrant and providing the contact details for the administrative,
billing, and technical contact. The Center verified that the Complaint satisfied
the formal requirements of the Uniform Domain Name Dispute Resolution Policy
(the gPolicy h), the Rules for Uniform Domain Name Dispute Resolution Policy
(the gRules h), and the WIPO Supplemental Rules for Uniform Domain Name Dispute
Resolution Policy (the gSupplemental Rules h).
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 June
7, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response
was June 27, 2005. The Respondent did not submit any response. Accordingly,
the Center notified the Respondent fs default on June 28, 2005.
The Center appointed Hong Xue as the Sole Panelist in this matter on July 7,
2005. 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.
The Panel has not received any further requests from the Complainant or the
Respondent regarding other submissions, waivers or extensions of deadlines.
There is no need as an exceptional matter, to hold any in-person hearings as
necessary for deciding the Complaint, as provided for by the Rules, paragraphs
12 and 13. Therefore, the Panel has decided to proceed under the customary expedited
nature contemplated for this type of domain name dispute proceeding.
The language of the proceeding is English, as being the language of the Domain
Name Registration and Service Agreement, pursuant to the Rules, paragraph 11(a),
and also in consideration of the fact that there is no express agreement to
the contrary by the Parties. In addition, pursuant to the Rules, paragraph 10(b),
and in consideration of the circumstances of this administrative Proceeding,
the Panel, for the purpose to ensure that each Party is given a fair opportunity
to present its case, takes into account the evidential materials provided in
other languages as well.
4. Factual Background
The Complainant has the trademark rights over g“ú—§ h, g“ú—§HITACHI h and gHITACHI h
through extensive registration and consistent use in many countries. gHITACHI h
is the transliteration of the phonetic sound of the Chinese Simplified characters
for g“ú—§ h. The Complainant fs registrations for the mark g“ú—§ h date back to 1923
in Japan, 1980 in China, 1965 in Hong Kong, SAR of China, and 1972 in the Republic
of Korea.
The mark is used in connection with a very broad range of goods and services,
including: Information systems and electronics such as mainframe computers,
software, computer terminals and peripherals etc.; power and industrial systems
such as nuclear power plants, thermal power plants and rolling stock etc.; consumer
electric / electronic products such as home appliances, TVs and VCRs etc.; materials
such as synthetic resin materials and wires and cables, etc.; various services
including broadcasting, network service, transportation, etc.
The Respondent registered the disputed domain name <“ú—§.com> on May 26,
2003.
5. Parties f Contentions
A. Complainant
The Complainant has used the marks g“ú—§ h, g“ú—§HITACHI h and gHITACHI h continuously
since it was founded in 1910, and has hundreds of longstanding registrations
for these marks in over 200 countries around the world, including in countries
or areas of Chinese character inheritance and the United States. HITACHI is
the transliteration of the phonetic sound of the Chinese Simplified characters
for g“ú—§ h. The Complainant fs registrations for the mark g“ú—§ h date back to 1923
in Japan, 1980 in China, 1965 in Hong Kong, SAR of China and 1972 in the Republic
of Korea.
Since 1910, the Complainant has extensively used these marks by itself and under
license with subsidiary companies located in over 37 countries, including China
and the United States, the countries where the Respondent appears to be located.
The Complainant has promoted these marks extensively and internationally in
association with its wares and services for several decades and continues to
do so. The Japanese Patent Office has recognized the Complainant fs mark g“ú—§ h
as well known and has granted the Complainant numerous defensive registrations
in respect of the marks.
In addition, the Complainant and its related companies have collectively registered
an extensive international domain name portfolio consisting of well over three
hundred domain names across most ccTLDs and gTLDs comprising or consisting of
the mark g“ú—§ h.
Therefore, the Complainant submits that the disputed domain name is identical
to its trademark and there is no element in the disputed domain name that could
possibly distinguish it from and negate confusion with the Complainant fs trademark.
The Complainant submits that the Respondent does not have and has never had
any relationship with the Complainant, any of its related companies, nor has
the Complainant ever authorized, licensed or otherwise permitted the Respondent
to use the mark or to register or use any domain name which incorporates the
mark. Accordingly, there is no evidence that the Respondent has any rights or
legitimate interests in the domain name under the Policy.
The Complainant notes that the Respondent has provided false contact information
that is an indicator of bad faith. The Complainant fs attempted communications
with the Respondent elicited no response from the Respondent and fax was undelivered
as the fax number was either false or incomplete and therefore not in service.
Moreover, searches of online telephone directories failed to locate any listings
for a gShanghai Meihu Leather Co. Ltd. h (or any entity with a similar name)
or a gZeng Qiumei h (Administrative Contact) at Boca Raton, Florida address that
was of record in the WHOIS in April 2005. Similarly, the actual street address
g12345 Blue Lake Drive h could not be located using a reverse address lookup.
Although the domain name is currently inactive, there always exists the possibility
that the Respondent will eventually use the disputed domain name in association
with some kind of website or business. In this regard, the 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.
The Complainant submits that all of the Respondent fs actions or inactions mentioned
above are indicative of the registration and use of the disputed domain name
in bad faith.
The Complainant requests the disputed domain name be transferred to it.
B. Respondent
The Respondent did not reply to the Complainant fs contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Pursuant to the Policy, paragraph 4(a)(i), a complainant must prove that the
domain names are identical or confusingly similar to a trademark or service
mark in which the complainant has rights.
In line with such provision, the Complainant must prove two aspects, i.e. it
enjoys the trademark rights; and, the disputed domain name is identical with
or confusingly similar to its trademark or service mark.
It is not disputable that the Complainant has the trademark registrations over
g“ú—§ h in many countries and has been using the mark g“ú—§ h extensively and consistently
for many years. The Panel, therefore, finds that the Complainant enjoys the
right in the mark g“ú—§ h.
The disputed domain name <“ú—§.com>, except for the generic top-level domain
designation g.com h, is identical with the Complainants f mark.
The Complainant has successfully proved the two foregoing aspects, the Panel,
therefore holds that the Complaint fulfills the condition provided in the Policy,
paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests.
Where, as here, the Complainant has raised a prima facie presumption of the
Respondent fs lack of such rights or interests, and Respondent has failed to
submit the Response to rebut the Complainant fs presumption, the Panel is entitled
to accept Complainant fs assertion. As provided for by the Rules, paragraph 14,
the Panel may draw such inference from the Respondent fs default, as it considers
appropriate.
In addition, neither can the fact that the disputed domain name <“ú—§.com>
is an internationalized domain name in the Chinese Simplified Characters infer
any rights or legitimate interests of the Respondent. g“ú—§ h is not a generic
term in the Chinese Language and has always been used as the trademark of the
Complainant.
The Panel therefore finds that Complaint fulfills the condition provided in
the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainant contends that the disputed domain name is registered and used
in bad faith. The Respondent fails to respond to such contention.
The Complainant submits that the Respondent fs provision of false contact information
with respect to the disputed domain name registration is an accepted indicator
of bad faith. The Complainant fs submission has been proven by the Complainant fs
several unsuccessful attempts to contact the Respondent pursuant to the Respondent fs
contact information listed in the WHOIS record. Despite the changes made to
the contact information, the Complainant discovered that neither the telephone
number nor the post address of the Respondent (or Administrative Contact) could
be actually located.
The Respondent fs provision of false contact information is a breach to its own
commitment in the Registration Agreement that all the information provided be
complete and accurate. The Panel finds the Complainant fs contention persuasive
and able to prove the Respondent fs bad faith in registration. See Hunton
& Williams v. American Distribution Systems, Inc. et al., WIPO
Case No. D2000-0501, in which the panel citing the non-exhaustive nature
of the Policy, paragraph 4(b) found that respondent fs bad faith was evidenced
by hiding its true identity behind several different trade names, by using a
post office box address instead of its actual address, and by using false names
for contact persons such as gBilling Contact h instead of the name of an actual
person.
Furthermore, the Complainant submits that the Respondent fs non-use of the disputed
domain name also demonstrates the Respondent fs bad faith. Such argument can
be supported by the principle established in Telstra Corporation Limited
v. Nuclear Marshmallows, WIPO Case No.
D2000-0003, which ruled that, in certain circumstances, inactivity by the
respondent may amount to the domain name being used in bad faith.
The Panel finds that the Respondent fs bad faith by passively holding the disputed
domain name can be proved in all the circumstances considered in the Telstra
case:
(i) the Complainant fs trademark has a strong reputation and is widely known,
as evidenced by its substantial use in China, the United States and other countries;
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated
good faith use by it of the domain name;
(iii) the Respondent has taken active steps to conceal its true identity, by
operating under a fake business name that cannot even be found on telephone
directories;
(iv) the Respondent has actively provided, and failed to correct, false contact
information, in breach of its registration agreement; and
(v) taking into account all of the above, it is not possible to conceive of
any plausible actual or contemplated active use of the domain name by the Respondent
that would not be illegitimate, such as by being a passing off, an infringement
of consumer protection legislation, or an infringement of the Complainant fs
rights under trademark law.
Based on the above finding, the Panel rules that the Respondent registered
and used the disputed domain name in bad faith pursuant to the Policy, paragraph
4(b), and thus the Complaint fulfills the condition provided in the Policy,
paragraph 4(a)(iii).
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, <“ú—§.com>,
be transferred to the Complainant.
Hong Xue
Sole Panelist
Dated: July 21, 2005
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