national arbitration forum

 

DECISION

 

Kabushiki Kaisha Hitachi Seisakusho d/b/a Hitachi Ltd. v. Penguin Computers LLC c/o Rose Jayaseelan

Claim Number: FA0908001282147

 

PARTIES

Complainant is Kabushiki Kaisha Hitachi Seisakusho d/b/a Hitachi Ltd. (“Complainant”), represented by Thao A. Nguyen, of Hitachi America Ltd., New York, USA.  Respondent is Penguin Computers LLC c/o Rose Jayaseelan (“Respondent”), United Arab Emirates.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hitachi.pro>, registered with DomainPeople, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 31, 2009.

 

On September 3, 2009, DomainPeople, Inc. confirmed by e-mail to the National Arbitration Forum that the <hitachi.pro> domain name is registered with DomainPeople, Inc. and that Respondent is the current registrant of the name.  DomainPeople, Inc. has verified that Respondent is bound by the DomainPeople, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On September 8, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 28, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@hitachi.pro by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 2, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <hitachi.pro> domain name is identical to Complainant’s HITACHI mark.

 

2.      Respondent does not have any rights or legitimate interests in the <hitachi.pro> domain name.

 

3.      Respondent registered and used the <hitachi.pro> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Kabushiki Kaisha Hitachi Seisakusho d/b/a Hitachi, Ltd., offers a wide array of goods and services throughout the world, such as consumer electronics, information technology, computers, and semiconductors.  Complainant has been doing business under its HITACHI mark since 1952 and has registered the mark with numerous governmental trademark authorities in over 192 countries.  Complainant is the owner of multiple registrations for its HITACHI mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 701,266 issued October 29, 1953) and twenty-one registrations with the United Arab Emirates (“UAE”) Ministry of Economy and Commerce (e.g., Reg. No. 794 issued August 9, 1993). 

 

Respondent registered the <hitachi.pro> domain name on October 8, 2008.  The disputed domain name resolves to a website displaying the message, hitachi.pro is currently UNDER CONSTRUCTION.”

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)   the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)   Respondent has no rights or legitimate interests in respect of the domain name; and

(3)   the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

The Panel is satisfied with Complainant’s showing of rights in the HITACHI mark under Policy ¶ 4(a)(i) through its multiple registrations of the mark with the USPTO (e.g., Reg. No. 701,266 issued October 29, 1953) and the UAE Ministry of Economy and Commerce (e.g., Reg. No. 794 issued August 9, 1993).  See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).   Respondent registered the <hitachi.pro> domain name on October 8, 2009

Respondent’s disputed domain name incorporates Complainant’s HITACHI mark in its entirety with the mere affixation of the generic top-level domain “.pro.  The Panel finds that the addition of a generic top-level domain is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis.  Thus, the Panel concludes that Respondent’s <hitachi.pro> domain name is identical to Complainant’s HITACHI mark under Policy ¶ 4(a)(i).  See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); Daedong-USA, Inc.  v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i). 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name.  Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent.  Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  However, the Panel in its discretion, will examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c).  See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name.  It also allows the Panel to accept all reasonable allegations set forth…as true.”).

 

Respondent’s <hitachi.pro> domain name resolves to a blank website displaying the message, “hitachi.pro is currently UNDER CONSTRUCTION.”  Complainant alleges that Respondent’s failure to make demonstrable preparations to use the disputed domain name in connection with an active website supports the finding that Respondent lacks rights to and legitimate interests in the <hitachi.pro> domain name.  Thus, the Panel finds that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively.  See Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to display an “under construction” page did not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶ 4(c)(iii).”). 

 

Furthermore, Complainant contends that Respondent is not authorized to use its HITACHI mark and Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  The WHOIS information identifies the registrant as “Penguin Computers LLC c/o Rose Jayaseelan.”  The Panel finds that this fact, together with the absence of information in the record to the contrary, establishes the conclusion that Respondent is not commonly known by the <hitachi.pro> domain name under Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). 

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

The Panel finds that it may consider the totality of the circumstances surrounding the disputed domain name, which was registered on October 8, 2008, and that evidence of bad faith is not limited to the factors enumerated in Policy ¶ 4(b).  See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”).

In order to find bad faith registration and use pursuant to Policy ¶ 4(a)(iii), it is not necessary for Respondent to have put the disputed domain name to any use.  The Panel concludes that Respondent’s failure to make an active use of the <hitachi.pro> domain name for almost two years is indicative of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).

           The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii). 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <hitachi.pro> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  October 8, 2009

 

 

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