Kabushiki Kaisha Hitachi Seisakusho d/b/a Hitachi, Ltd. v. Binh Le Hai
Claim Number: FA1208001457181
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 Binh Le Hai (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hitachivietnhat.com>, registered with OnlineNIC, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 8, 2012; the National Arbitration Forum received payment on August 8, 2012.
On August 14, 2012, OnlineNIC, Inc confirmed by e-mail to the National Arbitration Forum that the <hitachivietnhat.com> domain name is registered with OnlineNIC, Inc and that Respondent is the current registrant of the name. OnlineNIC, Inc has verified that Respondent is bound by the OnlineNIC, Inc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@hitachivietnhat.com. Also on August 14, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hitachivietnhat.com> domain name is confusingly similar to Complainant’s HITACHI mark.
2. Respondent does not have any rights or legitimate interests in the <hitachivietnhat.com> domain name.
3. Respondent registered or used the <hitachivietnhat.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
i. JPO (Reg. No. 433,710 registered October 29, 1953);
ii. United States Patent and Trademark Office ("USPTO") (Reg. No. 701,266 July 19, 1969); and
iii. Vietnam’s National Office of Intellectual Property (“NOIP”) (Reg. No. 2428 registered September 28, 1990).
i. Respondent has not been commonly known by the disputed domain name.
ii. Respondent is using the disputed domain name for its competing elevator business.
i. Respondent is using Complainant’s mark to create Internet user confusion as to Complainant’s affiliation with Respondent’s competing elevator business for commercial gain.
ii. Respondent’s use of the disputed domain name disrupts Complainant’s business.
iii. Respondent had knowledge of Complainant’s rights in the HITACHI mark prior to registering the disputed domain name.
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."
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.
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.”).
Complainant contends that it has protectable rights in the HITACHI mark through its trademark registrations. Complainant presents the Panel with the following trademark registrations for the HITACHI mark:
JPO (Reg. No. 433,710 registered October 29, 1953);
USPTO (Reg. No. 701,266 July 19, 1969); and
NOIP (Reg. No. 2428 registered September 28, 1990).
The Panel finds that Complainant has effectively established rights in the HITACHI mark under Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant also argues that the <hitachivietnhat.com> domain name is confusingly similar to the HITACHI mark. Complainant asserts that the disputed domain name merely adds the geographic terms “viet,” short for Vietnam, and “nhat,” meaning Japan, to the HITACHI mark, which Complainant argues does not distinguish the domain name from the HITACHI mark. Further, Complainant argues that the addition of the generic top-level domain (“gTLD”) “.com” is similarly not sufficient to remove the domain name from the realm of confusing similarity. The Panel agrees and find that Respondent’s <hitachivietnhat.com> domain name is confusingly similar to Complainant’s HITACHI mark pursuant to Policy ¶ 4(a)(i). See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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 interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the disputed domain name. Further, Complainant asserts that Respondent has no business relationship with Complainant and has never been authorized to use the HITACHI mark. The Panel notes that the WHOIS information for the disputed domain name identifies “Binh Le Hai” as the registrant. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant contends that Respondent has been infringing on Complainant’s mark to provide competing elevator products and services. Complainant argues that Respondent’s registration and use of the <hitachivietnhat.com> domain name simply continues to exploit Complainant’s mark and goodwill for Respondent’s own competing business. The Panel notes that Complainant supplies the Panel with evidence of sanctions issued against Respondent in Vietnam for infringement, but does not provide the Panel with a screenshot of the resolving website. See Complainant’s Annexes 17-18. The Panel believes Complainant’s account of Respondent’s use of the disputed domain name, and the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant argues that Respondent’s registration and use of the disputed domain name falls within the bad faith parameters of Policy ¶ 4(b)(iii). Complainant contends that Respondent is operating a directly competing elevator business in Vietnam. Complainant avers that Respondent has continued its prior infringement of Complainant’s mark through its registration and use of the disputed domain name, although Complainant does not describe what Respondent uses the domain name for and does not provide a screenshot of the resolving website. The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii), where Respondent is operating a directly competing business. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant also contends that Respondent’s conduct with the disputed domain name is evidence of bad faith under Policy ¶ 4(b)(iv). As noted above, Complainant asserts that Respondent is offering directly competing products and services dealing with elevators. The Panel finds that Respondent is attempting to create confusion as to Complainant’s affiliation with the resolving website by using the HITACHI mark in the domain name. The Panel also presumes that Respondent profits from operating its competing business. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Lastly, Complainant argues that Respondent had both actual and constructive knowledge of Complainant and its rights in the HITACHI mark, noting its longstanding trademark registrations. The Panel disregards Complainant’s arguments as they relate to constructive notice, as prior UDRP panels have generally held constructive notice of a mark to be insufficient for a finding of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”). The Panel determines that Respondent had actual knowledge of Complainant’s rights in the mark, and the Panel determines that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hitachivietnhat.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 24, 2012
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