DECISION

 

Hitachi Ltd. and Hitachi Energy Holdings Ltd. v. Leo Lee / iiiC

Claim Number: FA2402002082513

 

PARTIES

Complainant is Hitachi Ltd. and Hitachi Energy Holdings Ltd. ("Complainant"), Switzerland, represented by Molly Buck Richard of Richard Law Group, Inc., United States. Respondent is Leo Lee / iiiC ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <abbhitachi.com>, registered with Cloudflare, 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.

 

David E. Sorkin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 6, 2024; Forum received payment on February 6, 2024.

 

On February 6, 2024, Cloudflare, Inc. confirmed by email to Forum that the <abbhitachi.com> domain name is registered with Cloudflare, Inc. and that Respondent is the current registrant of the name. Cloudflare, Inc. has verified that Respondent is bound by the Cloudflare, 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 February 6, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 2024 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@abbhitachi.com. Also on February 6, 2024, the Written Notice of the Complaint, notifying Respondent of the email 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On February 27, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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

Complainant has used the HITACHI trademark in connection with its products and services, including semiconductors and related goods, since at least as early as 1953. Complainant owns trademark registrations for HITACHI in jurisdictions around the world, including United States registrations for HITACHI in standard character form. Complainant asserts that the HITACHI mark has become famous due to extensive advertising, use, and commercial success. The ABB mark is owned by a third party that has authorized Complainant to maintain this proceeding.

 

The disputed domain name <abbhitachi.com> was registered in November 2022. The name is registered to Respondent, although Respondent's identity is redacted from the public whois record. The domain name is being used for a website that offers or purports to offer semiconductor products, displaying datasheets that include the HITACHI and ABB marks as well as other references to Complainant and the ABB mark owner. The website was originally titled "ABB | Hitachi Semiconductors"; the title was changed to "Power Semiconductors" and later "ABB Power Module" after Complainant attempted to have the site taken down. Complainant states that Respondent is not commonly known by the domain name and is not authorized to use the HITACHI and ABB marks.

 

Complainant contends on the above grounds that the disputed domain name <abbhitachi.com> is confusingly similar to the HITACHI and ABB marks; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").

 

Identical and/or Confusingly Similar

The disputed domain name <abbhitachi.com> incorporates Complainant's registered HITACHI trademark, adding the ABB mark (whose owner has authorized Complainant to maintain this proceeding) and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's HITACHI mark. See, e.g., Hitachi, Ltd. v. Ramesh Jog, No. 104300 (Czech Arb. Ct. Feb. 27, 2022) (finding <hitachi-aloka.com> confusingly similar to both HITACHI and ALOKA); Kabushiki Kaisha Hitachi Seisakusho d/b/a Hitachi, Ltd. v. Binh Le Hai, FA 1457181 (Forum Sept. 24, 2012) (finding <hitachivietnhat.com> confusingly similar to HITACHI); Google Inc. v. Chris Gillespie, FA 1434643 (Forum May 10, 2012) (finding <googlehitachi.com> confusingly similar to GOOGLE); Yahoo! Inc. v. CPIC NET & Syed Hussain, D2001-0195 (WIPO May 8, 2001) (finding <ebay-yahoo.com> confusingly similar to YAHOO!). The Panel considers the disputed domain name to be confusingly similar to the HITACHI mark in which Complainant has rights.

 

Rights or Legitimate Interests

Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).

 

The disputed domain name incorporates Complainant's registered mark without authorization. It is being used for a misleading website that passes off as Complainant and offers or purports to offer similar or competing products for sale. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Kabushiki Kaisha Hitachi Seisakusho d/b/a Hitachi, Ltd. v. Binh Le Hai, supra (finding lack of rights or interests in similar circumstances).

 

Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.

 

Registration and Use in Bad Faith

Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."

 

Respondent registered a domain name incorporating Complainant's famous mark and is using it for a misleading website that passes off as Complainant and offers or purports to offer similar or competing products for sale. Such circumstances are indicative of bad faith registration and use under the Policy. See, e.g., Kabushiki Kaisha Hitachi Seisakusho d/b/a Hitachi, Ltd. v. Binh Le Hai, supra (finding bad faith registration and use in similar circumstances). The Panel so finds.

 

DECISION

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

 

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

 

 

 

David E. Sorkin, Panelist

Dated: February 28, 2024