WIPO Arbitration and Mediation Center
EXPERT DECISION
Hitachi Europe Ltd v. Print & More Competence AG
Case No. DCH2005-0002
1. The Parties
The Claimant is Hitachi Europe Ltd, Maidenhead, Berkshire, United Kingdom represented by Peter Miles.
The Respondent is Print & More Competence AG, Mellingen, Switzerland.
2. The Disputed Domain Name
The dispute concerns the following domain name: <hitachi.ch>, (the “Disputed Domain Name”).
3. Procedural History
The Request was filed by e-mail with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2005. On February 8, 2005, the Center transmitted by email to SWITCH a request for verification in connection with the domain name at issue. On February 9, 2005, SWITCH 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 Request satisfied the formal requirements of the Rules of procedure for dispute resolution proceedings for .ch and .li domain names (the Rules of Procedure), adopted by SWITCH, the .ch and .li registry, on March 1, 2004.
In accordance with the Rules of Procedure, paragraph 14, the Center formally notified the Respondent of the Request, and the Dispute resolution proceedings commenced on February 10, 2005. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was March 2, 2005.
The Respondent has neither filed a Response nor expressed his readiness to participate in a Conciliation conference in accordance with Paragraph 15(d) of the Rules of Procedure. No Conciliation conference has thus taken place within the deadline specified in Paragraph 17(b) of the Rules of Procedure.
On March 7, 2005, the Center notified the Claimant accordingly, who on the same date made an application for the continuation of the Dispute resolution proceedings in accordance with specified in paragraph 19 of the Rules of procedure and paid the required fees.
On March 8, 2005, the Center appointed Dr. Kamen Troller as Expert in this case. The Expert finds that he was properly constituted. In accordance with Rules of Procedure, paragraph 4, the Expert has declared his independence of the parties.
On March 10, 2005, the Expert issued a procedural order, ordering Claimant to submit additional evidence.
4. Factual Background
The Claimant, Hitachi Europe Ltd, is a part of the well-known Hitachi group of companies, which operates in a number of business-to-business and business-to-consumer areas across Europe.
The Claimant has submitted an extract from the Swiss TM registry demonstrating that the trademark “HITACHI” (Trademark no. P-334810) is owned by the Japanese company, Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) and was registered in Switzerland on November 7, 1984; it has been renewed on September 6, 2004, for a further period of 10 years.
The Claimant has submitted a “Who is” printout demonstrating that the Respondent is the owner of the Disputed Domain Name, which was last registered on June 3, 2002.
5. The Parties’ Contentions
A. The Claimant
The Claimant asserts that the Respondent’s use of the Disputed Domain Name infringes on its rights to the registered trademark, “HITACHI”. It also restricts Swiss consumers’ ability to access the full range of Hitachi products and services, because an internet user who types the Disputed Domain Name into his browser is taken directly to the Respondent’s website (www.pmcompetence.ch), which - without any reference to Hitachi - contains information about the Respondent’s producer-independent EDP service enterprise.
The Claimant contends that the use by the Respondent of the Disputed Domain Name misleads consumers as to the status of the Respondent and prevents consumers from accessing the full range of Hitachi products and services.
Furthermore, the Claimant asserts that the Respondent via email has offered to sell the Disputed Domain Name to the Claimant, which suggests that the Respondent is retaining and/or using the Disputed Domain Name in bad faith. In support of this allegation, the Claimant has submitted a copy of an e-mail dated January 18, 2005, from the Respondent’s contact person to the Claimant’s representative, Mr. Peter Miles which reads:
“Mr. Miles
Hitachi.ch now is for sale. And there are some interested partys. [sic] What is your offer?
Based on these allegations, the Claimant requests that the Disputed Domain Name be transferred to the Claimant.
B. The Respondent
As stated above, the Respondent did not reply to the Claimant’s contentions and did not express any interest in participating in a Conciliation conference in accordance with Paragraph 15(d) of the Rules of Procedure.
6. Discussion and Findings
According to the rules of procedure of Switch (hereafter the Rules), it is sufficient for the Claimant who wishes to obtain the transfer of a domain name in his favor to justify in his request why the registration of a domain name by the Respondent constitutes an infringement of a distinctive sign which the Claimant owns under the laws of Switzerland (Rules art. 12, vi).
A. Does Claimant have a right in a distinctive sign under the laws of Switzerland ?
a) The Claimant's legitimation to act in the present proceedings
In the statement of claim, the Claimant, Hitachi Europe Ltd, alleged that it is part of the Hitachi Group, that "Hitachi companies" own more than 70 trademark registrations in Switzerland and that the Respondent's use of the disputed domain name "infringes our Hitachi's registered trademark" (Claim, Part A).
The evidence which Claimant submitted to prove his alleged rights to the Hitachi mark showed that the trademark upon which Claimant based his claim is owned by KK Hitachi Seisakusho, a Japanese company which is not a party to the present proceedings.
The Expert requested Claimant to prove his entitlement to invoke rights in the trademark (see procedural order 1 of March 10, 2005), and Claimant produced a document dated March 11, 2005, issued on letterhead of Hitachi Ltd, Intellectual Property Group, stating: "Please accept this letter as authorization for you to act on our behalf in recovery the above domain name".
Since the Expert concludes below that the Claimant has rights in other distinctive signs, it is not necessary to examine further whether such authorization would be sufficient to bring forward a claim in one parties’ name based on rights to a trademark of another party.
b) Claimant's rights in a distinctive sign
Claimant states in its Request expressly that the claim is submitted in accordance with the Rules.
The Rules do not request Claimant to base its Claim on a registered trademark; it is sufficient - as stated above - that Claimant justifies that he has a right in a distinctive sign. The Rules define "Distinctive signs" as any "sign devolving from the registration or the use of a sign ..., including ... registered business name, a personal name, ... and the defensive rights devolving from the law of unfair competition".
Under Swiss law of distinctive signs, Claimant can invoke the protection of his name "Hitachi Europe", as commercial name (nom commercial, Paris Convention, art. 8) as well as its personal name (Civil Code [CC], art. 29), against any use by third parties of the distinctive element of the name, Hitachi (see Decision of Swiss Supreme Court [FC] of November 6, 2001, sic! 2002, 162). To the extent that there exists a risk of passing off, i.e. that consumers might be made to believe that there exists some relationship between Claimant and Respondent, Claimant may also invoke the Unfair Competition Law Act (UCLA).
Even if Claimant has not expressly mentioned these means, the Expert shall use the power granted to him under the Rules (art. 21, lit. a) and apply the worldwide recognized rule of "iura novit curia".
For the above reasons, the Expert comes to the conclusion that Claimant is legitimated to bring forward his claim.
B. Does the registration or use of the Domain Name at issue by Respondent constitute an infringement of the Claimant’s right in a distinctive sign ?
According to the Rules of Procedure, paragraph 24(a), the Expert shall decide the Request on the basis of the pleadings of both parties and the documents submitted in conformity with the Rules of Procedure.
The Expert shall grant the request if the registration or use of the domain name constitutes a clear infringement of a right in a distinctive sign which the Claimant owns under the law of Switzerland or Liechtenstein (Rules of Procedure, paragraph 24(c)).
In particular, according to the Rules of Procedure, paragraph 24(d), a clear infringement of an intellectual property right exists when:
(i) both the existence and the infringement of the claimed right in a distinctive sign clearly result from the wording of the law or from an acknowledged interpretation of the law and from the presented facts and are proven by the evidence submitted; and
(ii) the Respondent has not conclusively pleaded and proven any relevant grounds for defence; and
(iii) the infringement of the right justifies the transfer or deletion of the domain name, depending on the remedy requested in the request.
(i) Infringement of rights in a distinctive sign
The Claimant alleges that the Respondent’s use of the Disputed Domain Name infringes on rights protected under the rules.
Under Swiss law, domain names are not only considered to be an address, but they can also serve to identify the person behind the domain name, the owner of the site. Therefore, a person can forbid a third party to use that person's name as a domain name in virtue of CC art. 29 (FC of November 7, 2002, sic! 2003, 438).
Furthermore, the commercial name of a person or company is protected in Switzerland in virtue of Paris Convention art. 8, if its right to its own name has been violated or if acts of unfair competition are committed (FC of November 6, 2001, sic! 2002, 162).
The Expert considers that:
- the distinctive part “HITACHI” of Claimant's name is embodied in and forms a distinctive part of the Disputed Domain Name;
- the Claimant’s distinctive sign “HITACHI” is used for a broad range of electronics equipment, including printers. The Respondent is using the Disputed Domain Names to promote the sale of printers via its website. Therefore, there is clearly similarity in the goods and services connected with the Claimant’s sign and the Disputed Domain Name.
Respondent has furthermore created the risk that, when consumers visit the website “hitachi.ch” and are thereafter linked to Respondent's own website, they may believe that there exist commercial or social links between the parties - Claimant does not have to tolerate this wrong allocations (UCLA art. 2 and 3, lit. d - FC of November 6, 2002, sic! 2003, 162; FC of July 2, 2003, sic! 2003, 915).
Based on these considerations, the Expert finds that the Respondent’s use of the Claimant’s distinctive sign "Hitachi" for the sale of printers via its website amounts to a clear infringement of Claimant's rights to its name (CC art. 29) and constitutes furthermore an act of unfair competition (UCLA art. 2 and 3 lit. d)
(ii) No relevant grounds for a defense
As mentioned above, the Respondent has not replied to the Request, and there is no information before the Expert indicating that the Respondent may have a right or legitimate interest in the Disputed Domain Name. On the contrary, the above-cited e-mail from the Respondent demonstrates that the Respondent attempted to sell the Disputed Domain Name to the Claimant. The Expert agrees with the Claimant that this is an indication that Respondent is well aware of the commercial value of Claimant's name and that he chose this name in order to take advantage unauthorized and therefore unfair advantage of that name.
(iii) Justification of the transfer of the domain name
For the above reasons, the Expert concludes that the transfer of the domain name as requested by Claimant is justified.
7. Expert Decision
For the above reasons, in accordance with Paragraphs 24 of the Rules of Procedure, the Expert orders that the Disputed Domain Name, <hitachi.ch> be transferred to the Claimant.
Dr. Kamen Troller
Expert
Date: March 31, 2005