WIPO Domain Name Decision: DIR2008-0004

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kabushiki Kaisha Hitachi Seisakusho v. APT Co.

Case No. DIR2008-0004

1. The Parties

The Complainant is Kabushiki Kaisha Hitachi Seisakusho, 6-6, Marunouchi 1-chome, Chiyoda-ku, Tokyo, Japan, represented by Z.A. Afshari Law Firm, Islamic Republic of Iran.

The Respondent is APT Co., Tehran-Iran, PO Box 14155-1799, Islamic Republic of Iran.

2. The Domain Name and Registrar

The disputed domain name <hitachi.ir> is registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2008. On May 20, 2008, the Center transmitted by email to IRNIC a request for registrar verification in connection with the domain name at issue. On May 23, 2008 and June 4, 2008, IRNIC transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the .IR Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IR Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IR Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

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 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 26, 2008.

The Center appointed Adam Samuel as the sole panelist in this matter on July 3, 2008. 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.

4. Factual Background

The Complainant, whose English name is Hitachi Limited, owns registered trademarks for the name HITACHI in Iran, notably numbers 22614, 109500, 36120, 53253, 79710 and 16785.

5. Parties’ Contentions

A. Complainant

What follows are the Complainant’s contentions. The Panel does not necessarily accept each of them.

The Complainant has registered its HITACHI trademark in Farshi and English in Iran. It has applied for the registration of the domain name <Hitachi.co.ir>. The Complainant is one of the world’s largest companies. The disputed domain name consists of the Complainant’s trademark and the country code for Iran, “ir”.

The Complainant has not authorized, licensed or otherwise given permission to any individuals or entities to register or use the HITACHI mark on its behalf. There is no bona fide offering of goods or services being carried out by the use of the disputed domain name. In fact, the domain is not being used except to stop others, such as the Complainant, from taking advantage of it.

Given the considerable fame of the Complainant’s mark, it is inconceivable that the Respondent was not aware of the Complainant’s right to the HITACHI trademark. Incorporating a widely-known trademark as a domain name is a clear indication of bad faith in itself. The fact that the Respondent has not yet posted any content at this domain name does not absolve the Complainant of bad faith use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under the Policy, the Complainant must prove that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and

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

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

A. Identical or Confusingly Similar

The disputed domain name consists of the Complainant’s registered trademark and the addition of the suffix “.ir”, indicating the country Iran. “Hitachi” is a name with no independent meaning other than as part of the Complainant’s name and the mark that it uses to market its products. The disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent is apparently not called “Hitachi” or anything similar and does not appear to trade under that or any related name. There is no evidence that the Complainant has authorized the Respondent to use its trademark. The Respondent has not asserted any rights or legitimate interests in that name.

For these reasons, on the basis of the available evidence, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered or Used in Bad Faith

The Respondent registered a domain name which consists of the Complainant’s extremely well-known trademark and the country code for Iran. The Respondent must have known of the Complainant’s trademark. The evidence on file gives no reason why the Respondent registered the domain name except to stop the Complainant from exploiting it in accordance with its trademark rights. This was put to the Respondent and the Respondent has not denied it. One must, therefore, assume the Complainant’s submission to be correct here.

The passive holding of a domain name by the Respondent to prevent the Complainant from exploiting the domain name itself is an example of bad faith.

In essence, the Respondent must have known of the Complainant’s trademark rights and the fact that it was infringing them and preventing the Complainant from exploiting its rights with respect to the name “Hitachi” by registering the domain name in dispute. Its registration of the disputed domain name and its passive retention of it constitute in the circumstances bad faith registration and use.

For all these reasons, the Panel concludes that the domain name has been registered and is being used in bad faith.

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 <hitachi.ir> be transferred to the Complainant.

Adam Samuel
Sole Panelist

Dated: July 8, 2008