1771
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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Hitachi Europe Ltd -v- Logic Europe Ltd [2004] DRS 1771 (27 July 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1771.html Cite as: [2004] DRS 1771 |
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NOMINET UK DISPUTE RESOLUTION SERVICE
DRS 01771
Hitachi Europe Limited –v- Logic Europe Limited
Decision of Independent Expert
1. Parties:
Complainant: Hitachi Europe Ltd
Country: GB
Respondent: Logic (Europe) Limited
Country: GB
2. Domain Name:
hitachidigitalmedia.co.uk
3. Procedural Background:
The Complaint was lodged with Nominet in full on 21 May 2004. Nominet validated the Complaint and notified the Respondent of the Complaint on 26 May 2004 and informed the Respondent that it had to lodge a Response by 17 June 2004. No Response was filed. On 7 July 2004 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).
On 12 July 2004, Cerryg Jones, the undersigned, (“the Expert”) confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.
4. Outstanding Formal/Procedural Issues (if any):
There are no outstanding procedural issues that arise.
5. The Background:
The Complainant is Hitachi Europe Limited, a part of Hitachi Limited, the well-known multinational business. Hitachi Europe Limited operates in a variety of areas, including digital media and consumer products. Hitachi Limited operates several websites, including one that is dedicated to digital media and consumer products at www.hitachidigitalmedia.com.
The Respondent registered the disputed domain name, hitachidigitalmedia.co.uk, on 6 June 2003. In the papers that were supplied to me by Nominet, there is a printout of the Respondent’s website dated 26 May 2004. A user typing www.hitachidigitalmedia.co.uk into his or her browser on this date was taken to the Respondent’s website, which could also be accessed through the URL http://www.plasma4u.com. Plasma4u.com is described on the Respondent’s website as a part of the Logica Europe business and as the UK’s largest plasma screen retailer. This website identifies various manufacturers including Hitachi, JVC, Panasonic, NEC, Toshiba and others, from whom it can source plasma screens, and details of these products can be accessed from the website.
As at the date of this decision, a user typing www.hitachidigitalmedia.co.uk into his or her browser is now taken to the Complainant’s website at www.hitachi-eu.com. In the absence of a Response, it is unclear whether the filing of the Complaint has prompted this, or whether there is some other explanation.
6. The Parties’ Contentions:
The Complainant says that it operates in a number of business-to-business and business to consumer areas and that the Hitachi name is known globally. The Complainant asserts that the Hitachi trade mark was first registered in the UK more than 40 years ago and that Hitachi now owns a number of trade mark registrations in a variety of classes. The digital media business group is said to represent a significant part of the Complainant’s business, and this is substantiated to some degree by the website to which the Complainant refers at www.hitachdigitalmedia.com. The Complainant alleges that the use by the Respondent of the disputed domain name (a) infringes its trade mark (b) misleads consumers as to the status of “Plasma4U (Logic Europe)” and (c) prevents UK consumers from accessing the full range of Hitachi products and services.
The Respondent did not file a Response.
7. Discussion and Findings:
Paragraph 2 of the Policy requires that for the Complainant to succeed it has to prove to the Expert on the balance of probabilities, that it has rights in respect of a name or mark identical or similar to the domain name and that the domain name in the hands of the Respondent is an abusive registration (as defined in paragraph 1 of the Policy).
Complainant’s Rights
The Complainant has not provided any direct evidence as to the nature of any trade mark rights it may have (whether as a proprietor or licensee) in the Hitachi mark. However, in the papers that were supplied to me by Nominet, it is clear that Hitachi Europe Limited was incorporated on 13 January 1988 (having changed its name from Hitachi London Limited on 2 April 1988). One can also infer from the details contained on the website to which the Respondent refers that the Complainant is part of Hitachi Limited’s European Directory of companies. I am willing to infer from this evidence that the Complainant is in the UK a licensee of the Hitachi trade mark and is duly authorised by the trade mark owner to use the mark and to bring the Complaint.
The dominant and distinct aspect of the disputed domain name is “Hitachi,” the other aspects of the domain name (digital media) being mere descriptors. In the circumstances, I find that the Complainant has rights in respect of a name or mark that is similar to the domain name.
Abusive Registration
The Complainant also has to show that the domain name is an abusive registration. Paragraph 1 of the Policy defines this as a domain name which either:
i. was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR
ii. has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."
The Complainant has not filed any evidence to suggest that when the domain name was first registered or acquired by the Respondent, it took unfair advantage or was unfairly detrimental to the Complainant’s rights in the Hitachi name. If the Complaint is to succeed, it will be necessary to prove on a balance of probabilities that the domain name has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant’s rights. The only use that is supported by evidence in this Complaint is the fact that at some point the disputed domain name resolved to the Respondent’s website at plasma4U.com and that it now points to one of the Complainant’s websites.
Non-exhaustive lists of factors, which may be evidence of an abusive registration, are set out in paragraph 3a of the Policy. However, these are only examples of conduct, which may be evidence that a domain name is an abusive registration.
The potentially relevant factors in this Complaint are contained in subparagraphs 3 a i, C and 3 ii that is:
3 a i "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
C. primarily for the purpose of unfairly disrupting the business of the Complainant;
3 a ii Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant”.
There is sufficient evidence of an abusive registration for the following reasons.
First, the Respondent’s only connection to the domain name is that it offers for sale plasma screens that are manufactured by Hitachi. However, in my view, the registration and use of the domain name in question has given the impression that there is a commercial connection between the Complainant and the Respondent, contrary to the facts. By registering this particular domain name, the Respondent goes beyond the representation that it is a mere distributor of Hitachi products; it makes the representation that there is something official or approved about the Respondent’s website. This is not to say that all non-consenting uses of a third party trade mark incorporated within a quasi-descriptive domain name by a lawful trader in that third party’s trade marked goods takes unfair advantage of the rights that subsist in that third party’s (or licensee’s) trade mark. It all depends upon the impression given. In my judgment, the registration and use of the domain name in dispute here gives a misleading impression, which amounts to an abusive registration.
Secondly, using the domain name in the past to operate as a link to the Respondent’s website primarily promotes the Respondent’s business. In the circumstances of this dispute, this takes unfair advantage of the Complainant’s rights.
Thirdly, prior to suspension of the link between the disputed domain name and the Respondent’s website, internet users searching for information about the Complainant and its products would have been taken, unfairly, to the Respondent’s site. In my view, the Respondent registered and used the disputed domain in the past to target the Complainant’s actual and potential customers.
Finally, the fact that the domain name now points to the Complaint’s website www.hitachi-eu.com is immaterial. The Respondent’s registration and control of the domain name could be changed at any time; it operates as a threat hanging over the head of the Complainant.
In my view, the disputed domain name has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's rights. Accordingly, I find that the domain name is an abusive registration.
8. Decision:
In the light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is similar to the domain name and that the domain name, in the hands of the Respondent, is an abusive registration, I direct that the domain name be transferred to the Complainant.
Cerryg Jones
Date: 27 July 2004