WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fuji Photo Film Co Limited and Fuji Photo Film USA Inc v Fuji Publishing Group LLC
Case No D2000-0409
1. The Parties
The Complainants are Fuji Photo Film Co. Limited and Fuji Photo Film USA, Inc, (together referred to as "the Complainant"). Fuji Photo Film Co. Limited is a Japanese company based in Tokyo and has a wholly owned subsidiary Fuji Photo Film USA, Inc. which has its principal place of business at 555 Taxter Road, Elmsford, New York. The Complainants are represented by Doreen L. Costa and Paul D. Ackerman of the law firm of Baker Botts LLP. The Respondent, Fuji Publishing Group LLC is based at 618 N Oaks St., 500 Tacoma, Washington 98406, USA and is represented by its president Bobby Holstein.
2. The Domain Name and Registrar
The domain name in dispute is "fuji.com" which is registered with Network Solutions Inc ("NSI"). The registration has been on "Hold" status since May 20, 1996 as a result of a complaint lodged by the Complainant with NSI dated May 25, 1996. The Complainant was notified by NSI that the "Hold" status would be removed from the domain name on May 10, 2000 unless the Complainant took action against the Respondent.
3. Procedural history
The complaint was received by email on May 9, 2000 and a hard copy received on May 12, 2000. The complaint has been filed in accordance with the requirements of the Rules and the supplemental Rules and this has been verified by the WIPO Arbitration and Mediation Center. Accordingly in accordance with paragraph 4(c) of the Rules the formal date of the commencement of the administrative proceedings is May 24, 2000.
Notification of the complaint was given to the Respondent on May 24, 2000 by email, by post and by fax. The Panel has seen a copy of the fax answer back sheet and the postal receipt. Accordingly the Panel is satisfied that the Respondent was properly notified of the complaint within paragraph 2(a) of the Rules.
The response was received by the WIPO Arbitration and Mediation Center on June 13, 2000 within the time provided by the Rules. In accordance with paragraph 6(f) of the Rules an Administrative Panel was appointed consisting of a single member, Mr. Clive D. Thorne. Mr. Thorne has submitted a statement of acceptance and declaration of impartiality and independence. The Panel is unaware of any further submissions having been made by the Parties.
4. Factual Background
The Complaint arises as a result of registration of the domain name "fuji.com" with Network Solutions Inc which as previously indicated has been on "Hold" status since May 20, 1996. The Complainant is the owner of numerous world wide trademark registrations for the mark FUJI. The complaint is based on inter alia a number of representative trade mark registrations in the United States as follows:
FUJI Ė no. 598938 for photographic chemicals.
FUJI Ė no. 614791 for photographic apparatus, supplies and accessories.
FUJI Ė no. 1166184 for blank audio tapes, blank video tapes.
FUJI and design Ė no. 1339842 for inter alia sensitized photographic film, paper and plates.
It should be noted that the registrations relied upon are for photographic goods and blank recording tape.
The Complainant asserts that the mark FUJI has been in continuous use in the United States and throughout the world for close to 50 years. This is not disputed by the Respondent.
The Complainant also asserts that the mark FUJI enjoys substantial good will in the market place, instant worldwide recognition and is "famous". The Complainant asserts that the mark FUJI is the subject of substantial worldwide advertising and promotional activities in broadcast and print media. Examples of the results of such expenditure e.g. sponsorship of sports events and the "FUJI blimp" are referred to by the Complainant to show that the FUJI mark is a "particularly strong mark which has become instantly associated in the public mind with the Complainants and their world wide affiliate companies".
In its response the Respondent sets out the history of the use of the mark FUJI by the Respondent. In particular the Respondent draws attention to the fact that the Washington state volcano Mount Rainier, which is visible from Tacoma, (where the respondent is based) is similar in appearance to Mount Fuji in Japan and that this played a role in selecting the name of the Respondent.
The Respondent states that in 1992 knowing of no other Fuji trademark specific to information system delivery services or point of sale software systems set up the following companies:
Fuji Interactive - specializing in entertainment and recreational software applications
Fuji Publishing Group - specializing in business software applications
Fuji BBS - an electronic bulletin board system
The Respondent has since 1992 been designing interactive Windows (TM) based point of sale products for the dental and hospitality industries as well as for the cigar and wine industries. The Respondent asserts that it has become under the name Fuji Interactive and Fuji Publishing the de facto leader in website design for the wine and cigar industries and in particular is the undisputed web design leader in the cigar industries enjoying world wide acclaim and fame from cigar and internet publication.
5. Parties contentions
The Complainant contends:
Prior to the domain name being placed on "hold" status by Network Solutions Inc. the Respondent had improperly and unlawfully used the domain name, "fuji.com" in connection with commercial activity in an effort to trade on the good will associated with the complainants trade mark rights.
In support of this contention the Complainant relies upon promotional material posted on the Respondentís website which states:
"Many people ask, but we donít make film. Our friends at Kodak do."
This extract from the website is exhibited as Exhibit G to the Complainantís case. The Complainant contends that this statement "clearly evidences actual confusion, a predatory, bad faith intent, and unfair competitive conduct by the Respondent by its registration and use of "fuji.com" domain name." The Complainant states that the Respondent chose to add to existing confusion by including the reference to, Kodak, a company which makes similar goods to those of the Complainant.
The Complainant contends that the Respondent has no right or legitimate interest in respect of "fuji.com" because it has or had actual or constructive notice of the Complainantís superior rights in the mark FUJI before it registered, began using or made demonstrable preparations to use the domain name.
The domain name "fuji.com" should be considered as having been registered and used in bad faith because on information and belief:
The Respondent registered and used the domain name primarily for the purpose of trading in the good will of the Complainantís famous and valuable trademark rights.
The Respondent has registered the domain name to prevent the Complainant registering its marks in the said domain name.
The Respondent has used the domain name to intentionally attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainantís marks as to the source, sponsorship, affiliation or endorsement of its website.
The Complainant also relies upon two attempts to resolve the matter by way of letter sent from Baker Botts on April 12, 2000 and a chasing letter dated April 25. In the April 12 letter the Complainant sought to have the domain name transferred. According to the Complainant no response was received to either of those letters. It relies upon the failure to respond to the letters as further evidence of bad faith.
The Respondent contends:
That its use of the domain name as well as its use of the mark FUJI is in relation to a different service (i.e. on line services) to those offered by the Complainant
The Respondent is one of a very large number of companies "literally hundreds of companies" unaffiliated with the Complainant, who have registered trademarks incorporating the word FUJI. Additionally there are " literally thousands of companies listed in phone books and on websites that incorporate the word FUJI".
The FUJI name has also become a source of common description and common terms. In particular the Respondent refers to FUJI as the name of a brothel in Birmingham, Alabama, as a common name for a type of heroin, as the name of the well-known mountain in Japan and as the name of a common variety of apple grown in Washington state.
In defense of the allegation of bad faith the Respondent points out that it also registered "fujipub.net" for the purpose of trading upon its reputation in Fuji Publishing Group. The Respondent has not registered "fujifilm.com", "fujiphoto.com", "fujifilm.net" nor "any of the other myriad of domain names controlled by the Complainant".
The Respondent draws attention to the apparent fact that the Complainant did not register "fuji.co.jp", "fuji.net" or "fuji.org" and that the Complainant has not filed any action against the owners of those domain names. In particular the Respondent draws attention to the fact that "fuji.co.jp" is owned by Fuji Bank.
In response to the Complainantís contention that bad faith is evidenced by the website reference to Kodak the Respondent refers to the fact that the exhibit in question states "we donít make film" which eliminates any perceived or potential confusion arising from sponsorship or affiliation with the Complainant.
6. Discussion and Findings
In order to succeed in its complaint the Complainant has to satisfy the three tests set out in paragraph 4(a) of the Dispute Resolution Policy. The three elements are as follows:
- The Respondentís domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interest in respect of the domain name; and
- The Respondentís domain name has been registered and is being used in bad faith.
Paragraph 4 expressly states that the burden of proof in demonstrating each of these three elements is upon the Complainant. Further it should be noted (as is recognized by the Respondent) that the three elements are cumulative and not alternative.
(i) The Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Panel accepts that the Complainant has valid trade mark rights in the mark "FUJI" as registered in the United States and relied upon in the complaint. The panel also accept the Complainantís argument that "aside from the generic top-level domain (gTLD) ".com" the domain name in dispute, "fuji.com" is identical to the Complainantís registered trade mark FUJI. The Panel therefore finds for the Complainant in respect of paragraph 4 (a)(i).
(ii) The Respondent has no rights or legitimate interest in respect of the domain name.
The Panel is prepared to accept that the Complainant has rights and legitimate interests in the domain name. These rights and interests arise as a result of the Complainantís use of the mark FUJI as a trade mark and as a result of the Complainantís use of the corporate name Fuji in the case of both the Japanese company Fuji Photo Film Co. Limited and in respect of the United States company Fuji Photo Film USA Inc. The Complainant has also had continuous use of the mark FUJI in respect of its products in the United States and throughout the world. The Panel accepts that the evidence of promotional use of the mark FUJI demonstrates that the mark is a particularly strong mark which can be associated in the public mind with the Complainant and their world wide affiliated companies.
However the issue to decide is whether the Respondent has no rights or legitimate interests in respect of the domain name. Having accepted that the Complainant has such interests it is necessary for the Panel to consider whether the evidence adduced by the Respondent shows that the Respondent has rights or legitimate interests in the domain name particularly when no evidence has been adduced by the Complainant that the Respondent has no rights or legitimate interests in respect of "fuji.com".
The Respondent contends that the Complainant has not met the required burden of proof and indeed relies upon the extract from the Respondentís website exhibited by the Complainant (Exhibit J) as demonstrating that the Respondent has rights and legitimate interests in the domain name. That exhibit makes reference to the Respondent bringing the reader "the finer things in life from all over the world" and expressly refers to Fuji distilled spirits, Fuji wine, Fuji cigars, Fuji North West Microbrew.
Further the Respondent provides evidence that it has used the name FUJI as the name of group companies specializing in software systems since 1992 and that it has been designing point of sale software products for the dental and hospitality industries since then. Moreover, it has become a de facto leader in "website design and cigar industries". The Panel is prepared to accept, on the basis of the Respondentís submissions that it has used and or traded using the corporate name Fuji since 1992 but for goods and services different to those in which the Complainant shows trading rights.
Although the Complainant claims prior trade mark rights to FUJI the Respondent, in the Panelís view rightly contends that the Complainantís trade mark FUJI does not encompass internet services, point of sale software or bulletin board services, all services which are offered by the Respondent.
In these circumstances the Panel is unable to accept that the Respondent has no rights or legitimate interest in respect of the domain name and finds that the Complainant has not met the required burden of proof in respect of paragraph 4(a)(ii).
(iii) The Respondentís domain name has been registered and is being used in bad faith.
Given that the Complainant has failed to succeed in its burden of proof in respect of paragraph 4(a)(ii) it is not necessary for the Panel to consider whether or not the Respondent has registered or is using the domain name in bad faith.
The Administrative Panel decides that the Complainant has not proven each of the three elements in paragraph 4(a) of the Uniform Policy. It does not require that the domain name "fuji.com" be transferred by the Respondent to the Complainant.
CLIVE DUNCAN THORNE
Dated: July 2, 2000