WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fujifilm Corporation and Fujifilm Australia Pty Ltd v. Gary Wong

Case No. DAU2016-0040

1. The Parties

The Complainants are Fujifilm Corporation of Tokyo, Japan (the “first Complainant”) and Fujifilm Australia Pty Ltd of Frenchs Forest, New South Wales, Australia (the “second Complainant”), represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.

The Respondent is Gary Wong of Melbourne, Victoria, Australia.

2. The Domain Names and Registrar

The disputed domain names <fujiinstax.com.au> and <instax.com.au> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2016. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 12, 2016 and October 13, 2016, the Registrar transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.

The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 October 17, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2016. The Response was filed with the Center on November 6, 2016.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on November 16, 2016. 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 Complainants are members of the worldwide Fujifilm group of companies which, amongst other things, manufacture and sell cameras, film and other photoimaging products. The group has been in this business since 1934. It now has more than 30,000 employees worldwide.

One of the lines of camera manufactured and sold by the Fujifilm group around the world is its “Instax” line of instant cameras. The group has been using the INSTAX trade mark for this line of products since 1998.

The Complaint provides evidence of a number of registered trade marks held by the first Complainant in Australia:

The second Complainant is the operating arm of the first Complainant in Australia. The Complainants’ products under the trade mark FUJI and also INSTAX have been widely sold throughout Australia including through large national retailer such as JB HiFi, Officeworks, Ted’s Camera Store, Michaels, Harvey Norman, Big W, Target and Myer.

Both disputed domain names were registered on October 30, 2012.

It would appear that neither disputed domain name resolved to an active website until earlier this year when the Complainants objected to the Respondent’s registration of the disputed domain names.

According to the Complainants, the Respondent initially agreed to transfer both disputed domain names to the Complainants for the sum of AUD 500. However, the Respondent subsequently resiled from that agreement.

The Respondent appears to be an aficionado of photography. He has at least one website at the domain name <bubbleapps.io>, which appears to offer for sale courses in photography. He has another website at the domain name <filmneverdie.com>, which appears to offer for sale cameras and other photographic products including film, and to which the disputed domain names were redirected following the Complainants’ objection to the Respondent’s registration of the disputed domain names. Some of the products offered on this website appear to be “Fuji” brand products. Many, if not most, are not. They include Agfa film, Canon cameras and so on.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain names, the Complainants must demonstrate each of the following:

(i) the disputed domain names are identical or confusingly similar to a name, trade mark or service mark in which the Complainants have rights; and

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

(iii) the disputed domain names have been registered or subsequently used in bad faith.

Paragraph 15(a) of the Rules directs the Panel to decide the 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 the Panel deems applicable.

A. Identical or Confusingly Similar

The first element that the Complainants must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainants’ name, trade mark or service mark.

There are two parts to this inquiry: the Complainants must demonstrate that they have rights in a name or trade mark and, if so, the disputed domain names must be identical or confusingly similar to that name or trade mark.

The Complainants have proven that the first Complainant owns the registered trade marks for FUJI and INSTAX referred to in section 4 above. Having regard to the length and extent of use of both those trade marks in Australia, the Panel has no doubt that the first Complainant has generated sufficient reputation in Australia to have common law rights in those trade marks as well as its registered rights.

The disputed domain name <instax.com.au> is identical to the Complainants’ proven rights in the trade mark INSTAX as it is permissible to disregard the “.com.au” second level domain component of the disputed domain name as a functional element of the domain name system.

The disputed domain name <fujiinstax.com.au> contains the entirety of both of the Complainants’ trade marks FUJI and INSTAX. There are no other elements of the disputed domain name apart from, again, the second level domain component. Accordingly, the Panel finds that the disputed domain name <fujiinstax.com.au> is confusingly similar to both the FUJI and INSTAX trade marks.

The Respondent contends that the word “instax” is a slight transposition of the word “instant” and so should be treated as a common or descriptive word. The Respondent also contends that the word “Fuji” is an ordinary place name, referring to Mount Fuji. These arguments are misplaced. On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainants’ trade marks: see, for example, GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001. This is different to the question under trade mark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.

B. Rights or Legitimate Interests

The second requirement the Complainants must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.

Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which a respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainants. Previous panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, supra.

In the present case, the Complainants state that the Respondent is in no way associated with them or the Fujifilm group. The Complainants also state that the Respondent has not been authorized by them to register either disputed domain name or to use their trade marks. The Complainants point out that, after their complaints against the registration of the disputed domain names were made to the Respondent, the disputed domain names resolved to the Respondent’s website at “www.filmneverdie.com”. The letter of demand from the Complainants’ representatives included a printout from that website showing it advertising for sale Olympus cameras, Ilford and Kodak film, Polaroid brand cameras and film, amongst others.

The Respondent argues that he registered the disputed domain names in connection with the provision of photographic education services. He points out that the Complainants’ registered trade marks do not extend to education services in International Class 41. As noted above, he contends that the word “Fuji” is a common place name and the word “instax” differs from the plain English word “instant” by the transposition of “nt” into “x”. The Respondent contends therefore that he is entitled to use both disputed domain names in the way he has done.

The Respondent does not directly address the Complainants’ evidence about the redirection of the disputed domain names to his website at “www.filmneverdie.com”. He says the imposition of the Registrar lockdown once the Complaint was initiated has prevented him from redirecting the disputed domain names to his educational website at the domain name <bubbleapps.io>. He also provides a printout of his website at the domain name <instax.bubbleapps.io>.

This website does include a disclaimer at the top:

INSTAX
INSTAX. and FUJIINSTAX Melbourne, Vic, Australia
Not an affiliate party off or related to, Fujifilm or any trademark property of Fujifilm corporation. We do not trade or deal in photographic materials, we only educate.

The first occurrence of INSTAX in the above is much more prominent than the remainder of the wording and is written in a contrasting yellow colour.

Immediately under that disclaimer, in by far the most prominent wording on the website, is a banner that states, “DISCOVER THE BEAUTY OF POLAROID”.

The suggestion that the Complainants’ registered trade mark rights do not extend to educational services in International Class 41 presupposes that the Panel would accept that the Respondent genuinely intended to use the disputed domain names for educational services as claimed. It also does not take into account either that a registered trade mark in Australia can be infringed in the extended circumstances specified by sections 120(2) and (3) of the Trade Marks Act 1995 in respect of, respectively, closely related services and well-known trade marks, not just by use on or in relation to the goods specified in the registrations. It also does not take into account the potential for action in passing off and under the Australian Consumer Law for misleading or deceptive conduct.

The evidence before the Panel, however, falls well short of establishing that the Respondent registered the disputed domain names with the claimed intention.

First, the suggestion that the word “instax” should be treated as the plain English word “instant” is simply not credible.

Secondly, the word “Fuji” may well be a well-known place name in Japan. That does not assist the Respondent, however, as his websites have nothing whatsoever to do with Mount Fuji. They are directed to photography and the sale of photographic products such as cameras and film. The words “Fuji” and “instax” have relevance to those products only because of their adoption and extensive use by the Complainants.

Thirdly, the disputed domain names have been registered since October 2012. That is, almost four years before the Complaint was filed. The Respondent has not explained why neither disputed domain name resolved to a website of the purported educational kind in that period. The Respondent has not provided any evidence of genuine preparations to launch such a website. Insofar as the disputed domain names redirected to the “www.filmneverdie.com” website (which offers for sale, in addition to some of the Complainants’ products, products of the Complainants’ competitors), such use does not constitute a good-faith offering of goods or services under the Policy. Similarly, the Respondent’s website at <instax.bubbleapps.io> does not qualify as a good-faith offering of goods or services under the Policy.

Accordingly, the Panel finds that the Complainants have established that the Respondent has no rights or legitimate interests in the disputed domain names under the Policy.

C. Registered or Subsequently Used in Bad Faith

In contrast to the Uniform Dispute Resolution Policy, the Complainant must establish that the disputed domain name has been either registered or subsequently used in bad faith by the Respondent under the third requirement of the Policy.

A finding of registration or use in bad faith usually requires a conclusion that the disputed domain names have been registered or are being used to take advantage of their significance as the Complainants’ trade mark. The rejection of the Respondent’s claim that he registered the disputed domain names because of their significance as a common place name or plain English word necessarily leads to the conclusion that the disputed domain names were both registered in bad faith. On the evidence in this administrative proceeding, the Panel would also find that both disputed domain names have been used in bad faith.

Accordingly, the Complainants have established the third requirement under the Policy.

6. 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 names <fujiinstax.com.au> and <instax.com.au> be transferred to the Complainants.

Warwick A. Rothnie
Sole Panelist
Date: November 28, 2016