WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fuji Photo Film Co., Ltd. and Fuji Photo Film U.S.A., Inc. v. East Coast Fuji Service Directory
Case No. D2000-0546
1. The Parties
The Complainants in this administrative proceeding are Fuji Photo Film Co., Ltd., of Tokyo, Japan, and its wholly owned subsidiary, Fuji Photo Film U.S.A., Inc. The Respondent is East Coast Fuji Service Directory.
2. The Domain Name and Registrar
The domain name in dispute is as follows: . The domain name was registered by Respondent with Network Solutions, Inc. on July 18, 1999.
3. Procedural Background
On June 2, 2000, the WIPO Arbitration and Mediation Center received from Complainant a complaint for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).
The complaint was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, the administrative panel was properly constituted, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.
The instant Administrative Proceeding was commenced on June 15, 2000.
Respondent filed a response, which was received by WIPO on July 4, 2000.
Complainant filed a "Request for Reply" on July 18, 2000 1.
The decision of the Panel was due to WIPO on or before July 24, 2000.
4. Factual Background
As set forth in the Complaint, Complainants are principal members of a global network of affiliate and subsidiary companies operating under the mark FUJI, as used on photographic chemicals, film, and related merchandise. FUJI products enjoyed net sales in excess of $11 billion in 1999. Complainant Fuji Photo Film Co., Ltd., alone (or together with its related and affiliated companies) expended in 1999 in excess of $380 million in advertising worldwide in connection with the FUJI mark. The FUJI mark is the subject of a number of valid and incontestable U.S. trademark registrations. See Complaint, Exhibits B-E.
Respondent registered the domain name on July 18, 1999. Respondent's Web site provides photography and camera information. At the top of the site is the message "Welcome to the Camera Service Center." The site then goes on indicate as follows: "This site is a Community Service provided free of charge. We are photographic professionals and hobbyists building a site of information for consumer and professional interest." The site refers to both Fuji Photo Film USA, Inc., as well as Fuji competitors. The site includes a disclaimer to the effect that all trademarks appearing on the site are the property of the respective owners and that "[t]his is a private site not endorsed by or affiliated with these companies."
According to the Response, the Camera Service Center was established as an independent hobbyist site for the purpose of the free exchange of information between visitors in the field of photography.
On April 6, 2000, Complainants' counsel wrote to Respondent's contact, Mr. Joe Hiancone, demanding that the Web site be disabled. Mr. Hiancone and Complainants' counsel, apparently, had a telephone conversation regarding the matter on April 12. On May 5, counsel again wrote to Mr. Hiancone requesting a response to the April 6 letter.
5. Parties' Contentions
Complainants contend Respondent has improperly and unlawfully used the domain name in connection with commercial activity in an effort to trade in the goodwill associated with Complainants� valuable trademark rights.
According to Complainants, Respondent should be considered as having no right or legitimate interest in respect of the domain name because, on information and belief, it had actual or constructive notice of Complainants' superior rights in the mark FUJI before it registered, began using, or made demonstrable preparations to use the domain name.
With respect to the issue of bad faith, Complainants note that Respondent has registered domain names that incorporate the marks of other famous camera and photography makers, such as ; ; ; and . See Complaint, Exhibit G. Complainants further contend that: (1) Respondent registered and used the domain name primarily for the purpose of trading in the goodwill of Complainants' famous and valuable trademark rights with an intent to benefit therefrom; (2) Respondent has registered the domain name to prevent Complainants from registering its mark in said domain name; (3) Respondent has used the domain name to intentionally attract, for commercial gain, Internet users to its Web site, by creating a likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation, or endorsement of its Web site or of a product or service on its Web site; and (4) Respondent has engaged in a pattern of such bad faith behavior by registering other famous trademarks and domain names.
Respondent contends that, in July 1999, it began creation of an online community for the purpose of building an information directory Web site. Thus, Respondent argues, it has legitimate interests in the domain name, i.e., is engaged in a bona fide offering of services, within the meaning of 4.c.(i) of the Policy. Respondent further contends that it is engaged in noncommercial activity at its Web site and that the mark FUJI is used by others in connection with a wide variety of goods and services and, thus, that, contrary to Complainants' assertion, FUJI is not a famous mark.
6. Discussion and Findings
The Panel determines that Complainant has failed to establish all of the elements required under 4.a. of the Policy. In particular, the Panel rules that Complainant has failed to establish that Respondent has no rights or legitimate interests in respect to the domain name 2.
The Panel's review of the record persuades it that, prior to notice of the instant dispute, Respondent began use of the domain name in issue in connection with the bona fide offering of goods or services 3. As noted above, in July 1999, Respondent created, under the domain name in dispute, an information directory relating to the field of photography 4. Visitors to Respondent's Web site are invited to offer their views on camera service and repair issues. That Respondent had actual or constructive notice of Complainants' superior rights in the mark FUJI before Respondent registered, began using, or made demonstrable preparations to use the domain name, does not compel a contrary determination under the relevant Policy.
7. Decision
In view of the above, the Panel denies Complainant's request for transfer to it of the domain name "".
Jeffrey M. Samuels
Panelist
July 21, 2000
Footnotes:
1. The Panel grants Complainant�s request to file a reply and has reviewed the submission. The reply responds to assertions in the response to the effect that Complainant knowingly prosecuted a false claim, trademark misuse and abuse, bullying, slander, and perjury. As Complainant notes, "[t]hese allegations are entirely outside the scope of the Panel�s jurisdiction and are irrelevant to the pertinent issues presented in this proceeding." The Panel gave no weight to any of these allegations in reaching its decision in this matter.
2. As noted in the Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, "[i]t should be emphasized that a finding of legitimate right under paragraph 4 (c) means only that the streamlined dispute-resolution procedure is not available and that the dispute is a `legitimate' one that should be decided by the courts. Even though the dispute is legitimate, the domain-name holder's right may not ultimately prevail over a trademark in court."
3. As a result of the Panel's decision on this issue, it does not consider Respondent's argument that it is making a legitimate noncommercial use of the domain name.
4. In its reply, Complainant argues that the domain name in dispute merely serves as a portal to transport those surfing the Internet to the Web site. This appears to be the case. Presumably, Complainant contends that such use is not use of the domain name "in connection with" a bona fide offering of goods or services. The Panel disagrees.
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