v.
East Coast Fuji Service Directory
[Indexed as: Fuji Photo Film
v. East Coast Fuji Service Directory]
[Indexed as: FUJISERVICE.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No: D2000-0546
Commenced: June 15, 2000
Judgment: July 21, 2000
Presiding Panelist: Jeffrey M. Samuels
Domain name - Domain name dispute resolution policy - U.S. Trademark - Rights and Legitimate interest in domain name - Community of photographers and hobbyists - Site contains Complainants competitor information - Disclaimer.
Complainant is the holder of a U.S. trademark registration for FUGI. Respondents web site contains photography and camera information. The site states that it is a community of 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."
Held, Name Not Transferred to Complainant.
Complainant failed to establish that Respondent had no rights of legitimate interest in the domain name. 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. The site is an information directory relating to the field of photography. 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.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Cases referred to
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Panel Decisions referred to
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Samuels, Panelist: -
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: fujiservice.com. 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 <http://arbiter.wipo.int/domains/decisions/html/d2000-0546.html>.
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 fujiservice.com 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 fugiservice.com 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 canonservice.com; olympusservice.com; nikonservice.com; and kodakservice.com.
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 <http://arbiter.wipo.int/domains/decisions/html/d2000-0546.html>.
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 <http://arbiter.wipo.int/domains/decisions/html/d2000-0546.html>.
As noted above, in July 1999, Respondent created, under the domain name
in dispute, an information directory relating to the field of photography
<http://arbiter.wipo.int/domains/decisions/html/d2000-0546.html>. 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 "fujiservice.com".
Footnotes:
1. The Panel grants
Complainants 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 Panels 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 cameraservicecenter.com Web site. This
appears to be the case. Presumably, Complainant contends that such use
is not use of the domain name fujiservice.com "in connection with" a bona
fide offering of goods or services. The Panel disagrees.
Domain Name Not Transferred