START-UP TRADEMARK OPPOSITION POLICY

DECISION

Fuji Photo Film Co., Ltd. V. RGnames

Claim Number: FA0204000112598

PARTIES

Complainant is Fuji Photo Film, Co. Ltd., Kanagawa, JAPAN (“Complainant”) represented by Abigail Rubinstein, of Baker Botts L.L.P.  Respondent is RGnames, Pohang-city, KOREA (“Respondent”) represented by Dongil Song.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <fuji.biz>, registered with Wooho T&C Co. d/b/a RGnames.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel.  As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).

Complainant submitted a Complaint to the Forum electronically on April 26, 2002; the Forum received a hard copy of the Complaint on April 27, 2002.

On May 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 21, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).

A timely Response was received and determined to be complete on May 20, 2002.

An Additional Submission was received from Complainant.  The Additional Submission was determined to be late in accordance with STOP Supplemental Rule #7.  However, the Panelist decided to consider the Additional Submission as the delay was insubstantial and nonprejudicial.

On May 30, 2002, pursuant to STOP Rule 6(b), the Forum appointed John J. Upchurch as the single Panelist.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. The <fuji.biz> domain name is identical to Complainant’s FUJI trademark.

2. Respondent has no rights or legitimate interests in the <fuji.biz> domain name.

3. Respondent registered the <fuji.biz> domain name in bad faith.

B. Respondent

1. Fuji is a generic name, and is the name of a Japanese city as well as a variety of apple.

2.   Respondent has legitimate interests in the <fuji.biz> domain name.

3. Respondent did not register the domain name <fuji.biz> in bad faith.

C. Additional Submission (Complainant)

1. Respondent failed to establish it had rights or a legitimate interest in the domain name  <fuji.biz>.

2. Respondent did not rebut the presumption that the registration was in bad faith, and admits to the practice of registering numerous domain names that it has no rights or legitimate interests in.

FINDINGS

Complainant is one of the world’s leading providers of photographic, imaging and information equipment, products and services.  Since at least as early as 1953, Complainant has used the mark FUJI in connection with its goods and services.  These include film, cameras, videotapes and audiotapes for consumers and professionals; chemical-free and environmentally- friendly digital photographic color printers, photographic paper, minilabs, digital imaging products (including digital cameras for commercial and consumer use), photofinishing services, computer and optical disks, data tapes and cartridges, computer accessories, microfilm, motion picture film, a complete range of products for the graphic arts industry, and many more technologically advanced products and services.  Complainant uses the name and mark FUJI and variants thereof, to identify and distinguish its high-quality photographic, imaging and information equipment, products and services from those of others.  Complainant vigorously protects the valuable goodwill in its name and mark FUJI and has registered its mark in practically every nation around the world, including South Korea. Complainant received its first registration in South Korea in 1973.

Respondent registered the domain name <fuji.biz> on March 27, 2002.

DISCUSSION

Paragraph 15(a) of the STOP Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:

(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.

Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form.  Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights.  The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.

Complainant’s Rights in the Mark

There is no issue that the domain name <fuji.biz> is identical to the trademark FUJI, the trademark rights to which belong to Complainant. 

Respondent’s Rights or Legitimate Interests

Respondent cannot establish any of the 3 requirements under STOP policy 4(c) and therefore cannot establish any right or legitimate interest to the domain name <fuji.biz>.  Although Respondent asserted that it planned an internet business including webhosting and email services before receiving notice of commencement of this administrative proceeding, Respondent has failed to establish proof of such assertions.  Therefore, Respondent has failed to establish its use, or demonstrate preparations to use, the <fuji.biz> site in connection with a bona fide offering of goods or services.  (STOP Policy 4(c)(ii) ;  Twentieth Century Fox Film Corp. v. Bernstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002) (Finding that “self-serving unsupported allegations alone are insufficient to establish rights or legitimate interests.”)

Therefore, Respondent has no right or legitimate interest to the domain name <fuji.biz>.

Registration or Use in Bad Faith

Complainant is one of the world’s leading providers of photographic and imaging goods and services.  It’s FUJI mark has been used since 1953, and is registered in practically every nation around the world, and South Korea since 1973.  It is widely advertised with $360 million annual advertising budget.  Therefore, at the time Respondent registered the domain name <fuji.biz>, Respondent knew or should have known that the FUJI trademark belonged to Complainant or its affiliates.  In such case, the registration of the domain name <fuji.biz> will be considered bad faith.  See Victoria’s Secret v. Hardin, FA 96694 (Nat. Arb. Forum Mar. 31, 2001).

DECISION

Accordingly, it is ordered that the domain name <fuji.biz> be transferred from Respondent to Complainant.

John J. Upchurch, Panelist
Dated: June 11, 2002

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