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Fifth Third Bancorp v. Web Domain Names [2005] GENDND 319 (15 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fuji Photo Film U.S.A., Inc. v. Center for Ban on Drugs

Case No. D2004-0970

1. The Parties

The Complainant is Fuji Photo Film U.S.A., Inc., Valhalla, New York, United States of America, represented by Grunfeld Desiderio Lebowitz Silverman & Klestadt, LLP, United States of America.

The Respondent is Center for Ban on Drugs, Denver, Colorado, United States of America.

2. The Domain Name and Registrar

The disputed domain name <fujfilm.com> (the “Domain Name”) is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2004. On November 18, 2004, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On November 18, 2004, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 29, 2004. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform 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 November 30, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2004.

The Center appointed Maxim H. Waldbaum as the Sole Panelist in this matter on February 11, 2005. 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

Complainant is in the business of selling photographic film and other photographic products under the trademark “FUJI” and maintains a website in connection with such business under the domain name <fujifilm.com>.

Respondent registered the Domain Name on December 15, 2001.

5. Parties’ Contentions

A. Complainant

Complainant contends:

- That Complainant is the exclusive U.S. licensee of the trademark “FUJI” for sensitized photographic film and other photographic and imaging products;

- That Complainant is the registrant of the domain name <fujifilm.com>;

- That the Domain Name is almost identical to Complainant’s domain name and is confusingly similar to Complainant’s trademark;

- That Respondent has no rights or legitimate interests in the Domain Name in that the Domain Name is not being used in connection with a bona fide offering of goods and services, that Respondent is not commonly known by the Domain Name, and that Respondent is not making a legitimate or fair use of the Domain Name; and

- That Respondent should be considered to have registered and used the Domain Name in bad faith in that Respondent has intentionally attempted to create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Complainant requests that the Domain Name be transferred to Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) The domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

To satisfy this element, Complainant must establish it has rights to a trade or service mark, and that the disputed domain name is identical or confusingly similar to such mark. See Policy, paragraph 4(a)(i). Under the Policy, the test of confusing similarity is “confined to a consideration of the disputed domain name and the trademark”. America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004 (February 22, 2001).

Complainant has shown that it has owned United States registrations for trademarks consisting of or incorporating the name “FUJI” since 1955, that it is in the business of selling FUJI brand film and other photographic and imaging products, and that it is the registrant of the domain name <fujifilm.com> which it maintains in connection with its sale of photographic products throughout North America. Such longstanding and widespread use is sufficient to establish that the name and mark are famous and are identifiable with Complainant.

The Domain Name at issue combines the first three letters of Complainant’s four-letter trademark with one of Complainant’s principle products (“film”). The Panel finds that Respondent’s use of essentially the entirety of Complainant’s mark in combination with a principle product of Complainant renders the Domain Name confusingly similar to Complainant’s mark and that Complainant has thus satisfied its burden of proof under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the Domain Name in that: Respondent is not using the Domain Name in connection with a bona fide offering of goods and services, is not commonly known by the Domain Name, and is not making a legitimate or fair use of the Domain Name but is using it to misleadingly divert consumers.

Respondent has failed to respond to the Complaint. Complainant’s contentions are therefore deemed undisputed facts, and Complainant’s burden of proof under paragraph 4(a)(ii) of the Policy is thereby satisfied.

C. Registered and Used in Bad Faith

Complainant contends that Respondent should be considered to have registered and used the Domain Name in bad faith in that Respondent has intentionally attempted to create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Complainant’s mark FUJI is extremely well known in the United States. Respondent’s registration of a domain name combining a misspelling of Complainant’s mark with Complainant’s principal product thus evidences constructive knowledge of Complainant’s mark and bad faith registration of the disputed domain name. Complainant’s burden of proof under paragraph 4(a)(iii) of the Policy is thereby satisfied.

7. 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 name <fujfilm.com> be transferred to the Complainant.

Maxim H. Waldbaum
Sole Panelist

Dated: February 25, 2005