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Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings [2005] GENDND 56 (19 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings

Case No. D2004-0971

1. The Parties

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

The Respondent is LaPorte Holdings, Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <fuijifilm.com> is registered with NameKing.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 NameKing.com a request for registrar verification in connection with the domain name at issue. On November 30, 2004, NameKing.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 30, 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 December 1, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 21, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2004.

The Center appointed Debrett G. Lyons as the sole panelist in this matter on January 6, 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

The Complainant appears to be the authorised US business representative of the Japanese company, Fuji Photo Co., Ltd, well known for its photographic and imaging products. The Complainant is the registered owner of the domain name <fujifilm.com> and asserts itself to be the exclusive licensee of the Japanese company’s two US Federal trade mark registrations, nos 06144791 for the word mark FUJI dating from October 25, 1955, and 73433971 for a FUJI logo mark dating from July 8, 1983.

The disputed domain name was previously registered in the name of Horoshiy, Inc, purportedly a Netherlands Antilles company, and at some point between September 28, 2004 and November 10, 2004, was subsequently recorded as having been transferred into the name of the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the domain name is confusingly similar to a trademark owned by the Japanese parent corporation, and that the Complainant is the exclusive licensee of that or those trademarks in the United States. The Complainant also alleges that the disputed domain name is almost identical to its domain name and is therefore also confusing.

The Complainant asserts that the Respondent is not in the photographic products business and so believes that the Respondent has adopted the disputed domain name for the sole purpose of unlawfully diverting to itself the Complainant’s trade.

The Complainant contends that since there is no evidence of use of the disputed domain name, nor any demonstrable preparations to begin use of the name, in connection with a bona fide offering of goods or services, nor evidence that the Respondent is commonly known by the disputed domain name, and so accordingly the Respondent has no rights or legitimate interest in the name.

Finally, the Complainant alleges that the domain name should be considered to have been registered and used in bad faith because the Respondent has intended to attract for its own gain Internet users to its own website or on-line location by creating a likelihood of confusion “with the Complainant’s mark and website as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location, or of a product or service on the Respondent’s website or location”.

B. Respondent

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

6. Discussion and Findings

Although the Respondent did not reply, it is proper for the Panel to nevertheless examine the Complainant’s contentions having regard to both the Policy and the Rules. Having considered the Complainant’s case and the evidence available, the Panel finds the following:

A. Identical or Confusingly Similar

The Policy requires that the Complainant shows that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

In the first place, both the registered marks and the Complainant’s use of its domain name significantly precede the date of registration of the disputed domain name.

The Panel has no difficulty in deciding that the disputed domain name is confusingly similar to at least US trade mark registration number 06144791 (the word mark) and is both virtually identical , and confusingly similar to, the Complainant’s domain name. For the reasons which follow, there is no need to take a view on US trademark registration number 73433971 for the logo style mark.

The elements FUJI and FUIJI are confusingly similar. Numerous panels in the past have found similarity to be present in the case of a deliberate misspelling of a mark (so-called “typo-squatting”), by adding, deleting, substituting or reversing the order of letters in a mark. See, inter alia, Yurtici Kargo Servisi A.S. v. Yurticicargo Yurticikargo, WIPO Case No. D2003-0707; CareerBuilder, LLC v. Azra Khan, WIPO Case No. D2003-0493; The Sportsman’s Guide, Inc. v. Vipercom, WIPO Case No. D2003-0145; Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323; Hobsons, Inc. v. Peter Carrington a/k/a/ Party Night Inc., WIPO Case No. D2003-0317; America Online Inc. v. John Zuccarini, WIPO Case No. D2000-1495; Microsoft Corporation v. Charlie Brown, WIPO Case No. D2001-0362; Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201; Playboy Enterprises International Inc. v. SAND WebNames - - For Sale, WIPO Case No. D2001-0094; Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., StonybrookInvestments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587; Ziegenfelder Co. v. VMH Enterprises, Inc.

Moreover it is an established principle of trademark law, and one that been endorsed in numerous earlier UDRP decisions, that the addition of a purely descriptive integer to a distinctive mark does nothing to dispel confusion. See, e.g. Nokia Corporation v. Firdaus Adinegoro/Beli Hosting, WIPO Case No. D2004-0814; Nokia Corporation v. Marlon Sorken, WIPO Case No. D2002-0276; Nokia Corporation v. Liquid SMS Limited, WIPO Case No. D2002-0292.

As such, the addition of the descriptor, “film”, to the registered mark still results in a similar name. Accordingly, in the view of the Panel, the disputed domain name is confusingly similar to both the word mark and the Complainant’s domain name.

Nonetheless, the Complainant must be shown to have rights in the trademark and in this case there are issues that do require at least some consideration. In the first place, looking simply at the registered rights, they are not in the name of the Complainant. Instead they are in the name of the Japanese company. It is said that this is the “parent” company and, variously, that the Complainant is the authorised US representative of the rights owner and the exclusive licensee of the trade mark. Little of this is proved. No exclusive license, of the intellectual property rights or otherwise, is provided and the corporate relationship is shown only by a reference to the Japanese company’s website. There is no special effort made to show that the trademark rights, which span back to 1955, are renewed, valid and subsisting.

Turning to the domain name and to what might be collectively called the Complainant’s unregistered or common law rights, there is evidence of a kind that the Complainant has itself generated a protectable goodwill in the FUJIFILM name, independently of the registered rights held by the Japanese company.

It has to be said that the Complainant’s evidence might have been better marshalled and certainly in the case of a lessor known mark this complaint might well have failed. Nonetheless, there is at least in this case sufficient evidence readily available to the Panel for it to decide that the Complainant has established this element of the complaint and so satisfied Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant alleges that the Respondent has no rights or legitimate interests in the domain name. The Respondent, by failing to file a Response, did nothing to dispute this contention nor to provide information as to its interests in using the domain name.

According to Paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, amongst other ways, by showing the following:

(i) before any notice to the Respondent of the dispute, 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) the Respondent had been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Aside from the fact that no reply was filed, there seems very little the Respondent might have relied upon. Trivial research shows that the word FUIJI has no common meaning in the Japanese language. There is no evidence of any kind that the disputed domain name was put to use by the Respondent, or that it had made preparations to do so. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the domain name and that Paragraph 4(a)(ii) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.

The Complainant does not rely on Paragraphs 4(b)(i), 4(b)(ii) or 4(b)(iii) but upon Paragraph 4(b)(iv). This requires the Complainant to establish that the Respondent registered and is using the disputed domain name to confuse and divert Internet traffic to their website for commercial gain.

Apart from the famous nature of the Complainant’s mark, the domain name is confusingly similar to the Complainant’s mark FUJI. The domain name is also virtually identical with the domain name under which the Complainant does business and sends and receives its emails. See Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273; Advanced Micro Devices, Inc. v. [No Name], WIPO Case No. D2000-0515; Telstra Corporation, Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Encyclopaedia Britannica, Inc. v. John Zuccarini and the Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330; eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 and Ellerman Investments Limited and The Ritz Hotel Casino Limited v. Antonios Manessis (trading as .com and manessis.com), WIPO Case No. D2001-1461. It is difficult to conceive that Respondent chose to register the domain name <fuijifilm.com> by accident. The Panel finds that the domain name was registered in bad faith and with the intention of causing confusion with the word mark and the Complainant’s domain name and in an attempt to divert Internet traffic otherwise rightfully bound for the Complainant.

Nonetheless, the Complainant must prove the additional requirement that the domain name “is being used in bad faith” by the Respondent. As was observed in the now well quoted case with similar facts of Telstra Corporation Ltd v. Nuclear Marshmallows WIPO Case No. D2000-0003, “the domain name does not resolve to a website or other on-line presence. There is no evidence that a website or other on-line presence is in the process of being established which will use the domain name. There is no evidence of advertising, promotion or display to the public of the domain name. Finally, there is no evidence that the Respondent has offered to sell, rent or otherwise transfer the domain name to the Complainant, a competitor of the Complainant, or any other person. In short, there is no positive action being undertaken by the Respondent in relation to the domain name.”

In that case the Panel went on to reason:

“The question that then arises is what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour. A remedy can be obtained under the Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.

The Administrative Panel has considered whether, in the circumstances of this particular Complaint, the passive holding of the domain name by the Respondent amounts to the Respondent acting in bad faith. It concludes that it does. The particular circumstances of this case which lead to this conclusion are:

(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,

(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,

(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and

(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.

In light of these particular circumstances, the Administrative Panel concludes that the Respondent’s passive holding of the domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the domain name “is being used in bad faith” by Respondent.”

Many of those factors are pertinent to the present case. The FUJI mark is known internationally, no redeeming explanation can be attributed to the Respondent’s choice of an all but identical name, the Respondent could not, in the future, use the name without the likelihood of a breach of the Complainant’s intellectual property rights, and the Respondent has failed to reply to the Complaint.

Moreover, there is evidence that the Respondent is systematically involved in this behaviour, further circumstantial evidence of bad faith. See, eg., Société des Hôtels Méridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849; Krome Studios Pty, Ltd. v. LaPorte Holdings, Inc., WIPO Case No. D2004-0707. These cases could indicate a pattern of bad faith conduct.

Additionally, there is evidence that the Respondent’s predecessor in title was involved in many cases of registering domain names that contain the trademarks of others. See e.g. MedCo Health Solutions Inc. v. Horoshiy, Inc, WIPO Case No. D2004-0625; Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620; Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615; Lillian Vernon Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0611.

The Panel therefore finds for the Complainant on this third element of the test and determines that Paragraph 4(a)(iii) of the Policy has been 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 <fuijifilm.com> be transferred to the Complainant.

Debrett G. Lyons
Sole Panelist

Dated: January 19, 2005