START-UP TRADEMARK OPPOSITION POLICY

DECISION

Fuji Photo Film Co., LTD v. Youn Kwan Jeong

Claim Number: FA0205000113975

PARTIES

Complainant is Fuji Photo Film, Co. LTD, Kanagawa, JAPAN (“Complainant”) represented by Abigail Rubinstein, of Baker Botts LLP.  Respondent is Youn Kwan Jeong, Seoul, SOUTH KOREA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <fujifilm.biz>, registered with Gabia, Inc.

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.

Hon. Ralph Yachnin 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 May 13, 2002; the Forum received a hard copy of the Complaint on May 14, 2002.

On May 17, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 6, 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”).

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On June 28, 2002, pursuant to STOP Rule 6(b), the Forum appointed Hon. Ralph Yachnin as the single Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the STOP Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent’s <fujifilm.biz> domain name is identical to Complainant’s registered FUJI FILM mark.

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

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

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns the Reg. No. 1,906,228 for its FUJI FILM mark with the U.S. Patent and Trademark Office, registered on July 18, 1995. Additionally, Complainant has received trademark registrations for its FUJI FILM mark in numerous jurisdictions worldwide, including, but not limited to: Albania, Czech Republic, Hungary, Iceland, Iran, Ireland, Poland, Hong Kong, Italy, China and United Kingdom. Complainant also owns numerous registrations in South Korea, Respondent’s domicile, specifically, Reg. Nos. 28660, 204884 and 206271, among others.

Since at least as early as 1973, Complainant has used its FUJI FILM mark in connection with its goods and services. Complainant operates numerous domain names, <fujifilm.com>, <fujifilm.net> and <fujifilm.ca>, among others.

Respondent registered the disputed domain name on March 27, 2002 and has yet to develop a purpose or website in conjunction with the domain. Respondent is not licensed or authorized to use Complainant’s FUJI FILM mark.

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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the STOP Rules.

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

Complainant has established its rights in the FUJI FILM mark through international registration of the mark and continuous use of the mark since 1973.

Respondent’s <fujifilm.biz> domain name contains Complainant’s entire FUJI FILM mark. Respondent’s disputed domain name mirrors Complainant’s famous mark in its entirety, reflecting the identical spelling and form of Complainant’s mark. Because spaces are inconsequential when conducting an “identical” analysis, Respondent’s domain name is identical to Complainant’s mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

Accordingly, the Panel finds Respondent’s <fujifilm.biz> domain name is identical to Complainant’s FUJI FILM mark pursuant to STOP Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding. Therefore, it is presumed that Respondent lacks rights and legitimate interests in the <fujifilm.biz> domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Additionally, because Respondent failed to submit a Response, the Panel is permitted to make all inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

It is not apparent to the Panel that Respondent has rights in the <fujifilm.biz> domain name. In fact, Complainant’s famous mark and assertions contained in the Complaint create a presumption against Respondent being the owner of a trade or service mark that is identical to the disputed domain name. Respondent has not come forward with any evidence that it has rights or legitimate interests in the FUJI FILM mark anywhere in the world. Therefore, Respondent has failed to establish rights in the domain name pursuant to the threshold established by STOP Policy ¶ 4(c)(i). See Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that, because Respondent did not come forward with a Response, the Panel could infer that it had no trademark or service marks identical to <grammy.biz> and therefore had no rights or legitimate interests in the domain name); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark). 

Respondent has not developed a purpose in connection with the disputed domain name. Respondent’s registration of a domain name that emulates a famous mark in its entirety implies that Respondent is seeking to eventually attract Internet users based on the goodwill and fame associated with Complainant’s established mark. Respondent’s opportunistic registration of Complainant’s mark does not represent a bona fide offering of goods or services under STOP Policy ¶ 4(c)(ii). See Credit Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb. Forum Feb. 25, 2002) (“The use of another's trademark to attract users to Respondent's domain is not considered to be a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii)”); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).

There is no evidence or information before this Panel that suggests Respondent is commonly known by <fujifilm.biz> or FUJIFILM pursuant to STOP Policy ¶ 4(c)(iii). Respondent is not an authorized agent of Complainant, nor is Respondent licensed to use the FUJI FILM mark. See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that Respondent is not commonly known by the mark contained in the domain name where Complainant has not permitted Respondent to use the NOKIA mark and no other facts or elements can justify prior rights or a legitimate connection to the names “Nokia” and/or “wwwNokia”); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

Accordingly, the Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.

Registration or Use in Bad Faith

In light of the notoriety of Complainant’s famous FUJI FILM mark and the nature of NeuLevel’s STOP registration procedure, Respondent had notice of Complainant’s preexisting rights in the FUJI FILM mark. Respondent’s opportunistic registration of the disputed domain name, despite knowledge of Complainant’s rights, represents bad faith registration under STOP Policy ¶ 4(a)(iii). See Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith); see also Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that the unique nature of the STOP Policy and the notice given to Respondent regarding existing IP Claims identical to its chosen domain name precluded good faith registration of <genelogic.biz> when Respondent registered it with “full knowledge that his intended business use of this domain name was in direct conflict with a registered trademark of a known competitor in exactly the same field of business”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Complainant has extensively used the FUJI FILM mark worldwide over the past two decades. As a result of Complainant’s long and continuous use of the mark throughout the world, and its extensive marketing and promotional efforts, the FUJI FILM mark has become exclusively associated with Complainant. Respondent’s registration of an identical domain name represents an intentional attempt to attract, for commercial gain, Internet users searching for Complainant’s services and products. Respondent will inevitably benefit from the confusion it creates, while Complainant will suffer from dilution of the strength of its trademark. Respondent’s registration of <fujifilm.biz> represents bad faith under STOP Policy ¶ 4(b)(iv). See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

The Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the STOP Policy, the Panel concludes that relief should be hereby GRANTED.

           

Accordingly, it is Ordered that the <fujifilm.biz> domain name be TRANSFERRED from Respondent to Complainant and that subsequent challenges under the STOP Policy against this domain name SHALL NOT be permitted.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: July 1, 2002

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