DECISION

Natural Waters of Viti, Ltd v. Crystal Clesar Mineral Water Fiji Ltd

Claim Number: FA0312000216800

PARTIES

Complainant is Natural Waters of Viti, Ltd. (“Complainant”), represented by Todd P. Blakely, of Sheridan Ross P.C., 1560 Broadway, Suite 1200, Denver, CO 80202-5141.  Respondent is Crystal Clesar (sic) Mineral Water Fiji Ltd.  (“Respondent”), Lot 20, Waqadra Industrial Sub-Division, Nandi, Fiji.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <aquafiji.com>, (hereinafter the “Domain Name”) registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide (hereinafter “Internet Names Worldwide”).

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.

Clive Elliott as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 4, 2003; the Forum received a hard copy of the Complaint on December 8, 2003.

On December 23, 2003, Internet Names Worldwide confirmed by e-mail to the Forum that the domain name <aquafiji.com> is registered with Internet Names Worldwide and that Respondent is the current registrant of the name. Internet Names Worldwide has verified that Respondent is bound by the Internet Names Worldwide registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On December 29, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 19, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@aquafiji.com by e-mail.

A timely Response was received on January 17, 2004. Respondent e-mailed its Response in due time but failed to lodge a hard copy within the allotted time. The Panel may note that the hard copy of the Response was not received in a timely manner as dictated by UDRP Rule 5(a) and (b), and did not include the certification statement required by Rule 5(b)(viii). For these reasons, the Panel may decide not to consider Respondent’s deficient Response in this dispute.  However, the Panel may exercise its discretion and choose to consider Respondent’s deficient Response. See Strum v. Nordic Net Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“Ruling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process"). The Panelist is of the view that in order to try and resolve the real controversy in this case he should exercise his discretion in Respondent’s favour.

On January 26, 2004 a timely Additional Submission was received from Complainant. On January 28, 2004 a timely Additional Submission was received from Respondent. Both are referred to below.

On February 3, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Clive Elliott as Panelist.

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant uses and claims to be the exclusive owner of the trademarks FIJI and FIJI WATER throughout much of the world for use in connection with natural, spring and artesian water for drinking.  The trademarks are used by Complainant on its bottles and packaging and in marketing materials and advertising, including on its website.  The FIJI WATER product is said to be high quality, natural artesian water bottled at its source in the Fiji Islands. 

The product has been sold in the United States since February 1997 and since then worldwide sales of the FIJI WATER product have exceeded 173 million bottles and have generated over $100 million dollars in revenues.  The FIJI WATER product is now the second highest selling imported bottled water in the United States. It is asserted that as a result of its marketing and sales of the FIJI WATER product, Complainant has developed substantial trademark, trade dress and copyright rights in and to the FIJI marks, and to its unique label, bottle and packaging throughout the world. 

In addition to substantial marketing and sales efforts throughout the world, Complainant has obtained trademark registrations and is the owner of trademark registrations for the mark FIJI, alone, in Argentina, Canada, the European Union and the United States, and as part of a composite mark in Argentina, Australia, Canada, Europe, Japan, Korea, Mexico, New Zealand, Taiwan and the U.S. It has also lodged trademark applications in various countries.

Complainant asserts that it is extremely well known in the Republic of Fiji and donates a portion of its revenues from the sale of its FIJI WATER product to educational programs, scholarships, trusts and infrastructure improvements in Fiji.

           

Complainant submits that Respondent’s identity is murky and it has systematically evolved its product and business to usurp the entirety of the FIJI WATER product and its image.  It says the <aquafiji.com> domain name is an integral part of Respondent’s illegal scheme.

B. Respondent

Respondent is also in the business of bottling water in Fiji. It asserts it is currently selling its product into the Brisbane Australia market.

It accepts that initially it copied material from Complainant’s website but says that its early website which contained some of <fijiwater.com> content was never promoted and
was never submitted to any search engines. It states that once it realised the website was copied it was taken down and it was never updated or completed properly. It says even though it believes it has never breached any trademarks or copied Complainant’s trademarks or trade dress it changed its trade dress and bottle sizes and these are not the actions of a company using so called deceptive and misleading acts.

Respondent’s Response contains much irrelevant material and focuses on the trade dress of the respective products. It does however assert that Fiji is the name of a country and therefore not capable of protection as a trademark, being a country name, just like the single word America, USA or Australia.

Respondent states that it is its intention to stop supplying the current "Aqua Fiji" label in foreign markets but it intends to continue using its square looking bottle and blue cap and that its new branding has "Aqua" but the word Fiji is no longer used now.

Respondent asserts that it also took legal action against Complainant in Fiji.  It states that the case is before an Australian Judge and the next call is on the 17th of February 2004. It says it seeks a declaration as to use of the word "Fiji" in its branding. This is not disputed by Complainant and seems to be, with respect, a matter of some relevance.

C. Additional Submissions

Complainant’s Additional Submissions are largely repetitive of Complainant and no further comment is needed here.

Mohammed Altaaf states on behalf of Respondent in its Response to Complainant’s Additional Submissions that it wants to make it clear that its is not dropping the Domain Name <aquafiji.com>, just taking the word "FIJI" out of its brand name and its new packaging and branding will still offer Natural Mineral Water from the FIJI ISLANDS. He also indicates that he invites Complainant to make a reasonable offer for the Domain Name so it can be considered.

FINDINGS

Pursuant to paragraph 4(a) of the Policy it is found that:

(1) the Domain Name is confusingly similar to the trademarks FIJI and FIJI WATER;

(2) Respondent has a right or legitimate interests in respect of the Domain Name; and

(3) the Domain Name is not being used in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “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 Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

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

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

Identical and/or Confusingly Similar

There can be no real dispute that Complainant has made extensive use of its FIJI and FIJI WATER trademarks and that it has registered them in a number of countries.  It is however worth noting that the majority of these registrations are for the logo/label mark, incorporating as part of it, the word FIJI. 

Complainant highlights that Respondent fails to address the fact that Complainant has obtained numerous registrations for the FIJI and FIJI WATER marks worldwide. Complainant also notes that Respondent failed to address Complainant’s contention that the <aquafiji.com> domain name is confusingly similar to Complainant’s registered marks.

This said, there can equally be no dispute that Fiji is a geographical name and the direct description of the country from which the product comes, namely water from and bottled in Fiji.  FIJI WATER is thus a direct and perfectly apt description for “water from Fiji”.

The Panel accepts that a company may make extensive use of a directly descriptive and/or geographical name and acquire some rights in that name.  Nevertheless, it is equally arguable that the more descriptive a term the greater the difficulty in establishing rights and preventing others from using a similar name/mark.  In the present case, notwithstanding the very extensive use of the FIJI/FIJI WATER trademarks in relation to bottled water, the trademarks are nevertheless at the descriptive end of the spectrum.

Respondent urges that Complainant cannot establish rights in the FIJI or FIJI WATER marks because those marks are geographic identifiers, and cannot be trademarked. See Neusiedler Aktiengesellschaft v. Vinayak Kulkarni, D2000-1769 (WIPO Feb. 5, 2001) (“Geographic names can not be monopolized by registering a trademark or company name. The use of geographic terms as such in domain names or otherwise by third parties is generally possible despite a trade-mark registration.”); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[G]eographic terms are rarely, if ever, protected by trademark law because to do so would preclude others from using such words in a descriptive manner. . . .To hold otherwise would preempt the nominative or descriptive use necessary to refer to the location in question").

In response, Complainant alleges that it has established rights in the FIJI and FIJI WATER marks through widespread and distinctive use of the marks in commerce. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that Complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).

The Panel concludes that Complainant has made sufficient use of its trademarks to warrant protection and that “aquafiji” is arguably confusingly similar to at least FIJI WATER, but not by a large margin. Accordingly, the Panel feels that relatively minor variations to the mark/name FIJI/FIJI WATER may well be sufficient to diminish or avoid the likelihood of confusion and that the warning issued by many courts that those who choose eloquently descriptive terms as trademarks have to expect similar use by competitors, has to be borne in mind.

Accordingly, subject to these comments, the first ground is made out.

           

Rights or Legitimate Interests

Respondent contends that it has rights and legitimate interests in the Domain Name because it is making a “bona fide” offering of goods or services that do not infringe on any of Complainant’s rights. See generally Scholastic Inc. v. Master Games Int’l, Inc., D2001-1208 (WIPO Jan. 3, 2002) (finding that Respondent’s use of the disputed domain name for a website regarding chess tournaments, particularly because the domain name appropriately described both the target users of Respondent’s services and the nature of Respondent’s services, was a bona fide use of the domain name); see also Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (finding that where the <groceryoutlet.com> domain name described the content of the associated website, Respondent’s use was a bona fide offering of goods or services).

Complainant points out that Respondent admits in the Response that it no longer intends to use the word FIJI with its product and alleges that this supports a conclusion that Respondent lacks rights or legitimate interests in the <aquafiji.com> domain name. Respondent in turn maintains that, while it no longer intends to use the word FIJI in its brand name, it still intends to use the word FIJI in its geographic sense in its domain name. This, it suggests, is evidence that it indeed has rights or legitimate interests in the disputed domain name.

Respondent has used elements of Complainant’s packaging and labeling in order to imitate Complainant’s highly successful product.  Respondent’s first label had little visual resemblance to Complainant’s product, the main similarity being the prominent use of the word Fiji.  However, Respondent’s modified product labeling had greater similarities.  It also appears that Respondent rather foolishly copied extracts from Complainant’s website. 

Complainant observes, with some justification, that Respondent failed to deal with or refute a number of the allegations in the Complaint.  One allegation, which appears to be well founded, is that Respondent set out to copy Complainant’s product and largely succeeded in doing so until threats of action dissuaded it from continuing.  This would suggest that there is force in Complainant’s assertion that Respondent has no legitimate interest in the Domain Name and has acted improperly and without justification. 

Having said this, a central question remains, whether having no doubt observed that the country of Fiji is the source of pure and highly acclaimed spring water, that Respondent was entitled to enter that market and promote its water as “Fijian water.” To use the language of Scholastic Inc. v. Master Games Int’l, Inc., D2001-1208 (WIPO Jan. 3, 2002) the question is whether the Domain Name “appropriately describes” the goods. It would seem that, prima facie, this amounts to a legitimate use of the term and if it were not for Respondent’s questionable conduct in terms of imitating Complainant’s product it would make the answer more straightforward. 

Before saying more it is necessary to comment on the scope of the UDRP. A panel may find that the subject matter of a dispute revolves around a legitimate trademark dispute between the parties, and is thus outside the scope of the UDRP. See Commercial Publ’g Co. v. EarthComm., Inc. FA 95013 (Nat. Arb. Forum July 20, 2000) (stating that the Policy’s administrative procedure is “intended only for the relatively narrow class of cases of ‘abusive registrations.’” Cases where registered domain names are subject to legitimate disputes are relegated to the courts); see also AutoNation Holding Corp. v. Rabea Alawneh, D2002-0581 (WIPO May 2, 2002) (holding that assertions of trademark infringement "are entirely misplaced and totally inappropriate for resolution through an ICANN proceeding. The scope of an ICANN proceeding is extremely narrow: it only targets abusive cybersquatting, nothing else").

Complainant relies on UDRP decisions such as Geelong Grammer Sch. Ltd. v. Hunter, D2003-0337 (WIPO July 1, 2003) (holding the GEELONG GRAMMER SCHOOL mark protectable and enforceable against the <geelonggrammerschool.com> domain name). Many turn on their facts. Where the present case differs is Respondent is not using, in effect, the identical name. Further, unlike in Geelong, Respondent has provided evidence of the running what seems to be a legitimate business in the same field. It thus arguably has a proper basis to wish to use the Domain Name or one like it to identify and promote its bottled water and/or business.

Bearing these observations in mind, the Panel is of the view that the dispute about the alleged passing off of the product and copying of the website is a matter properly dealt with in the Fijian or other courts.  Respondent makes reference to certain proceedings in the Fijian Court. With respect, that Court seems to be the appropriate forum to resolve such differences.

At the end of the day, Respondent appears to be in the bottled water business and is based in Fiji.  Accordingly, it has a legitimate interest in describing its product and where it is from.  If in so doing, it passes itself off as Complainant, Complainant has rights at law to restrain such conduct.  However, the clear philosophy of the UDRP (as discussed above) has to be applied.  The Panel, while sympathising with Complainant, is of the view that in this particular case a distinction has to be drawn between Respondent’s general conduct and the registration and use of the Domain Name.

Ultimately the Panel concludes that Complainant has not established sufficiently that Respondent lacks a legitimate interest in wishing to use <aquafiji.com> as its domain name.

Registration and Use in Bad Faith

Complainant states that Respondent failed to address or rebut Complainant’s claim that Respondent registered the Domain Name with the intent to create a likelihood of confusion with Complainant’s FIJI and FIJI WATER marks.

Notwithstanding this, Respondent claims that it could not have registered the disputed domain name in bad faith as it contains a geographic term that is not capable of being registered, and argues that its products do not create a likelihood of confusion with Complainant’s products. See Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (holding that, where the domain name is a generic term, it is difficult to conclude that there was a deliberate attempt to confuse on behalf of Respondent).

For the reasons given above, issues of bad faith have to be looked at in conjunction with the other grounds, particularly legitimate interest.  Bad faith also has to be looked at in the context of how descriptive the particular domain name is and the context in which it was both registered and is being used. Given the findings in relation to a bona fide interest in the area of bottled water and its offering of goods in that area, (see generally Sweeps Vacuum & Repair Ctr., Inc. v. Nett Corp., D2001-0031 (WIPO Apr. 13, 2001) (finding bona fide use of a generic domain name, <sweeps.com>, where Respondent used a legitimate locator service (<goto.com>) in connection with the domain name)) the Panelist finds that the Domain Name has, at least on the face of it, been used in good faith. Obviously, such a finding is of a provisional nature, given the procedure, the limited scope under which the enquiry is made and the pending litigation. It is however sufficient to dispose of this ground for present purposes.

Accordingly, Complainant has failed to establish this ground.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Clive Elliott, Panelist
Dated: 20 February 2004

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