Action Concepts, Inc. d/b/a/ Fast Forward v. Rakuten USA

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Action Concepts, Inc. d/b/a Fast Forward v. Rakuten USA

Case No. D2002-0032

1. The Parties

The Complainant is Action Concepts, Inc. d/b/a Fast Forward, of 7503 Flagstone #30, Fort Worth, Texas 76118, United States of America.

Represented by Ken Emanuelson, Gardere Wynne Sewell LLP, 1601 Elm Street, Suite 3000, Dallas, Texas 75201, United States of America.

The Respondent is Rakuten USA, of 505 Montgomery St. 7th Floor, San Francisco, CA 94111, United States of America.

Represented by Mr. Charles Baxter, Director, Rakuten Inc. 2-6-20, Nakameguro, Meguro-ku, Tokyo 153-0061, Japan.

2. The Domain Name and Registrar

The domain name with which this dispute is concerned is: <fastforward.com>.

The Registrar with which the domain name is currently registered is Tucows, Inc. 96 Mowat Avenue, Toronto, ON, M6K 3MI, Canada.

3. Procedural History

3.1 The Complaint was filed on January 16, 2002, electronically and on January 18, 2002, in hard copy to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center").

3.2 On January 24, 2002, the Registrar verified:

(i) that the domain name is registered with it;

(ii) that the current registrant of the domain name is the Respondent;

(iii) that the Policy applies to the registration of the domain name;

(iv) that the domain name is currently in "on hold";

(v) that the language of the registration agreement is English;

(vi) Respondent's contact details of Administrative, Billing and Technical Contact.

(vii) The domain name was created on July 14, 1994.

3.3 On January 29, 2002, all formal requirements for the establishment of the Complaint having been checked by the WIPO Center, the Amended Complaint was found to be in compliance with the applicable ICANN Policy, ICANN Rules ("the Rules") for Uniform Domain Name Dispute Resolution Policy ("the Policy"), and WIPO’s Supplemental Rules. The Panel has checked the file and confirms the WIPO Center's finding of proper compliance with the Rules and establishment of the Complaint.

3.4 On January 29, 2002, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding as follows:

(i) by courier and by e-mail to Respondent, the Administrative Contact and the Technical Contact;

(ii) by e-mail to the postmaster at the domain name;

3.5 The e-mail and courier deliveries appear to have been effected. The Panel is satisfied the responsibility on the Center imposed by Rule 2(a) of the Rules has been met and that Respondent received due notice of the Complaint.

3.6 The Administrative Proceeding commenced on January 29, 2002, and the Response was due on February 18, 2002.

3.7 A Response was filed on February 18, 2002.

3.8 On February 27, 2002, Complainant submitted a Motion for Leave to File a Reply to the Response on the basis that new and relevant facts, unavailable to Complainant at the time of filing the Complaint have subsequently developed and come to light. These facts relate to the ostensible authority of Jon Levine in relation to the matters referred to in paragraphs 6.2 and 6.5 below. Complainants Motion correctly acknowledges that Leave to File a Reply will be granted only in exceptional circumstances and in the discretion of the Panel. The Panel accepts Complainant's submission that such exceptional circumstances exist in this case, but in the Panel's opinion, the further material sought to be adduced cannot alter the ultimate outcome of the decision. The Panel therefore in the exercise of its discretion declines to admit Complainant's proposed Reply.

3.9 The sole panelist, Desmond J. Ryan, having filed the Statement of Acceptance and Declaration of Impartiality and Independence, the Panel was appointed on February 27, 2002.

4. Factual Background

4.1 The Complainant is the owner of US trademark registration No. 2,508,289 registered November 20, 2001, on an application dated September 13, 1996, and claiming first use in commerce in 1984. The registration is in respect of retail stores services in relation to clothing, jewellery, footwear, sunglasses, skateboards and in-line skates (Complaint Exhibit 3).

4.2 Complainant asserts, but does not quantify, extensive use and advertising of its "Fast Forward" trademark, and claims that it is now recognised nationwide as representing products and services provided exclusively by Complainant. Complaint Exhibit 4, is said to be copies of national advertising for Fast Forward. That exhibit comprises a photograph of a shopfront bearing the words "Fast Forward".

4.3 The domain name is currently "parked" with easyDNS, a domain name service provider which is also the Technical Contact for the domain name.

4.4 According to the Response:

"Rakuten USA is the United States operating subsidiary of Rakuten, K.K., a Japanese corporation based in Tokyo and listed on the Tokyo JASDAQ stock exchange. Rakuten K.K. operates Japan's largest Internet Shopping Mall and is one of Japan's largest and most successful e-commerce companies. Rakuten USA conducts various business activities related to the development, management and maintenance of the core Japanese e-commerce business, and was set up additionally to launch Rakuten K.K.'s business in the United States."

4.5 Rakuten K.K.'s on-line shopping mall is accessible at its Internet site "www.rakuten.co.jp", and appears to offer a wide range of goods including electronic equipment and computer hardware.

4.6 According to Respondent the domain name was originally held by Fast Forward Inc., an on-line media and e-commerce company based in Georgia, USA, in which Rakuten K.K. had invested. The domain name was acquired by Rakuten USA in the latter half of 2001, as part of a bankruptcy settlement with Fast Forward Inc.'

5. Applicable Dispute

5.1 This dispute is one to which the Policy applies. By registering the domain name, Respondent accepts the dispute resolution policy adopted by the Registrar. The Registrar's current policy set out in its domain name registration agreement is the Policy.

5.2 To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:

(i) the domain name is 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 the domain name; and

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

6 The Parties' Contentions

A. Complainant

6.1 Complainant contends:

(a) Respondent knew, or ought to have known, on acquisition

of the domain name that Respondent's use of the domain name would

likely cause confusion and deception;

(b) Respondent chose the domain name for purposes of selling

the domain name at a profit to Complainant;

(c) The domain name was obtained by Respondent in order to prevent

Complainant from reflecting its trademark in a corresponding domain

name;

(d) Respondent is not commonly known by, or do business as the

domain name;

(e) Respondent's unauthorised and confusing use of the domain

name is likely to cause confusion and mislead as to the source and

origin of Complainant's services and to a belief that Complainant

has no web-site.

6.2 Complainant contends that in response to a phone call from

Mr. Brandon Batton, owner and president of Complainant,

Respondent's agent, Jon Levine, said that Respondent would sell

the domain name for $100,000 and informed him that "Respondent

routinely held and transferred domain names in exchange for money".

In support of its contention, Complainant exhibits an affidavit by

Mr. Batton (Complaint Exhibit 7) to which is attached a transcript

of a voicemail received from Mr. Levine (Complaint Exhibit 6).

B. Respondent

6.3 Respondent contends that:

(a) it acquired the domain name as part of the bankruptcy settlement

specifically to launch its US business selling Japanese products

into the USA, and that it intends to launch a US on-line business

link to its Japanese parent site at "www.rakuten.co.jp";

(b) the term "Fast Forward" is generic and widely used in relation

to electronic goods and is included in "20 listed trade marks in

the USA",

(c) its business will be no way related to, or resemble Complainant's

business. Respondent contends that it will primarily target American

users of Japanese descent, and will be linked to its Japanese parent

where familiarity with the Japanese language will be required. This

contention seems to be at odds with Respondent's further assertion

that it proposes to operate under the name Fast Forward Inc. "as

the Rakuten name, quite well recognised in Japan, was deemed to

be too difficult to pronounce and remember in the USA".

6.4 With respect to the offer for sale of the domain name by Jon

Levine and the alleged statement that Respondent "routinely held

and transferred domain names in exchange for money", Respondent

asserts that Mr. Levine is a network engineer based in "our Tokyo

Office" who was responsible for the transfer of the domain name

to Respondent, but is not an authorised representative of Rakuten

USA.

6.5 Respondent asserts that Complainant's reference to the statement

by Jon Levine and his offer for sale of the domain name are "disingenuous

attempts to link the unsanctioned actions of Mr. Levine and possibly

his personal activities and proclivities with those of the actual

Respondent in this Complaint which is not Mr. Levine… but is Rakuten

USA". Respondent asserts that it, Rakuten USA, has never transferred

or sold a domain name, nor does it intend to enter into the business

of selling domain names for a profit.

6.6 Respondent asserts a belief that the Complaint "is a veiled

form of harassment and an attempt to acquire our property without

fully understanding or researching the background of the owner and

the circumstances of ownership".

7. Discussion and Findings

Identical or Confusingly Similar Trademark

7.1 Complainant has established that it has rights in the trademark

"Fast Forward" in the USA. The Domain name, save for joining together

of the words and the addition of the domain designation ".com" is identical

with the trademark.

7.2 The Panel therefore finds that the domain name is identical or

confusingly similar to a trademark in which Complainant has rights and

paragraph 4(a)(i) of the Policy is satisfied.

Rights and Legitimate Interests

7.3 In these proceedings the onus is on Complainant to make out each

of the grounds specified in paragraph 4(a) of the Policy. To make a showing

that Respondent has no legitimate right or interest in the domain name,

Complainant must at least set up a prime facie case and cast upon

Respondent an onus of rebuttal.

7.4 The Complaint does not specifically address the question of whether

or not Respondent has a legitimate right or interest in the domain name.

However, an assertion to that effect is implicit in Complainant's contention

that Respondent is not commonly known by the domain name, and other assertions

in the Complainant going to the question of registration and use in bad

faith.

7.5 Respondent likewise fails to specifically address the question

of legitimate right or interest. Respondent had not been known by the

domain name, was clearly not making a non-commercial fair use of the domain

name and did not demonstrate any use or preparation for use of the domain

name prior to notification to it of the dispute. Respondent's assertion

that it intends to use the domain name to link to its Japanese parent

site does not state whether that intention, or any preparations for the

realisation of the intention, occurred prior to notification of the dispute.

However, the domain name has been registered since 1994, and on the basis

of Respondent's assertion that it had a financial interest in the former

registrant, Fast Forward Inc, and had acquired the domain name from it

(or from its trustees in bankruptcy) as part of a bankruptcy settlement,

Respondent would appear to have a claim to legitimate right or interest

in the domain name.

7.6 Whilst Respondent has not demonstrated any of the specific circumstances

set forth in paragraph 4(c) of the Policy, it is clear and well recognised

that those circumstances are merely enumerated and are not limiting and

Respondent's assertions as to the history of its acquisition of the domain

name and its intentions of linking it to its parent company's Japanese

site are, in the opinion of the Panel, sufficient to displace any prima

facie showing of lack of legitimate right or interest which may be

implied in the Complaint.

7.7 The Panel therefore finds that Complainant has failed to discharge

the onus upon it of showing that Respondent has no legitimate right or

interest in the domain name.

Bad Faith Use and Registration

7.8 Complainant having failed to show absence of Respondent's legitimate

right or interest it is unnecessary to consider whether the domain name

was registered and is being used in bad faith. The Panel notes however,

that the evidence and assertions contained in the Complaint are not sufficient

to establish bad faith use and registration. Whilst the Panel is unimpressed

by, and does not accept, Complainant's attempt to dissociate itself from

its parent company employee, Jon Levine, and to distinguish the acts of

Respondent from those of its parent, the mere fact that there has been

an offer to sell the domain name in response to an enquiry from Complainant,

is not in itself sufficient to establish bad faith.

7.9 The Panel would therefore find, were it necessary to do so, that

Complainant has failed to show that Respondent has registered and is using

the domain name in bad faith. Whilst Respondent has failed in this respect

also, there is nothing in the record to support Respondent's allegations

of Complainant impropriety referred to in paragraphs 6.5 and 6.6 above.

8. Decision

8.1 The Panel decides and orders that:

(i) The domain name is identical or confusingly similar to a

trademark in which Complainant has rights;

(ii) Complainant has failed to establish that Respondent has

no rights or legitimate interests in respect of the domain name;

(iii) Complainant has failed to establish that the domain name

has been registered and is being used in bad faith;

(iv) The Complaint is dismissed.

D.J. Ryan

Sole Panelist

Dated: March 12, 2002