1. The Parties

Complainant is Amsec Enterprises, L.C., a Virginia Corporation located in Winchester, Virginia, USA.

Respondent is Sharon McCall, an individual located in Tarpon Springs, Florida, USA.

2. The Domain Name and Registrar

The domain name at issue is <backgroundfacts.com> (the “Domain Name”).

The registrar is Network Solutions, Inc., in Herndon, Virginia, USA.

3. Procedural History

This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 (“the Policy”) and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 (“the Rules”).

Complainant submitted its Complaint in this proceeding on January 16, 2001. Respondent submitted a Response on February 15, 2001.

WIPO Arbitration and Mediation Center appointed Mark V.B. Partridge as panelist on March 20, 2001.

4. Factual Background

Complainant is a consultant regarding employee hiring decisions and a provider of pre-employment screening services. The company, through its predecessor in interest, has provided those services under the mark AMERICAN BACKGROUND since 1992.

The mark is the subject of pending applications for federal trademark registration filed on March 16, 1999. Complainant uses those marks on a web site located at <americanbackground.com>. Since 1998, Complainant's sales in connection with the mark have exceeded $7 million dollars.

Respondent and her husband have been in the employee benefits administration field since 1975. Respondent registered the Domain Name on June 22, 1999, and with her husband started a business named American Background Searches, Inc. in
January 2000. Respondent has approximately 500 clients and the web site receives approximately 200 visitors a day. Respondent states that she registered the Domain Name because it is a common term with important meaning in the pre-employment background screening services business industry.

5. Parties’ Contentions

Complainant contends that the Respondent's use of the Domain Name in connection with the company name American Background Searches, Inc. creates confusion with Complainant and its AMERICAN BACKGROUND mark. Complainant contends that the common component "background" in the Domain Name is confusingly similar to its mark. Complainant contends that Respondent's conduct is not legitimate and constitutes bad faith as a deliberate attempt to attract Internet users looking for Complainant's identical services.

Respondent denies Complainant's claims and asserts that Complainant lacks enforceable rights in AMERICAN BACKGROUND, that the Domain Name and trademark are not confusingly similar, that she makes bona fide use of the Domain Name and that she registered and used the domain name in good faith.

Respondent further contends that Complainant has willfully misrepresented its rights to the Panel and is seeking to engage in reverse domain name hijacking.

6. Discussion

A. Application of the Policy

To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the complainant to prove each of the following:

(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in the domain name; and

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

Based on the record presented, it appears that Complainant's principal objection involves Respondent's use of the trade name American Background Services, Inc., not the Domain Name <backgroundfacts.com>. The scope of this proceeding is limited to the Domain Name, and any claim against the trade name is not properly presented here. For the reasons discussed below, the claim against the Domain Name is denied.

The mark AMERICAN BACKGROUND is obviously descriptive of Complainant's services. Therefore, to establish common law rights, Complainant must prove secondary meaning. Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. Here, the only evidence presented is the bald claim that the mark has been used since 1992, and that Complainant’s gross sales have exceeded $7 million. The only evidence of the nature and manner of use is a web page dated January 11, 2001. Given the extremely weak character of Complainant's mark, I find that the evidence of secondary meaning is inadequate to prove any enforceable rights in the mark.

Similarly, Complainant's pending applications do not establish any enforceable rights until registration issues. Respondent contends that Complainant has misrepresented the nature of those applications by failing to disclose that both applications have been refused on various grounds, including a finding by the Examiner that the marks are merely descriptive. The status of these applications is a material fact to this proceeding, and Complainant's reliance on these applications to claim rights without disclosing the adverse actions issued by the Examiner is troubling, to say the least, and casts doubt on the other contentions made by Complainant.

Based on the record presented, I find that Complainant has failed to prove enforceable rights in the mark AMERICAN BACKGROUND.

Even if Complainant had established such rights, however, Complainant still has failed to prove that the Domain Name is confusingly similar to its mark. As noted above, AMERICAN BACKGROUND is highly descriptive of Complainant's background services. As such, it is deemed a weak mark and absent proof of fame or widespread recognition, it would be entitled to narrow protection at best. Generally, the scope of rights afforded to weak descriptive marks is limited to protection against identical marks. Here, the Domain Name and alleged trademark are not identical. The only similarity is the word "background", which appears to be generic of the parties' services of providing background searches.

For these reasons, I find that Complainant has failed to satisfy the requirements of Paragraph 4(a)(i) of the Policy. Because this is an essential element of the claim, it is not necessary to resolve the remaining factual disputes on the other elements. See Pet Warehouse v. Pets.com, Inc., Case No. D2000-0105 (WIPO April 13, 2000)(panel need not consider elements of legitimate interests or bad faith if Complainant fails to establish enforceable rights in mark).

B. Reverse Domain Name Hijacking

Paragraph 15(e) of the Rules states, in relevant part:

"If the Panel concludes that the dispute is not within the scope of Paragraph 4(a) of the Policy, it shall so state. If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."

Respondent asks for a finding of bad faith under this provision. In support of that request, Respondent cites the Complainant's failure to fully disclose the status of its applications and the obvious dissimilarity of the Domain Name to the alleged mark.

On the record before me, I agree that Complainant withheld material facts affecting the validity of its rights and question whether Complainant actually believed it had a valid claim against the Domain Name. Nevertheless, I recognize that the Trademark Office actions are not conclusive evidence that Complainant had no rights in its alleged mark. Although there has been a failure of proof, Complainant appears to have a colorable claim of rights in the mark AMERICAN BACKGROUND based on use. Therefore, I am unable to conclude with certainty that its objection to Respondent's Domain Name was made in bad faith.

7. Conclusion

I conclude that Complainant has failed to prove that the Domain Name is identical or confusingly similar to a mark in which it has prior rights. Therefore, its request for transfer of the <backgroundfacts.com> Domain Name is denied.

Mark V B Partridge
Sole Panelist

Dated: April 3, 2001


Hon. Sir Ian Barker QC
Sole Panelist

Dated: August 3, 2001