PARTIES

The Complainant is Business Architecture Group, Inc. d/b/a BAG, Flower Mound, TX, USA (“Complainant”). The Respondent is Reflex Publishing, Brandon, FL, USA (“Respondent”) represented by Ari Goldberger, of ESQwire.com Law Firm.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is "bag.com," registered with TUCOWS, Inc.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as Panelists in this proceeding.

Bruce E. Meyerson, Carolyn Marks Johnson and Diane Cabell as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 10, 2001; the Forum received a hard copy of the Complaint on April 16, 2001.

On April 11, 2001, TUCOWS, Inc. confirmed by e-mail to the Forum that the domain name "bag.com" is registered with TUCOWS, Inc. and that the Respondent is the current registrant of the name. TUCOWS, Inc. has verified that Respondent is bound by the TUCOWS, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy.

On April 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 8, 2001 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@bag.com by e-mail.

A timely response was received and determined to be complete on May 8, 2001.

On May 22, 2001, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Bruce E. Meyerson, Carolyn Marks Johnson and Diane Cabell as Panelists.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

Complainant

Complainant was founded in 1996 as a management consulting organization serving clients in the financial services and telecommunications industries. Complainant has registered several domain names such as BAG-works.com, BAGonline.com and BAGinc.net. It complains, however, that its market penetration has been restricted because it has not been able to use the domain name "BAG.com" which has been registered by Respondent. According to Complainant, Respondent, an Internet publishing company, uses "BAG.com" as a link to a "goto" website and itself makes no offer of goods and services related to bags.

Respondent

Respondent registered the disputed domain name in July 1997 and subsequently began to use "BAG.com" in association with the Internet company Goto.com. Users who type "BAG.com" are taken to a Goto search results page that has links to web sites related to bags. Advertisers pay Goto a fee for the opportunity to have their sites appear on the search results page, and Respondent is paid a share of the advertising revenues earned by Goto for users who click links after arriving at the search results page by having typed "BAG.com" in their browser. Respondent contends that because it began using the domain name four years before Complaint filed a trademark application, the domain name is not identical or confusingly similar to a trademark of Complainant. Respondent contends that its use of the domain name is legitimate and that Complainant has failed to show that Respondent registered the mark in bad faith. A claim of reverse domain name hijacking is also made.


FINDINGS

On February 13, 2001, Complaint filed an application with the United States Patent and Trademark Organization (the "PTO") for its mark "BAG Business Architecture Group, Inc." Respondent registered the disputed domain name in 1997. Complainant has not established a necessary trademark right in the domain name because the domain name was registered four years before the Complainant applied for its trademark. Complainant has not demonstrated a secondary meaning to the word "BAG" such that consumers would be likely to associate the domain name only with Complainant.

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 Rules requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

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

the 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

Because we find that Complainant has failed to establish that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, it is unnecessary for the Panel to consider where the Complainant has proved a violation of Rules 4(a)(2) and (3).

A complaining party can establish that it has rights in a trademark or service mark by establishing that an entity such as the PTO has approved its mark, or, alternatively, that it has established rights as a common law mark. Ordinarily, to satisfy the requirements of Rule 4(a)(1), the complaining party must have trademark rights before the domain name in dispute was registered. Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (under ICANN rules, a trademark must predate the domain name). On the record before us, the Complainant has demonstrated neither registered nor common law rights that predate the Respondent’s domain registration.

On February 13, 2001, Complainant filed an application with the PTO for its mark "BAG Business Architecture Group, Inc." The PTO has not yet approved this application, therefore no registered trademark right has been established via registration. See Warnervision Entertainment Inc. v. Empire of Carolina Inc., 919 F. Supp. 717 (S.D.N.Y. 1996) (trademark rights do not accrue to a pending application).

Moreover, Complainant has not adequately demonstrated common law mark rights that predate Respondent’s registration of the domain in 1997. To establish common law rights, the Complainant must show that the mark has acquired distinctiveness when associated with the Complainant’s goods or services. No evidence was supplied to indicate that Complainant had established such distinctiveness prior to Respondent’s domain registration. Complainant simply alleged that it has been “known by” the acronym "B.A.G." since 1996. This allegation merely supports a finding that the term was used as a tradename, but not that is was used as a trademark. Marbil Co. Inc. v. Sangjun Choi, D2000-1275 (WIPO Nov. 23, 2000); Kendall v. Mayer Re skipkendall.com, D2000-0868 (WIPO Oct. 26, 2000).

Respondent alleges that this Complaint should be categorized as reverse domain name hijacking under Rule 15(e). However, where the Complaint appears to have been drafted pro se, and without a clear understanding of trademark principles on its face, we find insufficient evidence to conclude that the Complainant brought this action in bad faith.

DECISION

The request to transfer the domain name to the Complainant is denied.

Panel Chair

Carolyn Marks Johnson, Diane Cabell

Dated: June 5, 2001


Hon. Sir Ian Barker QC
Sole Panelist

Dated: August 3, 2001