Bag Boy LLC v. Chad Wright and
WebQuest.com, Inc.
Claim Number: FA0508000530334
PARTIES
Complainant
is Bag Boy LLC (“Complainant”),
represented by Marshall J. Nelson, of Davis Wright Tremaine LLP,
1501 Fourth Avenue, Suite 2600, Seattle, WA 98101. Respondent is Chad Wright
and WebQuest.com, Inc. (“Respondent”), represented by David M. Dingeman, 550
Trees Drive, Cedar Hill, TX 75104.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <bagboy.com>,
registered with Moniker Online Services,
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.
Richard
Hill as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
2, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 4, 2005.
On
August 3, 2005, Moniker Online Services, Inc. confirmed by e-mail to the
National Arbitration Forum that the <bagboy.com>
domain name is registered with Moniker Online Services, Inc. and that the
Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is
bound by the Moniker Online Services, Inc. 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
August 5, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 25,
2005 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@bagboy.com by e-mail.
A
timely Response was received and determined to be complete on August 25, 2005.
An
Additional Submission from Complainant was received on August 30, 2005. The Additional Submission complied with
Supplemental Rule 7.
On September 1, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Richard Hill as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
contends that it holds exclusive rights to the U.S. registered trademark, BAG
BOY, for collapsible carts for carrying golf bags on golf courses, first
registered in 1947, whereas the contested domain name was registered in
2002. Complainant also contends that it
has common law rights in the BAG BOY mark.
Additionally, it alleges that “through long, continuous and wide-spread
use, the trademark has become famous by any measure.”
Complainant
alleges that the contested domain name, <bagboy.com>, is
confusingly similar to its BAG BOY mark and that “consumers encountering
<bagboy.com> in the course of searching for BAG BOY golf equipment will
naturally assume that the website associated with this domain name is operated
by or affiliated with Complainant.”
According
to Complainant, Respondent does not have rights or legitimate interest in the
contested domain name because (1) Respondent has never made any use of the
contested domain name prior to receiving a letter from Complainant and has
subsequently used the contested domain name to create a site featuring advertisements
and links to other sites, including those of retailers selling Complainant’s
products; (2) Respondent is not known as “bagboy;” and (3) neither non-use of a
domain name, nor use of the contested domain name for “the posting of
advertising links for others constitutes a legitimate, noncommercial fair use.”
Complainant
alleges that the contested domain name was registered and is being used in bad
faith because Respondent must have known of Complainant’s famous BAG BOY mark
when it registered the contested domain name.
“Even if Respondent did not have actual knowledge of Complainant’s mark
(which is unlikely), it has constructive knowledge of the BAG BOY mark by
virtue of Complainant’s trademark registration. . . . The Registration of the <bagboy.com> domain name with
actual or constructive knowledge of Complainant’s rights in the BAG BOY
trademark demonstrates bad faith registration and use.” In support, Complainant cites Paisley
Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) and Wells Fargo &
Co. v. Cayman Trademark Trust, FA 396377 (Nat. Arb. Forum Feb. 14, 2005).
According
to Complainant, Respondent’s failure to make bona fide use of the
contested domain name is further evidence of its bad faith, and the posting of
advertising links on the website is also evidence of Respondent’s bad faith use
of the contested domain name. “By
participating in Google’s ‘AdSense’ program or a similar service, Respondent
received money each time someone clicks on one of the posted links. … Using
Complainant’s well-known, incontestable trademark for Respondent’s commercial
gain constitutes bad faith.”
B.
Respondent
Respondent
alleges that it is in the business of providing search engines pertinent to
generic domain names such as <automakers.com>,
<automotivetires.com>, <dentalproblems.com>,
<weddingplaces.com>, <cheapweddings.com> and <bagboy.com> in
addition to generic three-letter domain names.
Respondent
further contends that it has legitimate common law service mark rights in
BAGBOY.COM in international class 042 for “providing specific information as
requested by customers via the Internet for customized searching in the field
of personal finance, financial planning mortgages, tax preparation, student
loans, real estate investing, stocks and bankruptcy” since as early as July 24,
2002.
Respondent
states that it was not aware of Complainant’s registered mark until receiving
an inquiry letter regarding the purchase of the contested domain name from
Complainant in March 2004, and that it did not create or control the content of
the contested domain name, as the content was “created by Overture based on
their premium, highest bid search terms … sponsors bid for searches ranging
from $0.23 to $0.10 and pay this amount directly to Overture.”
According
to Respondent, Complainant does not have exclusive rights to the term BAG BOY,
and it registered the contested domain name “simply because it was an available
generic domain name that it believed no party had exclusive rights to nor a US
trademark registration.”
Respondent
alleges that its legitimate interests in a domain name composed of common
words, such as the contested domain name, is established, per se, at the
time of registration. In support, it
cites RMT, Inc. v. Domain Fin. Ltd., FA 313843 (Nat. Arb. Forum Nov. 3,
2004), Tenenhaus v. Telepathy, Inc., FA 94355 (Nat. Arb. Forum May 17, 2000) and Trans Cont’l
Records, Inc. v. Compana, LLC, D2002-0105 (WIPO Apr. 30, 2002).
Respondent
distinguishes the case law cited by Complainant from the present case on the
grounds that Complainant’s BAG BOY mark “is not famous nor exclusive and is
descriptive at best;” and on the grounds that “Respondent does not list any of
Complainant’s competitors nor competitor products anywhere on its website;” and
on the grounds that in the cited cases there was no Response, whereas there is
a Response in the present case.
Respondent
denies that it acted in bad faith, stating that:
1. “Respondent provides a search engine for
financial related businesses;”
2. Respondent “did not and does not attempt
to profit from the ‘fame’ of Complainant’s BagBoy golf bags;”
3. Respondent “never diverted customers from
Complainant;”
4. “[T]here are no circumstances indicating
that Respondent registered or acquired the domain name primarily for the
purpose of selling, renting, or otherwise transferring the domain name
registration to Complainant;”
5. Respondent “did not register the
<bagboy.com> in order to prevent the owner of the trademark from
reflecting the name in a corresponding domain name. On the contrary, Complainant already has a registered domain name
and website;”
6. Respondent “has not registered the domain
name primarily for the purpose of disrupting the business of a competitor;
Respondent is not in the business of golf bags;” and
7. Respondent “as shown by the
<bagboy.com> is not attempting to create a likelihood of confusion with
Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of your web site or location of a product or service on your web site or location. Respondent’s website is clearly a search
engine. Complainant’s website clearly
sells golf bags.”
C.
Additional Submissions
According
to Complainant, a simple comparison of the contested domain name with the other
domain names mentioned by Respondent highlights the fact that <bagboy.com>
is not a generic domain name.
Complainant
additionally alleges that it “strains credulity to claim that Respondent is in
the search engine business using a term like <bagboy.com>” because (1)
“in contrast to a legitimate search engine site like Google or Yahoo!,
Respondent’s site does not offer the capability of searching the web but merely
provides links through Overture, which links Respondent admits are based on
whether and how much advertisers have to bid to have links to their sited
provided;” and (2) “customers arriving at <bagboy.com> will wrongly
assume that they have found a web site offered by, or at least endorsed by,
Complainant. This misleading connection
is further emphasized because ‘Bagboy’ is listed as the first category of
subjects for which consumers may obtain Overture-provided links, and …
Complainant’s trademark is the only non-generic term in this list of
subjects.”
Complainant
further states that “the implausibility of Respondent’s claim that has ‘legitimate
interests’ in using <bagboy.com> to identify ‘customized searching in the
field of personal finance, …’ is evident from even a cursory glance at what has
been posted (by Overture) on the <bagboy.com> site.”
According
to Complainant, “using Complainant’s well-known, incontestable mark for
Respondent’s commercial gain constitutes bad faith” and “the record shows the
registrants Chad Wright and WebQuest.com, Inc. are in the business of buying,
selling, and exploiting domain names, including, in this case, a domain name
consisting of Complainant’s registered and well-known trademark.”
FINDINGS
Complainant has rights in the registered
BAG BOY trademark since at least 1947.
Respondent registered the contested
domain name in 2002 and did not use it until it received an inquiry letter
regarding the purchase of the contested domain name from Complainant in March
2004.
Respondent subsequently used the
contested domain name to create a site hosting advertisements and links to
other sites, including those of retailers selling Complainant’s products. The content for the contested domain name
was created by Overture based on their premium, highest bid search terms and
Overture derives revenue from this activity.
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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
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.
The contested domain name is clearly
identical to Respondent’s BAG BOY mark.
See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA
204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the
addition of a generic top-level domain is irrelevant when considering whether a
domain name is identical or confusingly similar under the Policy.”); see
also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan.
7, 2001) (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”).
Complainant bases much of its argument on the allegation
that, because the BAG BOY mark is famous, any use of that mark by Respondent
cannot be legitimate, and, furthermore, the specific use by Respondent is not
legitimate because it is in bad faith.
The Panel will address the bad faith
issue in the next section. Regarding
the allegation that the BAG BOY mark is famous, Complainant has not provided
any evidence to that effect and, thus, it has failed to satisfy its burden of
proving the allegation. Thus, the
present case is distinguished from Paisley Park Enters. v. Lawson, FA 384834
(Nat. Arb. Forum Feb. 1, 2005) and Wells Fargo & Co. v. Cayman Trademark
Trust, FA 396377 (Nat. Arb. Forum Feb. 14, 2005) because, in those cases,
the Panel established that the mark was famous. (Furthermore, there was no Response in Wells Fargo & Co.
v. Cayman Trademark Trust, FA 396377 (Nat. Arb. Forum Feb. 14, 2005), which
further distinguishes it from the present case.)
But, if the mark is not famous, then
surely its use by others may be legitimate, provided of course that such use
does not involve the same type of products or services, and that such use is in
good faith. See, e.g., Broadcom Corp. v. Becker, FA 98819 (Nat.
Arb. Forum Oct. 22, 2001).
Furthermore, in the present case, as
Respondent correctly notes, Complainant’s mark is made up of generic
words. We cite, in this context, the
decision in Car Toys, Inc. v. Informa Unlimited, Inc., FA 93682 (Nat.
Arb. Forum Mar. 20, 2000), in which the Panel stated:
Car
Toys, Inc. has not proven that Informa has no legitimate interests in respect
of the domain name cartoys.net. The CAR TOYS trademark is not fanciful
or arbitrary, and Car Toys has submitted no evidence to establish either fame
or strong secondary meaning in its mark such that consumers are likely to
associate cartoys.net with CAR TOYS. Informa has demonstrated that the
name is in use elsewhere. The arbitrator finds, therefore, that Informa has
rebutted Car Toys’ arguments and has shown that it is in the business of
selling descriptive domain names such as cartoys.net. As a result, Informa
does have a legitimate interest in the domain name. That Informa has offered to
sell this domain name to Complainant after inquiry by Complainant does not make
its interest illegitimate.
Id.
Similar conclusions are reached in the Forum’s case CRS
Tech. Corp. v. Condenet, Inc., FA 93547
(Nat. Arb. Forum Mar. 28, 2000).
Therefore, the present case rests on the
question of whether or not Respondent registered and is using the contested
domain name in bad faith.
The Panel agrees with Complainant’s
contention that Respondent’s claim that it is using the contested domain name
to provide customized searching in the field of personal finance is not
plausible.
The Panel also agrees with Complainant’s allegation that
Respondent is using the contested domain name for commercial gain. While it may be the case, as Complainant
alleges, that Respondent “is in the business of buying, selling, and exploiting
domain names,” Complainant has not provided sufficient evidence to prove that
allegation, and, in any case, the question is moot, as explained below.
Complainant seems to believe that only
the owner of a registered trademark can use that mark within a domain
name. This is of course not the
case. Ownership of a trademark does not
confer the exclusive right to all domain names containing the mark. And using a domain name for commercial gain
is not, per se, a bad faith activity prohibited under the Policy. As the Panel stated in Manchester Airport PLC v. Club Club Ltd., D2000-0638 (WIPO Aug. 21, 2000):
[S]elling a domain name is not per se prohibited by the ICANN Policy
(nor is it illegal or even, in a capitalist system, ethically
reprehensible). Selling of domain names
is prohibited by the ICANN Policy only if the other elements of the ICANN Policy are also violated, namely
trademark infringement and lack of legitimate interest.
Id.
Complainant seems to believe that the
mere fact that its mark is registered implies bad faith on the part of
Respondent when Respondent registered the contested domain name. But, under the Policy, a domain name
registrant has no obligation to perform a trademark search. Indeed, it is clear from the travaux preparatoires of the Policy that
mere failure to conduct a trademark search does not constitute bad faith
behavior. The closest equivalent to a
legislative history for the Policy can be found in the April 30, 1999 Final
Report of the WIPO Internet Domain Name Process, which formed the basis for the
ICANN Policy (available online at: http://wipo2.wipo.int/process1/report/doc/report.doc). This report states at paragraph 103:
[T]he performance of a prior search for
potentially conflicting trademarks should not be a condition for obtaining a
domain name registration. … Particularly in an international context, the
requirement of searches prior to the registration of a domain name was
generally considered to be unrealistic and conducive to unnecessary delays in
the registration process.
And the report states at paragraph 105:
It is not recommended that domain name
registrations be made conditional upon a prior search of potentially
conflicting trademarks but it is recommended that the domain name application
contain appropriate language encouraging the applicant to undertake voluntarily
such a search.
In accordance with 4(a) of the Policy,
the Complainant must prove that Respondent registered and is
using the disputed domain name in bad faith.
Complainant has not satisfied its burden of proof in that respect.
On the contrary, Complainant alleges that
Respondent is using the contested domain name for commercial purposes, which
is, in a capitalist system, clearly a bona fide use, unless, of course,
such use violates the law, for example trademark law.
But Complainant has not established
either that its mark is famous or that Respondent’s commercial activities
infringe its mark or are otherwise illegal or reprehensible. Contrary to Complainant’s allegation, the
evidence provided by both parties indicates that a user visiting the <bagboy.com>
web site would not assume that the web site is associated with Complainant and
there is nothing to indicate that users would somehow be confused or misled.
The evidence presented leads this Panel
to conclude that Respondent is currently using the contested domain name to
carry out legitimate commercial activities, namely providing links to other web
sites.
The Panel holds that Complainant has
failed to prove that Respondent is using the contested domain name in bad
faith.
DECISION
For
the reasons given above, the Panel concludes that relief shall be DENIED.
Richard Hill, Panelist
Dated: September 15, 2005
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