PGI, Inc. v. Publishing Group International, Inc. d/b/a PGI Travel
Claim Number: FA0207000116731
Complainant is PGI, Inc., Arlington, VA (“Complainant”) represented by Ellen Mosher, of PGI, Inc. Respondent is Publishing Group International, Orlando, FL (“Respondent”) represented by Kerry Bludworth.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pgitravel.com>, registered with 1stDomain.net.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 18, 2002; the Forum received a hard copy of the Complaint on July 18, 2002.
On July 23, 2002, 1stDomain.net confirmed by e-mail to the Forum that the domain name <pgitravel.com> is registered with 1stDomain.net and that the Respondent is the current registrant of the name. 1stDomain.net has verified that Respondent is bound by the 1stDomain.net 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 July 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 13, 2002 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 email@example.com by e-mail.
A late Response was received and determined to be complete on August 19, 2002.
See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the Response is solely in the discretion of the Panelist).
On September 5, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant owns three service marks registered with the United States Patent and Trademark Office for its PGI mark (Reg. Nos. 1,974,737; 2,369,953; 2,260,237); one Canadian service mark registration (Reg. No. TMA 555,157); and one service mark registration in the European Union (Reg. No. 1,057,876). All of the PGI marks are registered in relation to travel services and airport visitor greeting services. Complainant provides housing, registration and travel packages, including hotel accommodations and other travel-related services, for exhibitors, attendees and vendors at over 19 national and international trade shows, conventions and hundreds of corporate events.
Complainant asserts that Respondent’s <pgitravel.com> domain name is confusingly similar to Complainant’s PGI mark because it incorporates Complainant’s entire PGI mark and merely adds the descriptive term “travel” to the end of it. Complainant notes that the term “travel” describes Complainant’s business and therefore further adds to the confusion.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name because it is attempting to benefit from the confusion created by the disputed domain name. Complainant asserts that Internet users are likely to believe that any domain name selling travel services and using the mark PGI will lead Internet users to believe that the domain name is associated with Complainant.
Complainant asserts that Respondent, a recently incorporated company in Florida, is commonly known as Publishing Group International, not PGI and therefore, Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that Respondent had constructive notice of Complainant’s rights in the PGI mark when it registered the disputed domain name.
Complainant asserts that Respondent offered to sell the domain name to Complainant. Complainant asserts that this is evidence of bad faith pursuant to Policy ¶ 4(b)(i).
Respondent asserts that it has rights and legitimate interests in the disputed domain name because it reflects its business name, and Respondent is making use of the domain name to sell its services. Furthermore, Respondent asserts that many businesses use the initials PGI, and therefore Complainant should not have exclusive use of the mark on the Internet.
Respondent asserts that it is completely willing to work with Complainant to write a mutually satisfactory disclaimer to post on Respondent’s website.
Respondent also asserts that Complainant’s business is very different than Respondent’s, and as a result, Respondent is not offering a competing service under a similar mark thereby eliminating any Internet user confusion. Respondent asserts that it makes travel arrangements for one or two people, whereas Complainant’s company deals specifically with event management and group arrangements. Respondent agrees that this involves travel, but travel is just one small facet of Complainant’s whole service. Respondent on the other hand deals only with travel arrangements for one or two people at a time in connection with the sale of resort interests.
Respondent denies all bad faith allegations from Complainant. Respondent asserts that it registered the disputed domain name <pgitravel.com> in good faith because it reflects Respondent’s business name and the business Respondent is engaged in
Respondent further notes that it never meant to offer the domain name for sale at any cost to Complainant. Respondent asserts that its attorney misinterpreted a statement made as a willingness to sell the domain name. The domain name has never been for sale to Complainant, nor is Respondent willing to part with it
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.
Identical and/or Confusingly Similar
Respondent acknowledges that Complainant owns a service mark for PGI but notes that Respondent’s company name “Publishing Group International” is also abbreviated into the same three letters “PGI,” as are many other companies. Therefore Complainant cannot have exclusive rights to the PGI mark on the Internet. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that Respondent has rights and a legitimate interest in the domain name since the domain name reflects Respondent’s company name); see also Philippe Tenenhaus v. Telepathy, Inc., FA 94355 (Nat. Arb. Forum May 17, 2000) (finding that Respondent has rights and legitimate interests where Complainant failed to show that he should be granted exclusive use of the domain name, <daf.com>, as many other organizations use the generic term "DAF" and that it was not available to him at the time he commenced business utilizing the name); see also Donald J. Trump and Trump Hotel & Casino Resorts, Inc. v. olegevtushenko a/k/a Oleg Evtushenko, FA 101509 (Nat. Arb. Forum Dec. 11, 2001) (finding that <porntrumps.com> does not infringe on Complainant’s famous mark TRUMP, since Complainant does not have the exclusive right to use every form of the word “trump”).
Rights or Legitimate Interests
Respondent is actively engaged in a legitimate business offering travel to small groups meeting specific qualifications and who must agree to tour resort properties as a part of the travel arrangement. The difference from the Complainant’s business is readily apparent on reading the web page. See Goldline Int’l, Inc. v. Gold Line, D2000-1151 (WIPO Jan. 4, 2001) (finding that Respondent could have legitimate interest in developing a mark identical to Complainant’s where mark was weak and Respondent operated in unrelated field); see also Fuji Photo Film Co. v. Fuji Publ'g. Group, D2000-0409 (WIPO July 2, 2000) (finding that Respondent had rights and legitimate interests in the domain name <fuji.com> where Respondent was using the domain name in connection with software services).
Registration and Use in Bad Faith
The wording in the letter from Respondent’s attorney appears to be an effort to settle a dispute. The Respondent vehemently denies that the name is or was for sale and accredits the offer to a misunderstanding on the attorney’s part. See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of trademark for an amount in excess of out-of-pocket expenses); see also LifePlan v. Life Plan, FA 94826 (Nat. Arb. Forum July 13, 2000) (finding that “the mere offering [of the domain name for sale], without more, does not indicate circumstances suggesting that Respondent registered the domain name primarily for the purpose of selling…the domain name to the Complainant”).
Respondent asserts it registered the domain name in good faith because it reflects Respondent’s business name and the business in which it is engaged. See Loris Azzaro BV, SARL v. Asterix & De Vasconcellos, D2000-0608 (WIPO Sept. 4, 2000) (“Mere belief and indignation by Complainant that Respondents have registered and are using the Domain Name in bad faith are insufficient to warrant the making of such a finding in the absence of conclusive evidence”); see also Vision Ctr. Northwest Inc. v. Individual, FA 96478 (Nat. Arb. Forum Mar. 14, 2001) (finding no bad faith given the totality of circumstances); see also Goldmasters Precious Metals v. Gold Masters srl, FA 95246 (Nat. Arb. Forum Aug. 21, 2000) (finding no bad faith even though Respondent’s ownership and purported use of the domain name frustrates Complainant’s efforts where the record does not indicate any purpose or intent on the part of Respondent to prevent Complainant from reflecting its mark in a corresponding domain name, to disrupt the business of a competitor, or to intentionally attract the customers of Complainant to Respondent’s site by creating a likelihood of confusion).
The domain name registered by Respondent is identical to Complainant’s trademark; however, Complainant’s mark is weak and Respondent clearly operates in a different field of travel.
Respondent has rights or legitimate interests in respect to the domain name.
The domain name has not been registered in bad faith and is not being used in bad faith.
Because Complainant has failed to make out its case as required by the Rules, Respondent is allowed to keep the domain name. Because the three letters are identical, in accordance with Respondent’s offer and requested remedy, the parties should jointly “coin a disclosure statement that can be posted on the Respondent’s web site”.
Louis E. Condon, Panelist
September 16, 2002
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