DECISION

Chiswick Inc. and Russell & Miller Inc. v. S. Walter Packaging Corporation

Claim Number: FA0107000098410

PARTIES

Complainant is Chiswick Inc. and Russell & Miller Inc., Sudbury, MA (“Complainant”) represented by Stephen J. Meyers, of Drinker, Biddle & Reath LLP.  Respondent is S. Walter Packaging Corporation, Philadelphia, PA (“Respondent”) represented by Gary L. Azorsky and Robert McKinley, of Schnader, Harrison, Segal & Lewis LLP.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bagsandbows.com>, registered with Network Solutions.

PANEL

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

Hon. Ralph Yachnin, David Bernstein, Esq. and Hon. James A. Carmody (Chairman), as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on July 24, 2001; the Forum received a hard copy of the Complaint on July 25, 2001.

On July 25, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <bagsandbows.com> is registered with Network Solutions and that the Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 30, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 20, 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@bagsandbows.com by e-mail.

Respondent requested additional time to respond to the Complaint, and the request was granted on August 17, 2001.  The extension was granted until September 6, 2001 by which Respondent could file a Response to the Complaint.

A timely response was received and determined to be complete on September 6, 2001.

Complainant filed an Additional Response on September 17, 2001 pursuant to the Forum’s Supplemental Rule #7.  Panelist Bernstein did not consider the Additional Response because it did not add any new facts or legal arguments which were unavailable to Complainant at the time of filing of its Complaint.  See Electronic Commerce Media, Inc. v. Taos Mountain, FA 95344 (Nat. Arb. Forum Oct. 11, 2000).  While Panelists Yachnin and Carmody did review and consider the Additional Submission, that consideration was not dispositive.

On September 27, 2001, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed the Hon. Ralph Yachnin, David Bernstein and the Hon. James A. Carmody as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant alleges common law trademark rights in the mark, “BAGS & BOWS” by virtue of use since 1994 for goods and services related to retail packaging. Complainant claims that Respondent has registered the domain name at issue, <bagsandbows.com>, which is identical or confusingly similar to its common law trademark.  Further, Complainant alleges that Respondent is not and has not been commonly known by the domain name at issue and has no legitimate interests in respect of the domain name at issue.  Finally, Complainant alleges that Respondent registered and maintains the domain name at issue in bad faith.

B. Respondent

Respondent does not deny that the domain name at issue is similar to Complainant’s claimed trademark but asserts that the phrase “BAGS & BOWS” is generic when used for retail packaging items that include bags and bows.  Further, Respondent (like

Complainant) is a seller of bags and bows and alleges that it has legitimate interests in respect of the domain name at issue and did not register and does not maintain the domain name at issue in bad faith.

C. Additional Submissions

Panelist Bernstein did not consider the Additional Submission of Complainant and Panelists Yachnin and Carmody did not find that it added any material matters helpful to a decision of the case.

FINDINGS

Complainant has its principal place of business in Sudbury, Massachusetts, and claims to be a leading merchant of retail packaging products through its division, Bags & Bows. Russell & Miller, Inc. (“R&M”), an affiliate of Complainant, that uses the trade name BAGS & BOWS, is located in Santa Fe Springs, California and is itself a leading seller of retail merchandising products.  R&M licenses the use of BAGS & BOWS to Chiswick, Inc., pursuant to which license R&M controls the nature and quality of the goods and services offered under the BAGS & BOWS designation by Chiswick.

Complainant and its predecessors-in-interest claim to have used the name BAGS & BOWS since April, 1994 for goods and services related to retail packaging, including bags, ribbons and bows, boxes, cushioning, custom printing, envelopes, heat sealers, pricing guns, tape, labeling, tissue paper, wrapping paper, twist ties, poly pro film and hot stamping, as well as for its BAGS & BOWS catalog in both the United States of America and internationally.  Complainant promotes and sells its goods and services through its catalogs, trade show booths, showrooms and an Internet website operated under the domain name BAGSNBOWS.COM (the “BAGSNBOWS Site”).

Complainant does not allege any actual or attempted registration of its claimed trademark or any variation thereof.

Respondent is a company located in Philadelphia, Pennsylvania and is a primary competitor of Complainant, selling such items as gift wrap, bags, boxes and ribbons.  However, unlike Complainant, Respondent does not primarily focus on direct marketing, but instead relies primarily on field sales representatives who distribute catalogs directly to customers in on-site sales visits.  Like Complainant, Respondent utilizes catalogs and websites for sales.  On February 3, 1999, Respondent registered the domain name at issue, <bagsandbows.com>.  Web users who enter that domain name are directed to Respondent’s website.  For the sake of Complainant’s argument, the Panel assumes that Respondent is, and at all times relevant to this proceeding, has been aware of Complainant’s use of the name “BAGS & BOWS.”

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.

Identical and/or Confusingly Similar

The domain name at issue is a generic term for the goods sold by both Complainant and Respondent.  See Decision Analyst, Inc. v. Doug C. Dohring, WIPO Case No. D2000-1630 (Feb. 6, 2001) (finding that the phrase “opinion survey” is generic for the services offered by both of the parties to the proceeding).  See, also,  SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Nat. Arb. Forum May 25, 2000) (finding that the Complainant failed to show that it should be granted exclusive use of the domain name <soccerzone.com>, as it contains two generic terms and is not exclusively associated with its business).  Because it is a generic term, “bags and bows” is not exclusively associated with Complainant’s business but instead identifies the goods sold by Complainant.

The Panel thus finds that the domain name at issue is generic for the products sold by Complainant, and thus that the Complainant has failed to meet its burden to show that it has protectable rights in the alleged mark, “BAGS & BOWS.”

Accordingly, Complainant has failed to satisfy Paragraph 4(a)(i) of the Policy.  It is thus unnecessary for the Panel to make findings with respect to the remaining elements of the Policy (Rights or Legitimate Interests and Registration and Use in Bad Faith).

DECISION

It is the unanimous decision of the Panel that the domain name at issue, <bagsandbows.com>, not be transferred from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

David Bernstein, Esq, Panelist.

Hon. James A. Carmody (Chairman), Panelist

Dated: October 9, 2001

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