DECISION

Jag Licensing Limited Liability Company v. Fil-Pacific Apparel Corp.

Claim Number: FA0304000154120

PARTIES

The Complainant is Jag Licensing Limited Liability Company, Columbus OH, USA (“Complainant”) represented by Kathryn E. Smith, of Wood, Herron & Evans, LLP.  The Respondent is Fil-Pacific Apparel Corporation, Paranaque City, PHILLIPINES (“Respondent”) represented by Roberto B. Cruz. 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <jagjeans.com>, registered with iHoldings.com, Inc d/b/a Dotregistrar.com.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.

Linda M. Byrne as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 8, 2003; the Forum received a hard copy of the Complaint on April 11, 2003.

On April 8, 2003, iHoldings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <jagjeans.com> is registered with iHoldings.com, Inc. d/b/a Dotregistrar.com and that the Respondent is the current registrant of the name.  iHoldings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by its registration agreement with iHoldings.com, and Respondent 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 April 11, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 1, 2003, 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@jagjeans.com by e-mail.

A timely Response was received and determined to be complete on April 29, 2003.

Complainant's Additional Submission was timely received and determined to be complete on May 5, 2003.

Respondent's Additional Submission was timely received and determined to be complete on May 8, 2003.

On May 12, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Linda M. Byrne as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that Respondent's Domain Name <jagjeans.com> is identical or confusingly similar to its numerous registered trademarks for JAG in the United States and elsewhere.  Complainant also contends that Respondent does not have any right or legitimate interest in respect of the infringing domain name <jagjeans.com>, and that the infringing domain name <jagjeans.com> was registered by Respondent in bad faith and is being used in bad faith.

B. Respondent

Respondent denies the allegations of the Complaint, and contends that <jagjeans.com> is not identical or confusingly similar to any of Complainant's trademarks.  Respondent further asserts that it has prior rights to the JAG mark, at least in the Philippines where Respondent primarily operates.  Respondent further contends that the domain name <jagjeans.com> reflects its own mark and, therefore, it did not register <jagjeans.com> in bad faith.

C. Additional Submissions

Complainant submits an additional U.S. trademark registration and argues that it began to use the mark JAG prior to the date of first use alleged by Respondent.  Complainant further argues that Respondent's Philippine trademark registration for JAG would have expired in September of 2001 and Respondent has not established that its trademark registration was renewed.

Respondent states that its Philippine trademark registration for the mark JAG was renewed on November 16, 2001.  Respondent also argues that Complainant's Additional Submission was late and improperly introduced an amendment to the original Complaint. 

FINDINGS

1. The Panel finds that each of the submissions of the Complainant and Respondent was timely and properly made.  Therefore, the Panel has considered all submissions made by the parties in reaching its decision.

2. Complainant is a U.S. company and is the owner of a number of registered trademarks for JAG for use in connection with various clothing items and accessories.  These registrations are recorded in the U.S. and in a number of foreign countries.  Notably, however, Complainant does not own any trademark registrations in the Philippines.  The earliest of its U.S. trademark registrations (U.S. Reg. No. 1,222,688) reflects a first use in commerce date of May 15, 1975 in connection with wearing apparel, which includes pants.  In addition, another U.S. trademark registration (U.S. Reg. No. 1,920,972) owned by Complainant specifically identifies jeans, and claims a first use in commerce date of August 30, 1990. 

3. Respondent is a Philippine company and is the owner of a registered trademark for JAG in that country.  That trademark was registered to JAG AND HAGGAR JEANS & SPORTSWEAR CORPORATION, the predecessor-in-interest to Respondent.  The registration states that Respondent began to use the JAG mark in the Philippines on April 30, 1977.  The business of Respondent includes the manufacture of clothing.

4. Respondent registered the disputed domain name <jagjeans.com> on January 19, 2000.  Respondent is using the domain name to advertise a magazine titled FHM (For Him Magazine) and to advertise party events at college campuses in the Philippines, which Respondent calls "JAG BOUNCE! CAMPUS RAID."

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.

Confusing Similarity

Complainant has established that it owns trademark rights in JAG through its registration and continued use of that mark.  Respondent's domain name, <jagjeans.com>, is different from Complainant's JAG mark.  The difference between the contested domain name and the Complainant's JAG marks is the word "jeans."  Complainant has demonstrated use of the term JAG JEAN on hangtags. 

 

Although Respondent seems to dispute that Complainant's JAG trademarks encompass goods such as jeans, this contention is clearly without merit.  As noted above, Complainant's trademark registrations encompass pants in general and, more specifically, jeans. 

Because the domain name <jagjeans.com> combines Complainant's mark with a generic term that is descriptive of the parties' goods, the domain name is confusing similar to Complainant's mark.  See, e.g., Stanley Works v. McNeil & Assocs., FA 94671 (Nat. Arb. Forum Aug. 31, 2002) (finding <stanley-tools.com> and <stanley-hardware.com> confusingly similar to STANLEY trademark); AT&T Corp. v. All Time Talk Cellular and All Over Land, D2002-0741 (WIPO September 20, 2002) (finding <attvideophone.biz>, <attphone.info>, <attmobile.info>, and other similar domain names confusingly similar to AT&T trademark). 

After examining the relevant factors, this Panel concludes that the domain name <jagjeans.com> is confusingly similar to Complainant's JAG marks.

Rights or Legitimate Interests

This appears to be a case where both parties own trademark rights in the mark JAG.  Complainant owns extensive trademark registrations for the mark JAG throughout the world.  Respondent owns a trademark registration for the mark JAG in the Philippines, and Respondent uses the JAG trademark on the <jagjeans.com> website where it operates.  Both companies have provided trademark registration evidence that their use of the mark JAG began prior to 1980.

Much of the argument contained in the submissions is directed to who began use of the mark JAG first.  Each party claims an earlier use of the trademark JAG than the other.  However, as both parties' first use of the mark JAG evidently occurred long before the registration of the domain name <jagjeans.com> by Respondent in 2000, it is not necessary to make a determination as to which party's use was first.  Indeed, if that determination were necessary, this proceeding would not be the place for it.  See Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Nat. Arb. Forum Apr. 25, 2002) ("If the existence of such rights or interests turns on resolution of a legitimate trademark dispute, the Respondent must prevail, because such disputes are beyond the scope of this proceeding.). 

The relevant inquiry here is not whether Complainant has a better claim to the mark JAG, but whether Respondent has any rights or legitimate interest in the domain name <jagjeans.com>.  Respondent has demonstrated that it has rights to the mark JAG.  Respondent owns a Philippine trademark registration for the mark JAG.  Respondent's website uses the term "JAG" and "Jag Jeans" to promote music concerts and events.   Respondent was formerly known as JAG & HAGGAR JEANS & SPORTSWEAR CORPORATION until 1994.

In view of Respondent's ownership of the JAG trademark, and in view of Respondent's prior corporate name, the Panel finds that Respondent does have a legitimate interest in the domain name <jagjeans.com>.  See Bankinter S.A. v. BI Fin. Inc., D2000-0460 (WIPO Sept. 5, 2000) (finding that Respondent has rights and legitimate interests in a domain name where Respondent is using the domain name for a legitimate and fair purpose and there is evidence that it is known by the disputed domain name); Windsor Fashions, Inc. v. Windsor Software Corp., D2002-0839 (WIPO Nov. 14, 2002) (finding that Respondent has rights and legitimate interests in a domain name where there is evidence that Respondent is known by the disputed domain name).

Complainant also contends that Respondent has used the disputed domain name merely to disseminate photographs of young men and women in connection with a publication entitled "FHM (For Him Magazine)" or to promote the contest called "FHM 100 Sexiest Women in the World 2003." This use, the Complainant contends, is neither a bona fide offering of goods or services nor a legitimate fair use under the Policy.  Complainant's characterization of the disputed website appears to be less than accurate.  The website at the disputed domain name does contain a prominent link to content offered by "FHM" as described by the Complainant.  However, this content is located off the <jagjeans.com> website and is only accessible if the "FHM" links are followed.  More importantly, the website at <jagjeans.com> also contains information about events promoted by Respondent.  Specifically, in addition to the "FHM" links, the website at <jagjeans.com> also contains information about "JAG BOUNCE!" parties.  Although it is not entirely clear from the website, the JAG BOUNCE! parties appear to be sponsored by Respondent and held at colleges in the Philippines.  The use of the disputed domain name to advertise or promote events organized or otherwise sponsored by Respondent is a legitimate business use.  The mere fact that the website also contains a link to the "FHM" magazine website, which contains content that some may find objectionable, does not make Respondent's use of the <jagjeans.com> website illegitimate.

Accordingly, this Panel concludes that Respondent has legitimate rights in the domain name. 

Registration and Use in Bad Faith

Although the finding of legitimate rights of the Respondent in the disputed domain name necessarily precludes a finding in favor of Complainant, the Panel will address the issue of bad faith for the sake of completeness.

The UDRP Rules set forth the following examples of bad faith:  1) a Respondent who registers a domain name in order to sell it to the rightful trademark owner, 2) a Respondent who registers a number of domain names so that the trademark owner is prevented from doing so, 3) a Respondent who registers the domain name to disrupt the business of a competitor, and 4) a Respondent who registers a domain name to divert computer users to its site.  Complainant has produced no evidence that this Respondent is doing any of the foregoing activities.

Complainant argues that Respondent's bad faith is demonstrated by the unauthorized use of the JAG mark as a "Presenter" and a "Co-Presenter" on the FHM.COM website, and by Respondent "thwarting Complainant's efforts to successfully register its JAG mark as a domain name."  The Panel concludes that the foregoing does not establish the requisite bad faith, and the Panel finds in favor of the Respondent on this issue.  See Sustainable Forestry Management Ltd. v. SFM.com, D2002-0535 (finding for Respondent where Complainant produced no evidence of bad faith to support its allegations).

It may be true that that Complainant and Respondent are competitors.  However, Complainant has not proven that Respondent registered the disputed domain name for commercial gain with the intent to confuse Internet consumers.  In fact, this appears to be particularly unlikely given the fact that the content at the <jagjeans.com> website appears to be primarily directed to persons in the Philippines, a country where Complainant does not own a trademark registration for JAG and may not do any business.. 

In this case, the Panel concludes that Respondent's registration and use of the disputed domain name were in good faith as they were intended to promote Respondent's own business in connection with its JAG trademark.   

The Panel concludes that Complainant has not provided sufficient proof of its allegations for all three elements under paragraph 4(a) of the Policy so as to establish a prima facie case upon which the relief it now seeks can be granted.

DECISION

Having failed to establish the elements required under ICANN Policy, the Panel concludes that relief shall be hereby DENIED.

Accordingly, it is ordered that the <jagjeans.com> domain name REMAIN with Respondent.

Linda M. Byrne, Esq.

Arbitrator
Dated:  May 27, 2003

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