A registered trademark does not give automatic rights to a domain.
Bagley Argentina S.A. of Buenos Aires, Argentina claimed it had rights to the BAGLEY mark, when it filed a UDRP against the domain Bagley.com.
Registered in 1999, the domain belongs to Anything.com Ltd. of Grand Cayman, Cayman Islands – the Respondent in this case.
The Complainant asserted its rights stem from a Mr. Bagley, way back in 1864:
The business of the Complainant can be traced back to 1864 when a United States citizen, Mr. Bagley, founded a company under his name in Buenos Aires, Argentina. Initially, the business produced a beverage made from orange peel. However, it soon expanded into the production of biscuits and crackers. It now claims to be one of the most important companies in Argentina specializing in the production of biscuits and crackers with many popular brands including Opera, Criollitas, rumba, Merengadas and Rex.
The Respondent, represented by ESQwire.com, questioned the Complainant’s claim of mark fame, and stated the following:
The Respondent points out that the word BAGLEY is a very common surname. It is a place name. It is also the name of a class of destroyer in the United States navy. There are more than 185,000 occurrences of the surname in a search of the United States Census and Voter Lists.
According to the Respondent a Google search on BAGLEY yields over 11 million results, without the Complainant appearing in the first three pages of results.
In the present case, the Panel does not consider it can go behind the Respondent’s denial of knowledge of the disputed domain name when it registered the disputed domain name in 1999.
On the record in this case, the denial is not implausible. First, as noted above, the disputed domain name consists of a common surname. It has a wide range of uses quite unassociated with the Complainant or its business. Secondly, it appears from the record that the significant expansion outside Argentina of the Complainant’s business has taken place since the Arcor Group acquired its shareholding in 2001.
The Complainant does claim that it has been operating “in several countries” in addition to Argentina for “more than 70 years”. However, which countries they are is not identified. Nor is the date when the Complainant’s products went on sale there or, most importantly, the volume of sales and advertising involved.
In these circumstances, the Complaint falls well short of providing sufficient evidence to conclude that the Complainant’s trademark is notorious around the world or, in particular, was so well known that the Respondent must have known of it when the disputed domain name was registered in 1999.
A three member panel turned down the Complainant’s request to get the domain, Bagley.com.
For the full text of the UDRP on Bagley.com, click here.
