Transfer of '' refused, but disclaimer ordered


In the case of PGI Inc v Publishing Group International Inc, National Arbitration Forum panellist Louis Condon has refused to order the transfer of '' because the parties are engaged in different fields of travel business and the PGI mark is weak. However, he ordered the parties to "jointly coin a disclosure statement that can be posted on the respondent's website."

PGI Inc provides housing and travel packages to exhibitors, attendees and vendors at national and international trade shows, conventions and corporate events. It owns three service marks in the United States, one in Canada and one in the European Union, all in connection with travel services.

PGI brought the complaint against Publishing Group, a Florida company engaged in making travel arrangements for small groups. PGI alleged that Publishing Group was not commonly known as 'PGI', and that the company was attempting to benefit from the confusion that internet users would face when searching for PGI. Furthermore, PGI asserted that Publishing Group had offered to sell the domain name - evidence, asserted PGI, that '' had been registered in bad faith. Publishing Group averred that the offer was a misunderstanding and that it never intended to sell the domain name to PGI.

Condon found that the letters 'PGI' are initials for many companies, including Publishing Group, and that PGI does not have exclusive rights to those initials on the Internet. He also determined that Publishing Group has legitimate rights in the domain name as it is actively involved in a legitimate business related to travel services.

Condon concluded that PGI's mark is weak and that Publishing Group operates in a different field of travel. Finding a lack of bad faith on the part of Publishing Group, Condon denied PGI's complaint. However, responding to an offer made by Publishing Group to write a "mutually satisfactory disclaimer" on its website, Condon ordered the parties to jointly draft such a disclosure statement.

This decision is unique because most decisions issued against complainants simply result in a denial of the complaint and a finding for the respondent.

James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff LLP, Washington DC

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