John Berryhill has won yet another UDRP this time successfully defending the domain holder SearchMachine on the domain name BMA.com
Here are the relevant findings of facts:
“The Complainant Braunschweiger Maschinenanstalt AG of Braunschweig, Germany, is the owner of registered trademarks for the letters BMA in China in class 7 (covering mechanical control fittings, filters, pumps, conveyers, agitators, centrifuges, vapor separators, valves and the like); class 37 (machinery installation, maintenance and repair, installation and repair of machines for the treatment and processing of renewable raw materials as well as machines for woodworking and machines for agriculture and for food industries) and services in class 42 (not disclosed). The Complainant has a trademark registration for BMA together with a globe logo in Germany in classes 7, 37, and 42 and a Community Trademark registration for the letters BMA”
“First, the Respondent states that the disputed domain name comprises a non-distinctive three letter combination.
“It states, by reference to the Complainant’s German trademark registration, that the Complainant is engaged in the provision of design, manufacture and installation of equipment in a highly specialized market to industrial customers engaged in unspecified processing of agricultural raw materials and wood. Further, the Respondent points out that even in Germany the Complainant has no exclusivity over the letters BMA per se and that there are eight other registrants of the letters BMA as a trademark in other classes.
“Second, as to rights or legitimate interests, the Respondent states that its website contains the prominent graphics “Bachelor of Musical Arts & More”. It asserts that searches on its own website contain links to educational providers. It also provides evidence that “Bachelor of Musical Arts” is a degree which is offered by a number of universities and higher education providers and that Google searches reveal some 209,000 results.
“The Respondent contends that the letters BMA are not exclusively or notoriously associated with the Complainant outside its specialized field and it produces a Wikipedia entry for BMA showing 32 separate possible organizations or references for the initials BMA. Moreover, the Respondent states that it registered the disputed domain name “precisely because it is a three letter domain name that is a useful acronym for a variety of things”.
“Thirdly, the Respondent states that its use of the disputed domain name does not relate to the Complainant’s business in that there is no suggestion of passing off or attempting to masquerade as the Complainant. The Complainant is based in Germany and the Respondent’s pages and graphic materials are all in English. The Respondent states that it is entitled to use the disputed domain name for purposes “unrelated to the Complainant’s limited claim to particular types of machinery and industrial design and construction services”.
“Fourthly as to bad faith registration and use, the Respondent points to the fact that the Complainant’s allegations are brief. The Respondent rejects the contention that its own website cannot be searched for Bachelor of Musical Arts. The Respondent further says that the fact that it did not engage with an anonymous purchase enquiry cannot be evidence of bad faith. In particular the Respondent says that it “registered a three-letter domain name that literally has hundreds of non-distinctive and non-exclusive uses, because it corresponds to an academic degree”. The Respondent says that it has a broad collection of three letter domain names and provides 10 other examples which it claims are “topically-suggestive search strings and corresponding title banners relating to educational and vocational subjects”.
“Fifthly, the Respondent states that where such a non-distinctive and short combination of letters is in dispute, the Complainant “must demonstrate how it was the peculiar target of some kind of abusive intent” or that the Respondent had the intent in some manner deliberately to “target” the Complainant and its marks or goodwill in order to capitalize on them. The Respondent says that it has registered and used a number of three letter domain names and the reason why it does so is “precisely because they are neither unique nor strongly distinctive of any trade or service mark, and are thus useful for the purposes indicated and indeed for the speculative interest in things of inherent rarity (as there is a finite supply of them)”.
The three member panel agreed that the Complainant did not satisfy the bad faith requirement has not made out this second element of the Policy:
“”The Respondent demonstrated that it has a series of ten other domain name registrations for three letter domain names with title banners relating to educational and vocational subjects all of which use the same format and default to pay per click (PPC) webpages.”
“These were:
CGE – college graduate employment
TIM – technology & information management
MSS – math, science, & social studies
GPP – graduate programs, psychology
OMP – online marketing programs
LAD – learning and development
HAL – humanities, arts & literature
ITF – investing, trading & finance
BNE – business and economics
DID – degrees in dentistry
“The Respondent has asserted that it registered the disputed domain name “because it corresponds to an academic degree” and “because it is a three letter domain name that is a useful acronym for a variety of things”. The Respondent denies having been aware of the Complainant until having received the Complaint. Importantly there is nothing on the website corresponding to the disputed domain name which targets or refers to the Complainant.
“Even though the Respondent has not disclosed exactly when it acquired the disputed domain name, it is clear from the evidence filed that the Respondent has owned it since at least May 4, 2008. The Panel is satisfied that there is no evidence that the Respondent had the Complainant’s trademark in mind at the time of acquisition and transfer of the disputed domain name to it – given that it did not become aware of the Complainant’s existence until after filing of the Complaint.
“The Complainant has not advanced any evidence to demonstrate that, as a result of promotion or extended use, its generally non-distinct three letter mark BMA has achieved widespread fame, awareness and reputation. The Complainant has also not elaborated on how long it has used its mark. The earliest evidence of assertion to the mark is the trademark application in Germany on June 25, 2004. Further, that mark was not for BMA on its own, but included a globe device.
“No evidence has been advanced by the Complainant to demonstrate the general fame of what is a three-letter trademark such that the Respondent, as a United States-based registrant of the disputed domain name, must or should have known of the Complainant’s trademark rights or was willfully blind to them.
“For these reasons, the Panel finds that the Complainant has not shown that the disputed domain name was registered and is being used in bad faith.”
Yawn. Horrible. Berryhill would have to retire if he lost cases like this.
Greedy companies want free domains these days. Price just want up to 8 figure.
@Thrilled –
“Berryhill would have to retire if he lost cases like this.”
Your statement is utterly sophomoric and naïve at best !! – possibly the only thing you are really “Thrilled” about in life is being naked in front of the mirror – and “teaching” yourself a lesson you will never forget.
I take nothing for granted – especially when it seems many UDRP panels continually finds new ways to rule against domain investors, domain holders and domain developers.
We are not liked by anybody – from corporate America, to their representative to most UDRP Panels.
And when we do lose domain we should not lose – it makes the rest that cannot be taken away worth that much more – as I articulated to Ron Jackson at DNJournal last month:
http://dnjournal.com/archive/domainsales/2011/20111214.htm
This is a great great win for the Respondent and John Berryhill.
Congrats.
is this complainant for real?
how is this respondent interfering with the complainant’s business? what does a bachelor of music arts have to do with mechanical control fittings?
the udrp system is a joke. never mind the good faith requirement for registering a domain name. there should be a good faith requirement for initiating udrp’s.
meritless.
@Thrilled –
“Berryhill would have to retire if he lost cases like this.”
Your statement is utterly sophomoric and naïve at best !!
I take nothing for granted – especially when it seems many UDRP panels continually finds new ways to rule against domain investors, domain holders and domain developers.
We are not liked by anybody – from corporate America, to their representatives, to most individuals to most UDRP Panels.
This is a great great win for the Respondent and John Berryhill.
Congrats.
Brian u r a moron
The case was baseless
Any articling student would know that
No one likes you because domainers have a history of skullduggery
No one to blame but yourselves
Fact is the udrp is on par with the us legal system
There are mistakes yea but they get most of them right
For someone like you
For whom grade three was the best three years of your life to call someone else sophomoric reeks of jealously
Get real
The complaint was a yawner and a loser
No attorney needed for that win
Still u r rite any win is a great win for someone
Doubt berryhill will use that case on his top ten defenses list but
@Dwick –
There is a lot of frustration in this world. I am glad my comments gave you a forum to Vent –
I am reminded of how many folks just sit in front of the TV – smoke their medicinal marijuana and wait for politicians to fix their world – all while becoming incredible “geniuses” ::))
“Doubt berryhill will use that case on his top ten defenses list”
That’s certainly true, as I have no such list and I find the way that attorneys advertise on the basis of “look at the cases I’ve won” is distasteful and borderline unethical.
Some cases are simpler than others, and I agree with @Thrilled that it would have been difficult to lose this case – so long as the panel receives a timely response pointing out the defects of the complaint and introducing relevant facts.
Otherwise, it is something of a gamble, and of course one can certainly respond on one’s own. Some folks do a really good job of responding on their own. Some other folks manage to irritate the panel, argue irrelevant stuff, or make statements that damage their own case.
But, sure, I’ll be the first to agree that it would have been surprising for this case to go the other way.
@Brian Wick
Before you piss all over someone elses cornflakes why not brush up on the subject matter you plan to pee on.
Berryhill said himself what would have been blatently obvious to anyone who knew the first thing about the process, that being:
“I agree with @Thrilled that it would have been difficult to lose this case”
“The recent BMA.com case, for example, was obviously written by some inside IT guy at the complainant company who had no idea what he was doing”
”
I’ll be the first to agree that it would have been surprising for this case to go the other way”.
Now, he did say something that might be of value to know nothings such as yourself:
“Some folks do a really good job of responding on their own. Some other folks manage to irritate the panel, argue irrelevant stuff, or make statements that damage their own case”
The last comment applies to know nothings like you who because they registered a domain once think they know everything there is to know about domains and the process of resolving domain disputes. Unfortunately the world is not in need of any more domain experts with qualifications such as yours Brian. This was a low level loser case from the get go and failure to recognize that makes you a candidate for repeating grade three, again!
@ Wick who said “Your statement is utterly sophomoric and naïve at best !!”
Who is the naive one Brian. Lets see what Berryhill had to say about the case:
“I agree with @Thrilled that it would have been difficult to lose this case”
“The recent BMA.com case, for example, was obviously written by some inside IT guy at the complainant company who had no idea what he was doing”
“it would have been surprising for this case to go the other way”
Sophmoric and naive lol. Before you crap on people try and have a clue as to wtf it is that you are talkin about!
There was another comment by Berryhill you would be wise to heed: “Some other folks manage to irritate the panel, argue irrelevant stuff, or make statements that damage their own case”
Retain a lawyer if you have problems Brian. Best to have someone who knows what they are dealing with and talking about when responding to wipo complaints and you have shown a marked deficiency in both of these areas.