Sabrage Media, Inc. just lost his attempt to grab the 18 year old domain name mymachine.com through a UDRP to which the domain owner didn’t even bother to defend.
The factual findings pertinent to the decision in this case are that:
1. Complainant has used the trademark MY MACHINE in connection with a magazine publication, website, and clothing products related generally to motorcycling;
2. Complainant owns United States Trademark Reg. No. 3,158,541, filed November 29, 2005, registered October 17, 2006 for the word trademark MY MACHINE;
3. The disputed domain name was registered on May 13, 1996 by a third party;
4. The domain name resolves to a basic holding webpage showing only a cog device;
5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
The domain name was first registered in 1995 by a third party.
Complainant submits that Respondent became the holder of the name in May 2010.
Provided that were the case, it might have a fundamental impact on assessment of Respondent’s rights and bona fides (see, for example, Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) determining that, even though the disputed domain name was registered earlier, the respondent’s rights in the disputed domain name began when the domain name was transferred to the respondent, which postdated complainant’s trademark rights).
The evidence before Panel of the claim that Respondent only became the owner of the domain name in 2010 is, forensically, unclear not least because the relevant annexures to the Complainant are not fully legible. In other circumstances that flaw in the Complaint might be corrected by a Panel Order inviting Complainant to provide further and better particulars of the matter but in this case the paragraph 4(a)(iii) bad faith analysis makes that exercise otiose.
Given the following bad faith assessment, Panel finds it unnecessary to reach a final decision as to whether Complainant has made a prima facie case that Respondent lacks a right or legitimate interest in the domain name.
Registration and Use in Bad Faith
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Even making the assumption that Respondent became the holder of the domain name in 2010, there is no evidence showing it to be more likely than not (the relevant standard of proof in these proceedings) that Respondent was, when it acquired the domain name, primarily actuated for the reasons described by any of subparagraphs 4(b)(i)-(iii) above.
The evidence is that, prior to notice of this dispute, the domain name resolved to an equally inspirational holding page and that it was only after Respondent received Complainant’s letter of demand that it amended the page to show a cog device.
Whether that was a result of churlishness or not is unknown but it shines no light on Respondent’s mental state at the time of registration.
Nor, importantly, is that amendment to the holding page any sort of evidence that, for the purposes of paragraph 4(b)(iv), Respondent has used the domain name in bad faith.
Accordingly, Complainant’s arguments that Respondent registered the domain name to disrupt Complainant’s business, or sell the domain name to Complainant at profit, or gain commercially from its use, are unsupported and fail.
It therefore only remains to examine whether, independently from the per se scenarios of bad faith use and registration outlined above, it can be said that Respondent both registered and then used the domain name in bad faith. In that respect Panel has already commented on bad faith registration, but even assuming a finding adverse to Respondent on that question, there is no evidence of bad faith use.
The fact that the holding page now shows a cog device and that, as Complainant argues, images of cogs or gears are related to motorcycles, other vehicles and the nominative meaning of the trademark, is an argument equally true of the domain name itself and in the absence of any other evidence of bad faith, nothing can be read from it.
Finally, insofar as Complainant relies on the argument of so-called “passively holding”, Panel observes that there is no evidence that the renown of the trademark is such that the factors outlined in the seminal case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, are engaged.
Panel finds that Complainant has failed to show either bad faith use or registration and so has failed to establish the final limb of the Policy.