The Complainant is Braunschweiger Maschinenanstalt AG of Braunschweig, Germany, represented by MTS Internet GmbH, Germany.
The Respondent is SearchMachine of Calabasas, California, United States of America, represented by John Berryhill, Ph.d., Esq., United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2011. On October 20, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to an email from the Center seeking confirmation of service of a copy of the Complaint to the Respondent, the Complainant filed its confirmatory email on October 21, 2011.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced October 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2011. The Response was filed with the Center November 10, 2011.
The Center appointed Andrew Brown, Thomas Hoeren and M. Scott Donahey as panelists in this matter on December 12, 2011. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant, Braunschweiger Maschinenanstalt AG (“the Complainant”) 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 (with no disclosure of the goods or services for which it is registered).
The disputed domain name is registered in the name of SearchMachine (“the Respondent”). There is no clear indication as to when the Respondent acquired the disputed domain name. The current Registrar, GoD Inc, confirms that the disputed domain name was transferred to it in the name of the Respondent on May 4, 2008.
The Response discloses the Respondent acquired the disputed domain name for payment of USD 5,000 but with no indication as to when that occurred. 5. Parties’ Contentions A. Complainant
The Complainant contends the disputed domain name is identical to registered trademarks for BMA in “USA, Europe and worldwide”.
The Complainant asserts that the Respondent uses the disputed domain name “just as Search Website for [the] collection [of] Google Syndication fees”. It further contends that the byline “Bachelor of Music and Arts” which appears on the homepage of the website to which the disputed domain name resolves (in fact the correct byline is “Bachelor of Musical Arts & More”) “is an imaginary Company which does not exist. Additionally the title “Bachelor of [Musical] Arts” has no association with the page content or search options”.
The Complainant’s contentions as to bad faith registration and use are very brief:
“The Respondent is grabbing this domain and does not use it in any way that has an association to the name of the search portal. You cannot search for Bachelor of Music and Arts .… An offer to buy was not successful, so an amicable solution was not possible. The Respondent has indicated no interest in selling the domain name for any price.” B. Respondent
The Respondent denies that it has registered or used the disputed domain name improperly.
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)”. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established the requirement of paragraph 4(a)(i) of the Policy. At the date the Complaint was filed, it held trademark registrations for BMA in China, Germany and as a Community Trademark. No evidence was provided by the Complainant to substantiate its broader assertion that the Complainant had trademarks in the United States “and worldwide”.
The evidence of existence of trademark rights is measured as being the date the Complaint is filed, not the date of registration of the disputed domain name.
As the disputed domain name is identical to the Complainant’s registered trademarks in China and as a Community Trademark and confusingly similar to the Complainant’s German trademark registration, this element of the Policy has been met.
However, having made this finding, the Panel notes that no evidence was provided as to use of the mark other than generalized assertions that the Complainant “is using BMA for many years as a trademark and the short name to identify the company worldwide”. No evidence was put forward to show that the mark had become known widely by that mark. Indeed, the Complaint shows that the Complainant first applied for the BMA logo mark in Germany on June 25, 2004. B. Rights or Legitimate Interests
The Panel finds that the Complainant 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. C. Registered and Used in Bad Faith
The Panel finds that the Complainant does not establish this element of the Policy.
As noted in the previous section, there is no disclosure by the Respondent as to when it acquired the disputed domain name but the evidence shows that the Respondent has owned it since at least May 4, 2008. The Respondent (who has an address care of a box number in Calabasas, California, United States of America) has asserted that it was not aware of the Complainant’s trademark until receipt of this 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.
The Complainant uses its BMA trademark in what appears to be a specialized or niche market (in its own words) for “developing and producing machinery and equipment for automation, biomass and food”. A non-distinct three-letter trademark is unlikely to come to the attention of people outside this specialized niche market unless there is evidence of substantial promotion to the general public. No such evidence was presented. Indeed as the Respondent showed:
(a) In its home jurisdiction of Germany the Complainant was only one of nine parties having registered trademark rights to BMA; and
(b) Wikipedia references show a broad group of organizations or events that make use of the initials BMA.
In John Fairfax Publications Pty Ltd v. Domain Names 4U and Fred Gray,WIPO Case No. D2000-1403 (the domain name ), the majority of the panel held that there was no evidence that the first respondent who was a dealer in generic names in the United States, knew or ought to have known about a financial newspaper in Australia operating under the relatively descriptive name “Financial Review”. See also Richard L. Kane v. Nick Devine,WIPO Case No. D2001-1028.
Here the circumstances are similar. 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. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Andrew Brown QC
Presiding Panelist
Thomas Hoeren
Panelist
M. Scott Donahey
Panelist
Dated: December 19, 2011
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