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.”