Legal News

When I think of the acronym, BMA, nothing really comes to mind off of the top of my head. Unfortunately for the owner of BMA.com, a company believes its rights  supersedes  that of the registrant, and it filed a UDRP for the domain name at the  World Intellectual Property Organization.

According to the WIPO UDRP database, a UDRP was filed for BMA.com very recently. The complainant is a company called  Braunschweiger Maschinenanstalt AG, which I’ve never heard of before reading this.  Based on the logo on its website, BMA-Worldwide.com, the company wishes to be known as BMA.

AcronymFinder.com lists 81 results for the “BMA” acronym (it does not include this company among its results). The TESS database at the United States Patent & Trademark Office (USPTO) lists 32 records for the term “BMA,” 13 of which are live. Other companies and organizations that use the BMA acronym include:

• Baltimore Museum of Art
• Business Marketing Association
• British Medical Association
• Baptist Missionary Association
• Banco Macro Sa (Stock symbol is BMA)
• Blue Mountain Artists
• Birmingham Museum of Art
• Boisselle Morton & Associates
• … Countless other companies using BMA initials

At the present time, BMA.com is parked with what appears to me to be an untargeted landing page. From my perspective, this would indicate the owner didn’t intentionally park the name to confuse visitors into thinking it is related to Braunschweiger Maschinenanstalt AG.  There is also an advertising banner at the top that says “Bachelor of Musical Arts & More.”

I hope the domain owner has a good UDRP attorney.

For whatever reason, people often email me questions about buying, selling, or monetizing domain names that have trademarks. I have no legal experience, so I generally either refer them to a lawyer or refer them to an article I’ve read or website I’ve visited in the past for some information.

I saw a YouTube video featuring domain attorney John Berryhill, and I want to share it with you. In this video, Berryhill discusses cybersquatting and how you can protect yourself and your assets. In addition, Berryhill discusses what can be done when a domain registrant receives an email from a company that makes a claim on a domain name.

This may be an older video, but the advice and information is still applicable.

John Berryhill is known as one of the most successful domain attorneys, and in a UDRP decision that was released today, he successfully defended Reflex Publishing’s ownership of Lampoon.com. As I reported back in May, the Harvard Lampoon filed a UDRP for Lampoon.com, a seemingly generic domain name.

One interesting facet of this case that Berryhill brought up was that one of the panelists has Harvard connections. According to the response, “We note that the present Proceeding involves claims and evidence relating to Harvard University, as the Complainant has made various allegations relating to ‘alumni’, and that the presiding panelist is identified as a ‘Harvard trained mediator.” Despite this fact, the panel “deemed Respondent’s note as not raising any “material issue of actual conflict.”

From my perspective, the panel got this one right, and for the right reasons. According to the decision,

“Complainant has failed to meet its burden of demonstrating that Respondent has no right or legitimate interest in the Domain Name. In the present case, the fact is that Respondent registered a domain name using an ordinary dictionary word (“lampoon”) in the absence of circumstances indicating that Respondent’s aim in registering the Domain Name using “lampoon” was to profit from Complainant’s LAMPOON Mark. Indeed, Respondent established legitimate rights to the Domain Name before Complainant was able to demonstrate to the USPTO its rights to register the LAMPOON Mark (i.e., Respondent registered the Domain Name in 1998 before the USPTO issued Complainant trademark registrations under Section 2(F) of the Lanham Act for the LAMPOON Mark). And, as discussed below, there is no evidence of Complainant’s “many years of using the LAMPOON Mark” from which the Panel might possibly infer that Respondent knew of Complainant’s rights in the LAMPOON Mark and intended to exploit it. Furthermore, Respondent is using the Domain Name on a website having sponsored links to a wide variety of subject matter none of which Complainant has shown, or the Panel deems, to compete with Complainant’s parodical magazines and books.”

The panel also noted that the domain owner had not registered the name in bad faith. It seems rather obvious, but sometimes you just never know how these UDRP cases will turn out, as there isn’t always consistency between panelists and cases.

According to the decision,

“One fact bears noting as an initial matter – Respondent registered the Domain Name in 1998, some thirteen years ago. “The longer the time a disputed domain name has been registered, the more difficult it is for a complainant to prove bad faith registration. “AVN Media Network, Inc. v. Hossam Shaltout,  WIPO Case No. D2007-1011. The only evidence of record showing that Complainant took any action against this Respondent to enforce its rights was a letter proffered by Respondent in this case dated September 24, 2001, aimed at persuading Respondent to transfer the Domain Name. Complainant sent that letter three years after Respondent registered the Domain Name and then waited another ten years to assert its rights to the Domain Name by commencing this proceeding. There was no explanation for Complainant’s delay in complaining about Respondent’s domain name. Although the Panel’s decision in this case that Complainant has failed to establish bad faith registration does not rest simply on the passage of time between registration of the Domain Name and Complainant’s assertion of its rights, it is a fact that the Panel cannot ignore.

After carefully considering the totality of the circumstances in the record, the Panel does not find any evidence demonstrating that Respondent registered the Domain Name with the aim of profiting from and exploiting Complainant’s rights in the LAMPOON Mark. While Complainant has established registration rights in the LAMPOON Mark sufficient to satisfy paragraph 4(a)(i) of the Policy, the LAMPOON Mark nonetheless comprises the common dictionary word “lampoon,” which the record and the Panel’s own searching indicates is subject to significant and widespread third-party use in its ordinary or descriptive sense  (inter alia, in articles discussing satirical commentary, in the name of business establishments, as a font name, in event names, book titles and name of hanging lamp).“

It’s refreshing to see a case like this go in favor a a domain registrant. Congrats to Mr. Berryhill on this win.

A couple of months ago, I wrote an article about the pending UDRP for PPD.com. Pharmaceutical Product Development, Inc. and  Pharmaco Investments, Inc. filed the UDRP for PPD.com in mid-April, and the decision was just posted online.

For some reason, the respondent did not respond*Update* The respondent responded late to the UDRP complaint, and the sole panelist found in favor of the complainant, so the domain name will be transferred to the company that filed the UDRP. In my opinion, this is at the very least a $30,000 domain name (likely worth more), and the complainant was able to get it for the $1,500 filing fee plus attorney fees (barring a lawsuit by the domain owner).

Despite another UDRP panel’s decision that took the doctrine of laches into account, this panelist did not agree. According to the decision,

“The Panel is aware of a decision under the Policy in  The New York Times Company v. Name Administration Inc. (BVI), NAF Claim No. FA1349045, where a Panel held that laches provided “a valid defense in any domain dispute where the facts so warrant”.

However desirable a limitation period may be – as other dispute resolution systems such as the Nominet Policy in force in the United Kingdom and New Zealand have recognised – under the Policy, laches can, in this Panel’s view, not be a defence. In this Panel’s view, laches is a purely equitable defence which can only be invoked in courts exercising an equitable jurisdiction. It can have no place in a system where the rules are set by the Policy which operates an administrative procedure.“

The panelist also cited a few other reasons for his decision, including the lack of a website in ten years of ownership, potential for confusion and brand tarnishment, as well as the “Respondent’s track record of bad faith findings in at least ten decisions under the Policy”  (which weren’t listed).

I disagree with this decision though. There are 71 valid acronyms for PPD, according to the Acronym Finder website, and I don’t see why this one complainant deserves to be able to take it from the owner. I don’t believe the domain name was being used in a way that could confuse consumers into thinking it was associated with the complainant. I also don’t really see non-usage (or less than optimal usage) as bad faith.

Domain owners should read the decision and learn from it.

** Update **
I didn’t see this when I read through the complaint, but the respondent did attempt to respond to the complaint:

“On June 2, 2011, the Center received an email alleging to have been sent by “James van Johns representing, Damian Macafee, on behalf of ppd.com”. It is to be noted that the Complainant asserted that “James M. van Johns” was a pseudonym for the present Respondent. A similar claim as to the name of the Respondent was made in Sony Kabushiki Kaisha v Damian Macafee/QTK Internet, WIPO Case No. D2009-1134.

The email was received after the Panel had been appointed. A Response had been due on May 4, 2011. The purported filing of a Response on June 2, 2011, was therefore some four weeks out of time.

The only excuse offered for this late filing was “due to serious family health issues”. No evidence in support of this assertion was offered, such as a medical certificate or any details explaining this bland statement.

In the absence of any compelling evidence such as might justify acceptance of a late Response, the Panel has decided not to accept it. “