Intent-to-use trademark does in complainant.
Neal & Massy Holdings, a business conglomerate operating in the Carribean, has lost a UDRP it filed against the domain name Massy.com. Massy.com is owned by domain investor Gregory Ricks.
Ricks defended himself without counsel in the UDRP. He made a good defense, pointing out that the domain name is a dictionary word that he registered 14 years ago.
He overlooked one key thing, though. Panelist Paul M. DeCicco found this key detail himself, and denied the case in part because of it.
It turns out Neal & Massy recently filed an intent-to-use trademark application for “Massy”. So while it claimed to be commonly referred to as Massy, this intent-to-use application dispels that notion:
In filing the ITU application Complainant thereby admits that it has not yet used the MASSY mark in commerce, but instead intends to use the mark at some point in the future. See 15 U.S. Code § 1051(1)b. The unavoidable conclusion that Complainant had no rights in MASSY when it filed its Complaint is further supported by the fact that Respondent registered the at-issue domain name over 14 years before Complainant’s UDRP filing but Complainant did not complain about the massy.com domain name until now.
DeCicco declined to find reverse domain name hijacking.