An interesting domain dispute has recently come down from WIPO involving a new interpretation of WHOIS privacy protection services and their relation to the “registration in bad faith” UDRP element. The case, BMEzine.com, LLC v. Gregory Wicks, concerned the domain name bme.com. This decision has interesting and widespread ramifications for domainers who arbitrarily change their WHOIS information.
BME, a magazine tailoring to body modification enthusiasts, had been in negotiations with Mr. Wicks and our colleague attorney John Berryhill for the sale of the domain since 2004. Three letter gTLDs are coveted because an argument can almost always be made that they are generic and, therefore, not identical or confusingly similar a trademark holder’s mark.
Before deciding that the Respondent did not have rights and legitimate interests in the bme.com domain name, the panel first examined whether the Complainant’s registered BME mark, registered on March 27, 2008, was identical or confusingly similar to the Respondent’s domain name. Though Complainant registered the BME mark after the registration of Respondent’s domain name, the panel held that Complainant had shown adequate evidence of common law rights predating its USPTO registration.
The more interesting aspect was the panel’s examination of the “rights and legitimate interests” and “registration in bad faith” factors. The panel held that the Respondent’s transfer of the domain from one privacy protection service to another was evidence of its bad faith and lack of legitimate interests in the domain name, especially where the Respondent used the site for pay-per-click advertisements that directly competed with Complainant’s business after the transfer. Because the Respondent knew of the Complainant’s claim to rights in the domain in 2004, the panel contended, the Respondent’s subsequent change in WHOIS privacy protection could only be explained as an attempt to conceal his identity. Therefore, the panel found that the Respondent had no rights or legitimate interests in the domain name because the subsequent transfer constituted a new registration under the UDRP.
The key lessons to take from this decision are: (1) get your registrant information correct the first time; (2) using WHOIS privacy protection, as we have said in the past, can serve as evidence of bad faith; and (3) do not take affirmative steps to hide your identity, especially after you have already been correctly identified by one claiming rights to your domain name. If you find yourself in a similar situation, contact an attorney that is well versed in domain name dispute and trademark law.