Cybersquatting Cases Update: Court Ruling in BME.com Cybersquatting Case Highlights Important Factors for Determining Whether a Defendant's Conduct Constitutes Cybersquatting

In a decision handed down yesterday, July 26, 2010, by District Judge Philip M. Pro, of the U.S. District Court for the District of Nevada, some very important factors from cybersquatting case law were re-iterated. Judge Pro denied Plaintiff Gregory Ricks’ motion for summary judgment and denied Defendant BMEZINE.com, LLC’s cross-motion for summary judgment in the ongoing cybersquatting lawsuit over control of the profitable three-letter domain name BME.com.

Before ordering that the parties have 30 days to file the proposed joint pretrial order, Judge Pro enumerated some very important determining factors and conclusions regarding the current anti-cybersquatting laws. Those points were first posted in an article on DomainNameWire.com but have been re-produced below;

"1. The court held that a re-registration of a domain name is a “registration” for the purposes of the Anti-Cybersquatting Protection Act. In other words, if you registered a domain in 2000 and “re-registered” it (i.e. renewed) in 2004, both dates are relevant. A domain could be registered in good faith, but renewed in bad faith.

"The Act provides no exception for re-registrations by the same owner. Any registration thus may bring the registrant within the statute’s purview. Congressional intent would be undermined by Ricks’ proposed interpretation. If a domain name was registered in good faith originally, but thereafter re-registered in bad faith, the cybersquatter would escape liability, a result not supportable by the statutory scheme."

2. The court re-iterates that a domain name privacy service can be held liable for cybersquatting. As I’ve noted before, providing a whois privacy service isn’t free.

3. The court said that to successfully argue reverse domain name hijacking, you must show that your use of the domain name was not unlawful under ACPA — not the Lanham Act in general.

4. The court found that you are at least partially responsible for the content of your parked domain names since you can have some control over it."

(it is important to note that these factors are used to assess cybersquatting claims under the U.S. case law and the Anti-cybersquatting Consumer Protection Act (ACPA). A similar claim against cybersquatting can be brought worldwide through a UDRP arbitration proceeding but the factors enumerated above may not carry the same weight or may not be a contributing factor at all)

(Update 1) – BME.com now redirects to BMEZINE.com. This is interesting because the opinion denying both parties summary judgment motions was handed down only yesterday and Judge Pro suggested that both parties engage in filing a joint pretrial order. My guess is that Gregory Ricks (former owner of BME.com) transferred his rights over to BMEZINE.com in a bid to demonstrate ‘good faith’ in registering and use of BME.com to the courts. The redirected BME.com (now to BMEZINE.com) boasts that BMEZINE.com is “Body Modification Ezine, The Biggest and Best Tattoo, Piercing and Body Modification Site.”

(NOTE- Update 2) - Gregory Ricks did not voluntarily transfer ownership of rights to BME.com over to BMEZINE.com. Quoting the comment from Mark Randazza who the attorney for BME in this matter;

"The domain name was transferred to BME in WIPO case D2008-0882. http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-0882.html

After that, Mr. Ricks filed in federal court to overturn the outcome of the arbitration decision.

However, to stay the implementation of the decision, he had to file in the Southern District of Florida. For some bizarre and unexplained reason, he chose to file it in the District of Nevada. Since he did not file in the "mutual jurisdiction", the arbitration decision was implemented and the domain was turned over to BME."

 

The full PDF of the ruling can be found here courtesy of DomainNameWire – Gregory Ricks v. BMEZINE.com, LLC

Comments

[Marc J. Randazza]

As the attorney for BME, I would like to correct one statement in this article.

You wrote:

My guess is that Gregory Ricks (former owner of BME.com) transferred his rights over to BMEZINE.com in a bid to demonstrate ‘good faith’ in registering and use of BME.com to the courts.

Mr. Ricks did not transfer the domain voluntarily, nor in any bid to demonstrate good faith.

The domain name was transferred to BME in WIPO case D2008-0882. http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-0882.html

After that, Mr. Ricks filed in federal court to overturn the outcome of the arbitration decision.

However, to stay the implementation of the decision, he had to file in the Southern District of Florida. For some bizarre and unexplained reason, he chose to file it in the District of Nevada. Since he did not file in the "mutual jurisdiction", the arbitration decision was implemented and the domain was turned over to BME.

[Enrico S.]

This is a very interesting decision for several reasons. The concept that “re-registration” of a domain name constitutes “registration” under the Anticybersquatting Consumer Protection Act is consistent with the statute’s overall goal and purpose of identifying bad faith cybersquatting. The argument that re-registration after notice of trademark infringement can create an opportunity to argue “bad faith cybersquatting” or require a change of strategy for many brand holders. There’s now a much higher incentive for trademark owners to provide notice of trademark rights and send cease and desist letters alleging trademark infringement in violations of the Anticybersquatting Consumer Protection Act so any re-registration thereafter will be suspect.

It will be interesting whether or not arbitrators under the UDRP pick up this line of reasoning and apply it under the Uniform Domain Name Dispute Resolution Policy as well.

[Ed - Michigan]

So Enrico and Attorney team,

Summarize YOUR thoughts on this case please.

thanks Ed - Michigan