2010.07.27

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.cybersquatting domain name dispute trademark

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

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.

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.

So Enrico and Attorney team,

Summarize YOUR thoughts on this case please.

thanks Ed - Michigan

The comments to this entry are closed.

TrackBack

TrackBack URL for this entry:
http://www.typepad.com/services/trackback/6a00d834208fd253ef013485bf9588970c

Listed below are links to weblogs that reference Cybersquatting Cases Update: Court Ruling in BME.com Cybersquatting Case Highlights Important Factors for Determining Whether a Defendant's Conduct Constitutes Cybersquatting:

Official Trademark Clearinghouse Agent

Cybersquatting Law Blog Homepage: Cybersquatting & Domain Dispute Lawyer Attorney Law Firm

The Anticybersquatting Consumer Protection Act

Reverse Domain Name Hijacking

  • Reverse Domain Name Hijacking
    Reverse domain name hijacking occurs when a trademark owner files a UDRP arbitration against a domain name owner on frivolous claims of trademark infringement. Domain name Hijacking is real. Find out how to protect your domain names.

Domain Theft & Stolen Domain Name Help

  • Domain Theft & Stolen Domain Name Help
    We often hear "someone stole my domain name." A domain name theft attorney can help you recover a stolen domain whether the thief is an employee, business partner, web developer, web hosting company or third party.

ARCHIVES

Domain attorney recommended by Domaining.com
© 2011 Traverse Legal, PLC. All Rights Reserved.
Traverse Legal on LinkedInTraverse Legal on FacebookTraverse Legal on Twitter
Events & Conferences:
  • International Trademark Association 2011, San Francisco, California
  • Cyber Law Summit 2011, Las Vegas, Nevada
  • Game Developers Conference 2011, San Francisco, California
  • DOMAINfest 2011, Santa Monica, California
Recent Attorney Speaking Engagements:
  • South By Southwest 2010 SXSW Interactive Conference, Austin, Texas
  • West LegalEdcenter Midwestern Law Firm Management, Chicago, Illinois
  • Internet Advertising under Part 255, Altitude Design Summit, Salt Lake City, Utah
  • Online Defamation and Reputation Management, News Talk 650 AM, The Cory Kolt Show, Canada Public Radio Saskatewan Canada
  • Alternative Fee Structures, Center for Competitive Management, Jersey City, New Jersey
  • FTC Part 255 Advertising Requirements, Mom 2.0 Conference, Houston, Texas
  • Webmaster Radio, Cybersquatting & Domain Monetization, Fort Lauderdale, Florida
Notable Complex Litigation Cases Handled By Our Lawyers:
  • Trademark Infringement, Milwaukee, Wisconsin
  • Cybersquatting Law, Trademark Law and Dilution Detroit, Michigan
  • Internet Defamation & Online Libel Indianapolis, Indiana
  • Trade Secret Theft, Chicago, Illinois
  • Cybersquatting Law, Anticybersquatting Consumer Protection Act Miami, Florida
  • Cybersquatting Law, Anticybersquatting Consumer Protection Act Eastern Dist. of Virginia, Alexandria
  • Stolen Domain Name, Orlando, Florida
  • Commercial Litigation, Tampa, Florida
  • Copyright Infringement and Cybersquatting Law, Grand Rapids, Michigan
  • Mass Tort Litigation, Los Angeles, California
  • Stolen Domain Name, Detroit, Michigan
  • Adwords Keyword Trademark Infringement, Los Angeles, California
  • Trademark Infringement & Unfair Competition, Boston, Massachusetts
  • Non-Compete Agreement and Trade Secret Theft, Detroit, Michigan
  • Mass Tort, Philadelphia, Pennsylvania
  • Mass Tort, Tyler, Texas
  • Insurance Indemnity, New York
  • Copyright Infringement, Detroit, Michigan