WIPO Domain Name Decision D2008-0882 for bme.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

BME, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service

Case No. D2008-0882

 

1. The Parties

Complainant is BME, LLC. of Carson City, Nevada, United States of America, represented by the law firm Weston, Garrou, Walters & Mooney, United States of America.

Respondents are Gregory Ricks of College Station, Texas, United States of America, represented by John Berryhill, United States of America; and Gee Whiz Domains Privacy Service of Las Vegas, Nevada, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name is registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2008. On June 11, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On June 17, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 19, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 24, 2008.1

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced June 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response July 16, 2008. The Response was filed with the Center July 16, 2008.

Complainant had requested a single-member panel. Exercising its right under paragraph 5(b)(iv) of the Rules, Respondent requested a three-member panel. The Center appointed Sir Ian Barker, Richard G. Lyon, and Richard W. Page as panelists in this matter on August 7, 2008. The Panel finds that it was properly constituted and has jurisdiction to decide this proceeding. Each member of the Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On July 25, 2008, Complainant filed a “Supplemental Filing” in the nature of a reply brief. The Panel determined to disallow the Supplemental Filing.

 

4. Factual Background

Complainant is an active provider of services in the “body modification” industry, with that term referring to tattoos, body piercing, and body art. Since 1994 it has continuously used the initials BME, said to stand for “Body Modification EZine,2 “for electronic and hard copy media to market and promote its services. Complainant's principle website is “www.bme”, which is linked to more than 1,000 other websites within its industry. Many of these also use the initials BME to begin the website address.

On March 27, 2008, Complainant applied in the United States Patent and Trademark Office (USPTO) to register BME as a mark for various body modification services. This application, like the Complaint and the evidence submitted with the Complaint, claimed a first use in commerce of December 1994. Complainant's application is currently pending.

The most recent registration of the disputed domain name occurred in May 2008, by GeeWhiz Domains Privacy Service, one of the Respondents. Mr. Ricks, the real party in interest and the other Respondent, apparently first registered the disputed domain name earlier, in 2000 according to the Response or 2003 according to the Complaint, in the name of a company he controlled, . Since that initial registration, ownership of the disputed domain name has been transferred among several other entities controlled by Mr. Ricks: by to Covanta Corporation in June 2005, then to Moniker Privacy Services in August 2005, and finally to Gee Whiz earlier this year. From the date the Complaint was filed through the Panel's accessing it, the disputed domain name resolved to a website with a photograph of a person drawing a tattoo and a number of click-through links to sites involving tattoo equipment, tattoo pictures, body piercing, body modification, and henna tattoos, and direct links to purchase tattoo kits. At the bottom of this page, in less prominent type than the body modification-related material above, are click-through links to topics unrelated to body modification that are similar to those found on many pay-per-click websites.

The parties engaged in email correspondence in 2004 and 2005, resumed subsequently, in an inconclusive and ultimately unsuccessful effort by Complainant to acquire the disputed domain name from Respondent.

 

5. Parties' Contentions

A. Complainant

Complainant contends as follows:

Complainant has rights in the BME mark.

Complainant has rights in BME as a service mark by reason of its USPTO application, which predates the most recent registration of the disputed domain name, and by reason of its continuous use of BME in commerce since 1994. Complainant submits the declarations of three “experts” in the body modification field, each of whom attests to the renown of the mark in that arena. Complainant asserts that its BME mark is “famous” generally but within the body modification industry in particular. The disputed domain name differs from this mark only by the addition of the generic top level identifier, “.com.”

Respondent lacks rights or legitimate interest in the disputed domain name.

The only use to which the current Respondent has put the disputed domain name is not legitimate under the Policy. Respondent has used the disputed domain name for pay-per-click revenues on a site that emphasizes Complainant's line of business. In so doing, its sole purpose is to enhance its advertising revenue by attracting internet users seeking Complainant but finding themselves at Respondent's site instead. This “initial interest confusion” does not give Respondent any legitimate rights in the disputed domain name.

Respondent knew of Complainant and its marks prior to its registration of the disputed domain name from Complainant's attempts to purchase the disputed domain name from Respondent. Respondent therefore had both actual and constructive knowledge of Complainant's marks. Anticipating a defense that Respondent simply acquired three-letter domains as its business, Complainant contends that that fact alone does not automatically confer rights or demonstrate legitimate interest in any three letter domain name.

Respondent registered and has used the disputed domain name in bad faith.

In its initial Complaint, Complainant contends that any registration of its “famous” mark after 1997 (the date service mark rights undeniably accrued) constitutes registration in bad faith because Respondent had constructive knowledge of Complainant and its mark, and probably actual knowledge as well. Again anticipating a probable defense of domain name aggregation as a legitimate business, Complainant notes that even without actual knowledge Respondent may be charged with willful blindness of Complainant's and others third parties' marks under the guidelines set out in Mobile Communication Service, Inc. v. WebReg, RN,WIPO Case No. D2005-1304, especially since Complainant had a pending USPTO application at the time of the most recent registration of the disputed domain name. Respondent's use of a privacy service and his blocking access to the wayback machine3 indicate an attempt to conceal his true identity, a further indication of bad faith of registration and use.

Following disclosure by the registrar of the identity of Mr. Ricks and his related companies, Complainant in his amendment to the Complaint further contends that because of Respondent's past conduct (he is described as a “serial cybersquatter”) bad faith is also established under paragraph 4(b)(ii) of the Policy, as Respondent has on many occasions been the subject of transfer orders in Policy proceedings brought by owners of trademarks whose rights had been violated by Respondent's indiscriminant registration of multiple domain names.

B. Respondent

Respondent contends as follows:

Respondent's defense is premised on his assertion (or rather his counsel's assertion4) that the disputed domain name was first registered in 2000 by one of Mr. Ricks's affiliated companies.

Complainant lacks rights in BME.

Complainant's recent service mark application, made following Respondent's refusal to sell the disputed domain name, does not give Complainant a right to invoke the Policy in respect to a simple three letter combination. Complainant lacks common law rights in BME because most of its promotion of its services was under the phrase “BM Ezine”, not “BME” standing alone. Complainant has not shown exclusive rights to BME and the Complaint fails under paragraph 4(a)(i) of the Policy.

Respondent has rights or a legitimate interest in the disputed domain name.

Complainant's characterization of Mr. Ricks as a serial cybersquatter is inaccurate and based upon “a highly selective view of [his] history.” While Respondent has indeed been active as a domainer, in fact Mr. Ricks has been a longtime participant in legitimate activities involving the acquisition and sale of domain names, and when he initially registered the disputed domain name in 2000 he used it to refer Internet users to his computer business. Respondent has several times prevailed in Policy disputes, including at least one in which the complainant was found to have engaged in reverse domain name hijacking. His acquisition of the disputed domain name in 2000 was in accordance with his then-current business model of acquiring three letter combinations, which he then used to link to his business of selling computer parts. In March 2000, when Respondent acquired the disputed domain name (through his affiliate) he acquired seventeen other three-letter combinations.5 Because as shown in the following section Respondent did not register the disputed domain name in bad faith, his acquisition of the disputed domain name was not in violation of the Policy and he therefore has a legitimate interest in its aggregating activities.

Respondent did not register and has not used the disputed domain name in bad faith.

First, Complainant's “selective” characterization of Respondent's website does not establish bad faith. Second, while the recent viewing of the webpage of the disputed domain name ignores many years of earlier use. When he registered the disputed domain name in 2000, Respondent “had never heard of Complainant” and registered the disputed domain name “for the purpose of directing traffic to its computer business,” and because of the appeal of a three-letter combination.

Respondent did not hold out the disputed domain name for sale to Complainant after initially refusing to sell the disputed domain name, Complainant undertook direct overtures through the registrar then used by Respondent. All inquiries on price came from Complainant, not Respondent, and the domain name was never sold.

 

6. Discussion and Findings

A. Identical or Confusingly Similar.

Whether Complainant has trademark rights sufficient to invoke the Policy is determined as of the date the Complaint was filed. WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”), paragraph 1.4, Consensus View; Valve Corporation v. ValveNET, Inc., ValveNET, Inc., Charles Morrin, WIPO Case No. D2005-0038. Complainant has submitted ample evidence showing its long use of BME to establish rights sufficient under paragraph 4(a)(i) at that date. The disputed domain name is identical to Complainant's mark but for the gTLD. Paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests; Bad Faith.

Both parties in their pleadings acknowledge that these two Policy elements will be determined based upon the Panel's resolution of the same facts and related legal analyses. In this case, while the end result would likely be the same,6 the analysis differs depending on the Panel's determination of the applicable date on which Respondent registered the disputed domain name, so to that issue the Panel turns first.

The ordinary rule on registration is that transfer to a new registrant constitutes “registration” for purposes of paragraph 4(a)(iii)'s determination of bad faith. Indeed it is a Consensus View that “ While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name does not amount to registration for the purposes of determining bad faith.” WIPO Overview, paragraph 3.7; emphasis added. Although that section of the WIPO Overview is addressed to the non-italicized portion of the quotation, panels have applied the transfer rule absent a showing that the transfer was pretextual or an attempt at cyberflight. E.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062.

Most of the cases reported on this subject dealt with a transfer from an unrelated third party, and in a different context: a subsequent bad faith-registrant's reliance on his predecessor's clear lack of bad faith in the earlier registration. While the Panel can imagine reasons not to apply the principle in all cases,7 nothing in the record of this case supports departure from the ordinary course. On the contrary, circumstances here suggest that Respondent, a seasoned domainer who has been the subject of many Policy proceedings, made its latest transfer, from one privacy service to another, to conceal his identity as long as possible.8 This transfer occurred a few months after Complainant's filing its service mark application for BME, and Respondent's current use for a click-through site began immediately thereafter. Respondent has offered no other reason for this or any other transfer, suggesting something other than a pattern of mere renewals.

In May 2008 Respondent admittedly had been aware for some time of Complainant and its interest in the disputed domain name, as he participated in correspondence about a possible sale of it to Respondent as early as 2004.9 Any registration by Respondent after that date could thus not have been made in good faith and could not have conferred on him a legitimate interest in the disputed domain name. Respondent's use of it immediately after its registration in 2008, described above, betrays his knowledge of Complainant and its mark, and thus evidences bad faith requirements in both registration and use.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to Complainant.

Richard G. Lyon
Presiding Panelist

Richard W. Page
Panelist

Sir Ian Barker
Panelist

Date: August 21, 2008

1 Respondent had registered the disputed domain name through a privacy service. Following the registrar's disclosure of Mr. Ricks as the owner of the disputed domain name, the Center so notified Complainant, inviting an amendment addressing the additional Respondent. The amendment filed by Complainant includes certain arguments, discussed below, that are specific to Mr. Ricks.

2 “Ezine” and “eZine” are common Internet argot for an electronic magazine.

3 The Panel confirmed that wayback access is blocked, and Respondent's counsel tacitly acknowledges that Respondent is responsible.

4 All the factual assertions in the Response are unverified. On factual matters of which counsel has no direct knowledge, counsel's statements are of very little weight under the Policy. Even if accepted as true, however, the outcome of this proceeding would be the same.

5 As noted, this too is a statement of counsel rather than verified by Respondent.

6 Complainant makes a strong case for application of the principle of willful blindness in 2000, as Respondent has not advised the Panel of any procedures (then or now) employed to avoid stepping on third party trademark rights. Given the Panel's determination that the most recent transfer is the date of registration for purposes of paragraph 4 of the Policy, detailed analysis of willful blindness is unnecessary.

7 A panel might ignore a transfer from one subsidiary to another within a conglomerate not timed coincidentally or otherwise with an event pertinent to the matters claimed to constitute bad faith, for example.

8 A panel might ignore movement from one privacy service to another where a plausible explanation is provided and the evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate. It should also be clear that any change in registrant data in the Whois is not being made to conceal an underlying owner's identity for the purpose of frustrating assessment of liability in relation to registration or use of the disputed domain name.

9 The correspondence about sale of the disputed domain name predates two earlier transfers, for which Respondent also offers no explanation.

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