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  • Court Rules in BME.com Cybersquatting Case, Could Affect Domain Owners

    1. BY - Jul 27, 2010
    2. Policy & Law
    3. 18 Comments

    BME.com case ruling could affect domain owners.

    A United States District Court ruling in a case between Gregory Ricks and BMEZine over the domain name BME.com has some interesting implications for domain name owners. (For background on the case, see Ricks Files Lawsuit to Retain Control of BME.com)

    Without getting into all the details of what was argued, here are some of the court’s decisions (large pdf) worth noting:

    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.

    Note that this is a court ruling under U.S. laws and does not make any interpretations of UDRP.

18 Comments
  • With the “new” DNS, the “Parked Domain” would not show up to the UDRP Panelist(s) or Courts unless they are using legacy out-dated 1980s DNS.

    “Parked Domains” may not exist for some consumers or may end up at a local vISP dialogue/blog selling them almost anything.

  • it is still the wild wild west

    Do whatever you like as long as you have yoru badge

  • The bullet points here are interesting, particularly numbers 1 and 4. I have to admit, I agree that a domain name can be registered in good faith and then renewed in bad faith, but proving intent is going to be difficult, unless those making the decision simply “railroad” the domain owner. Clarifying the litmus test for “bad faith” may be required.

    Also, any domainer who has hundreds, thousands or tens-of-thousands of domains can not possibly be held accountable for the content on every parked domain. I disagree with the court’s interpretation there.

  • Just don’t park the domains on ad pages! Get a free website tonight account and put up a website tonight acct. with godiddy (or similar elsewhere), make up a “business” that will be coming soon with a one-paragraph mission statement, and wait for your offer.

    Domainers are so stupid sometimes.

  • Barry Lebovitz says:

    July 27, 2010 at 12:03 pm

    This doesn’t make any sense.

    If anything it shows that people ruling in US courts know even less about domains that UDRP panelists.

    This is going to be a dodgy field for quite some time, and it seems as we go further down the rabbit hole the more confusing things get. Perhaps that is what the physicists who developed the inter-webs designed in the first place.

  • Waht would JPeterman.co be worth? Do you think I’d get any typo traffic?

  • @SummerD,

    The .com on that domain gets alot of traffic, and I believe $20 million+ in sales. Just don’t try to trick consumers that you are the .com version, and you should be fine. Don’t make a decision based on my assumptions, i.e., do your own due diligence before making a decision.

  • Solution: register valuable domains for 10 years at a time to minimize their exposure to such bs decisions.

    • @ Acro – the fact that a judge refers to it as “re-registered” makes me think the judge doesn’t really understand what’s happening in a renewal. I see this in UDRP’s from time-to-time as well.

      But you’re right, that’s a good way to protect yourself.

  • How will
    http://BME
    be handled ?

    How will
    http://BME.CO
    be handled ?

  • Well funny enough i personally know the new owner and wasnt to happy to find out what she did. But she did tell me that there were ads on the parked page that was about tattoos and BMEzine is TMed for that goods and service. But looking at the USPTO site there are a ton of TMed companies that use BME. So is it the owners lack of judgement for having it parked with those ads?

  • Having read the order (yep, all 45 pages) I agree that that idiot deserved to lose the name, based simply on placing tattoo links and ads knowing that BME is for the more famous mark.

  • John Berryhill says:

    July 27, 2010 at 7:08 pm

    Andrew, there is nothing in the decision which suggests its use of the word “re-registration” is intended to mean “renewal”. The decision refers to a series of changes of registrant.

    • @ John – I had a hard time following if the judge was referring to the changes in ownership (even though they were the same person/alter-ego) or renewal. It seems that some UDRP panelists use the term “re-registration” to refer to renewal.

  • John Berryhill says:

    July 27, 2010 at 8:28 pm

    “It seems that some UDRP panelists use the term “re-registration” to refer to renewal.”

    That’s been argued in UDRP disputes, but I wouldn’t expect a federal judge in Utah to be using the term the same way. Maybe he picked it up from one of the briefs, but I can’t tell what he’s saying.

  • John Berryhill says:

    July 27, 2010 at 8:29 pm

    I should add that the case does cite Schmidheiny, which involved a change of registrant entity.

  • It is wild wild west….

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