An update to the ongoing saga over BME.com.

BMEzine.com’s home page.

BMEzine has filed a response to Gregory Ricks’ lawsuit over the domain name BME.com. Here’s a quick history:

-In August, Gregory Ricks lost the domain name BME.com in a WIPO decision under UDRP. Although it is a generic three character domain name, he had a picture and ads related to tattoos and body modification. There is a popular web site called BMEzine.com about tattoos, body modification, etc. that filed the UDRP action.

-In September, Ricks filed a lawsuit to block the transfer of BME.com to BMEzine.com. You have ten days after a UDRP decision to file such a lawsuit and block the transfer of the domain. Ricks turned the table on BMEzine and claimed that BMEzine was infringing on his brand.

Last week BMEzine filed its response and counterclaims to Ricks’ lawsuit. You can see the response here (pdf). BMEzine has summarized its response and the saga on its blog, but here’s a snapshot of some of its claims:

-BMEzine alleges that it agreed to purchase BME.com from Ricks prior to filing the UDRP, but then Ricks backed out and raised the price twice.

-BMEzine alleges that Gee Whiz Domains, a privacy service that was visible as the whois for BME.com, is the alter ego of Ricks. (The whois currently shows Gregory Ricks’ actual contact information.) The response lists trademark typo domain names that BMEzine believes are owned by Ricks through Gee Whiz Domains, including yahooemai.com, msnnb.com, officedepo.com and cnnmmoney.com.

Of course, the domain name BME.com by itself doesn’t infringe any trademarks. It was Ricks’ use of the domain to show ads for body piercing, tattoos, etc. that landed him in hot water. Odds are Ricks had never heard of BMEzine when he registered the domain; it was just another three letter domain acquisition. It’s possible, although I’m unsure, that he never optimized the domain himself and it was done automatically. The domain currently goes to a generic TrafficZ parked page, so it no longer infringes in my opinion. But “no longer” doesn’t matter; the lawsuit is about the period of time that the domain allegedly infringed on the BME brand.

[Please note: your comments are welcome, but any comment containing profanity will be deleted.]

Rewe Touristik Hotels & Investment GmbH picks up domain at arbitration.

Here’s an interesting UDRP in which the respondent didn’t file his response on a three character domain.

Domainer Gregory Ricks just lost the three character domain name LTI.com to a hotel company after failing to respond the the UDRP at World Intellectual Property Association (WIPO).

Something is certainly fishy here, since Ricks has gone out of his way to protect three character domain names at UDRP through strong responses and even lawsuits. When he lost an arbitration for BME.com, he quickly filed a lawsuit to block the transfer. I sent and email to Ricks asking for an explanation and will post it if he responds.

The complainant, which was awarded the domain name, is a member of the Rewe Group, a German retailing group. The Complainant (formally named LTI Hotelbeteiligungs- und Investitions gmbH) offers travel and hotel services under the name LTI International Hotels and its abbreviated form, LTI. The company operates at lti.de. LTI has been in business for almost twenty years.

LTI claimed that many of the pay-per-click links hosted on LTI.com were for travel services, which seems to be backed up by Archive.org.

Thanks Ramiro for the tip.

A look back at the past 30 days in domain news.

As the world’s economies made headlines, the domain industry chugged along. Here are the top 5 news stories on Domain Name Wire for September, ranked by views.

1. Dell: “We’re F’d” – Dell is either creating a new line of highly interactive computers or is making defensive domain registrations. Within minutes of this article going up, the traffic from Dell HQ in Round Rock, Texas started hitting Domain Name Wire.

2. Ricks Files Lawsuit to Retain Control of BME.com. Remind me to not write about something that gets the body modification community in a tizzy again. You’ll see 47 comments on this story, but I had to delete the 20 or so that contained rampant profanity.

3. Google Chrome Domain Names – A look at domain names related to Google’s new browser. By the way, about 3.75% of visits to Domain Name Wire last month were accessed via the new browser.

4. Domainer Selling Virtual Real Estate to Buy Physical Real Estate – Chad Wright had a successful sale of his premium geo domains. He’s using the money to buy distressed physical real estate.

5. Rick Latona Domain Name Auction Nets $750k – it turns out the auction didn’t gross quite that much; the online auction software showed domains as sold that were not. But the auction still did rather well for a first time event.

Lawyer defends Gregory Ricks on Decal.com, wins RDNH charge.

Domain name lawyer John Berryhill has successfully defended famed domainer Gregory Rick’s Decal.com domain name, as well as getting a charge of reverse domain name hijacking against Italian company Decal (Depositi Costieri Calliope).

The decision, handed down on June 11 and just posted online, details an egregious attempt by the Italian company to steal a generic domain name that wasn’t used in an infringing manner. The domain name Decal.com is hosted on a Domain Sponsor parked page and only shows ads related to the common definition of decals, or stickers.

The panel railed against Decal for it attempt and said it was misguided and that its case was “fatally weak”. As to Ricks having “no rights or legitimate interests” in the domain name, the panel wrote “The Complaint however is misconceived in relation to this second element of the Policy…In this case, it is plain that the disputed domain name has a descriptive or “generic” meaning in English, and that the Respondent is based in an English-speaking jurisdiction (the United States of America)”.

As part of its evidence that the registrant should have known about the trademark for “Decal” when the domain was registered, Decal attached a printout of a Google search that shows the complainant in the first position for a related search term. The domain was registered over 12 years ago. As the panel points out, Google wasn’t even around then.

In finding Decal guilty of reverse domain name hijacking, the panel wrote:

The Panel makes its findings of reverse domain name hijacking for similar reasons. The Complainant should have known its case was fatally weak, in relation to the second and third elements of the Policy. It seems plain that the Complainant, had it properly understood what was required, would have understood that it could not make its case.

The Respondent has a long-standing registration of a domain name with a generic meaning, and uses it in that connection. This is evident from the nature of the Respondent’s website. The Complainant lacked any credible evidence of bad faith registration and use of the domain name.

Moreover, it is significant that the disputed domain name was registered before the Complainant acquired registered trademark rights.

[Editor's note: Perhaps most shameful, Decal was represented by Landwell-PricewaterhouseCoopers LLP of Spain, a recognized international firm. Also, I own RDNH.com. Perhaps it's time to make a repository of Reverse Domain Name Hijacking cases?]