Under the UDRP the losing respondent has 10 days to commence an action in a court of law in a “mutual jurisdiction” to take advantage of the regulatory stay [paragraph 4(k) of the Policy]. Otherwise, the domain name is transferred to the complainant and the respondent’s remedy under the Anticybersquatting Consumer Protection Act is for the court to grant “injunctive relief to the domain name registrant, including the reactivation of the domain name or transfer of the domain name to the domain name registrant,” Ricks v. BMEzine.com, LLC. 2:08-cv-01174 (D.Nevada July 26, 2010), citing 15 U.S.C. Sec. 1114(2)(D)(v). Inexplicably, the plaintiff in Ricks (formerly the Respondent in a UDRP proceeding) commenced the ACPA action but not in a “mutual jurisdiction” thereby losing his automatic stay.

As followers of UDRP decisions know transfer equals new registration. Bad faith is measured from the date of transfer. BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, D2008-0882 (WIPO August 21, 2008) established the proposition that transfer can mean to any holder, even from one privacy service to another. While transfers are mostly to unrelated third parties, it is not a defense that beneficial ownership remains with the original registrant. “While the Panel can imagine reasons not to apply the principle in all cases … [the Respondent] made its latest transfer, from one privacy service to another, to conceal his identity as long as possible.”

Ricks’ argument in his ACPA action centered on his good faith registration which preceded the defendant’s trademark registration. However, the district court stated that “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.” Note that the “statutory scheme” is different from the UDRP in that a registrant engages in unlawful conduct if he “registers, uses, or traffics in a domain name” – not conjunctive as under the UDRP – that is identical or confusingly similar to a distinctive mark “with the bad faith intent to profit from that mark” [15 U.S.C. Sec. 1125(d)(1)(A)].

“Although the ACPA principally was aimed at prohibiting cybersquatting, the Act also provides some protection to domain name registrants against ‘overreaching trademark owners’ who ‘reverse hijack’ a domain name from a registrant where the registrant’s actions were lawful,” Ricks, citing Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De Barcelona, 330 F.3d 617, 625 & n.1 (4th Cir. 2003). But, to prevail on this claim  the plaintiff must show (in addition to other proof) that its registration or use of the domain name was not unlawful under the ACPA. The district court (in granting summary judgment dismissing the cause of action for reverse hijacking) held that

Ricks’ bad faith is evident when considered in the context of Ricks’ history and knowledge…. Instead of altering the content [of the website to which the disputed domain name resolved] to avoid possible infringement, the bme.com website became increasingly focused on body modification content [thereby taking advantage of the Complainant’s reputation in the marketplace].

While renewals under the UDRP do not start anew the analysis of bad faith registration they and transfers are consequential under the ACPA. “Consequently, if the LLC’s ‘BME’ mark was distinctive or famous before any of these dates, Ricks would not be entitled to summary judgment on the LLC’s counterclaim for cybersquatting.”

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com