Ricks v. Bmezine.Com Llc, No. 2:08-CV-01174-PMP-GWF

• Court: United States Courts of Appeals. United States Court of Appeals (3rd Circuit)
• Writing for the Court: PHILIP M. PRO
• Citation: 727 F.Supp.2d 936
• Parties: Gregory RICKS, Plaintiff/Counterdefendant, v. BMEZINE.COM, LLC, Defendant/Counterclaimant. BMEzine.com, LLC, Third Party Plaintiff, v. Gee Whiz Domains Privacy Service, Third Party Defendant.
• Docket Number: No. 2:08-CV-01174-PMP-GWF
• Decision Date: 26 July 2010

727 F.Supp.2d 936

Gregory RICKS, Plaintiff/Counterdefendant,
v.
BMEZINE.COM, LLC, Defendant/Counterclaimant.
BMEzine.com, LLC, Third Party Plaintiff,
v.
Gee Whiz Domains Privacy Service, Third Party Defendant.

No. 2:08-CV-01174-PMP-GWF.

United States District Court,
D. Nevada.

July 26, 2010.

727 F.Supp.2d 942

Mark R. Borghese, Ryan R. Gile, Weide & Miller, Ltd., Las Vegas, NV, for Plaintiff/Counterdefendant.

Donald Prunty, Mark G. Tratos, Ronald D. Green, Jr., Greenberg Traurig, LLP, Las Vegas, NV, Marc J. Randazza, Marc J. Randazza, P.A., Miami, FL, Clyde F. Dewitt, Law Office of Clyde Dewitt, Santa Monica, CA, for Defendant/Counterclaimant.

Mark R. Borghese, Ryan R. Gile, Weide & Miller, Ltd. Las Vegas, NV, for Third Party Defendant.

PHILIP M. PRO, District Judge.

Presently before the Court is Plaintiff/CounterDefendant Gregory Ricks' ("Ricks") and CounterDefendant Gee Whiz Domains, Inc.'s ("Gee Whiz") Motion for Partial Summary Judgment (Doc. # 55), filed on December 18, 2009. Defendant/Counterclaimant BMEzine.com, LLC filed an Opposition (Doc. # 70) on January 4, 2010. Ricks and Gee Whiz filed a Reply (Doc. # 106) on January 14, 2010.

Also before the Court is Third Party Defendant Gee Whiz Domains, Inc.'s Motion for Summary Judgment (Doc. # 56), filed on December 18, 2009. Defendant filed an Opposition (Doc. # 68) on January 4, 2010. Gee Whiz filed a Reply (Doc. # 107) on January 14,2010.

Also before the Court is Defendant's Motion for Summary Judgment on Its Counterclaims (Doc. # 57/Doc. # 61), filed on December 18, 2009. Ricks and Gee Whiz filed an Opposition (Doc. # 94) on January 5, 2010. Defendant filed a Reply (Doc. # 112) on January 15, 2010.

Also before the Court is Defendant's Motion for Summary Judgment (Doc. # 59/Doc. # 62), filed on December 18, 2009. Ricks and Gee Whiz filed an Opposition (Doc. # 95) on January 5, 2010. Defendant filed a Reply (Doc. # 110) on January 15, 2010.

Also before the Court is Plaintiff's Motion to Strike (Doc. # 67), filed on December 28, 2009. Defendant filed an Opposition (Doc. # 97) on January 14, 2010. Ricks and Gee Whiz filed a Reply (Doc. # 119) on January 25, 2010.

I. BACKGROUND

A. Plaintiff Ricks and bme.com

Plaintiff Ricks is the owner of thousands of domain names on the Internet, including the domain name in dispute in this matter, bme.com. (Pl.'s Mot. Partial Summ. J. (Doc. # 55), Ex. A ["Ricks Decl."] at 2; Exs. in Support of Def.'s Mots. Summ. J. (Doc. # 65) ["Def.'s Exs."], Ex. B at 123.) Beginning in approximately 1996, Ricks concluded that short, memorable domain names would be a valuable resource on the Internet. (Ricks Decl. at 2.) Ricks therefore spent millions of dollars acquiring domain names. ( Id.) On March 6, 2000, Ricks registered the domain name "bme.com." ¹ ( Id. & Pl.'s Mot. Summ. J., Ex. B.) Ricks avers that he never has transferred the ownership of the domain name to any other person or entity since that time. (Ricks Decl. at 2.)

Although ownership of the domain name was not changed, Ricks repeatedly changed the contact information and the Registrant, Administrative, Technical, and Billing Contacts ("RATBC") for bme.com. For example, in April 2000, Ricks changed the email address associated with the domain name, and changed the RATBC to motherboards.com, a sole proprietorship Ricks owned which he used to sell computer components. ( Id. at 3; Def.'s Exs., Ex.

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B at 34, 112.) Ricks avers he decided to change the contact information available through the WHOIS ² database because he did not want his personal contact information to be publicly available. (Ricks Decl. at 3.)

In 2005, Ricks considered changing the registrar of his domain names to Moniker Online Services, Inc. ("Moniker"). ( Id.) Moniker offered privacy services to domain name owners which would permit third parties to maintain domain names without disclosing personal contact information, but Ricks decided against using Moniker's privacy services due to the cost. ( Id.) Instead, Ricks incorporated a Wyoming corporation, Mighty Ventures, Inc., for which Ricks was the sole shareholder, to use as the point of contact. ( Id.) Ricks subsequently changed the corporation's name to Covanta Corporation ("Covanta"), and in March 2005, Ricks changed the RATBC for bme.com to Covanta. ( Id. at 3-4.) In April 2005, Ricks changed the registrar for many of his domain names, including bme.com, to Moniker. ( Id.)

After changing to Moniker as the registrar, Ricks negotiated a privacy services deal with Moniker. ( Id.) Ricks thus changed the RATBC for bme.com to Moniker Privacy Services in August 2005. ( Id.) Ricks avers he subsequently discovered Moniker had technical problems associated with its privacy services, and he therefore decided to acquire Third Party Defendant Gee Whiz, which was a domain name registrar that also offered privacy services.³ ( Id.) In October 2007, Ricks changed the RATBC for bme.com to Gee Whiz Domains Privacy Service. ( Id. at 4-5.) Ricks changed the RATBC for bme.com one last time, in approximately June 2008, after Defendant initiated a domain name dispute with the World Intellectual Property Organization ("WIPO") in accordance with the Uniform Dispute Resolution Policy ("UDRP"). ( Id. at 5; Def.'s Exs., Ex. C.)

Ricks permitted a "parking" company to provide the content for bme.com. (Def.'s Exs., Ex. B at 133.) A parking company "puts up related ads to the domain name and they share the revenue they earn" with the domain name owner. (Def.'s Exs., Ex. B at 121.) A parking company can put up material on the website without the domain name owner's prior approval. ( Id. at 121-22.) However, Ricks had some control over the content the parking company placed on his parked site. ( Id. at 136.) For example, if he was contacted by a trademark holder regarding possible infringement, he could contact the parking company and make it change the content. ( Id.)

The bme.com website content changed over time. In February 2003, it had links for items such as body jewelry and navel rings. (Def.'s Opp'n to Pl.'s Mot. Summ. J. ("Def.'s Opp'n"), Ex. F (Doc. # 86).) In February 2005, it had links for subjects such as belly rings, body lights, body jewelry, pierced body jewelry, body piercing, and tongue rings. (Def.'s Opp'n, Ex. G (Doc. # 87).) In April 2006, it had links for tattoo designs, body jewelry, body piercing, and body modification kits. (Def.'s Opp'n, Ex. H (Doc. # 88).) In March 2007, it had links to wholesale body jewelry and tattoos. (Def.'s Opp'n, Ex. I (Doc. # 89).) In July 2007, it had tattoo designs, body jewelry, body piercings, and a picture of girl with a tattoo. (Def.'s

727 F.Supp.2d 944

Exs., Def.'s Special Ex. 1, Attach. X.) In December 2007, the bme.com website contained similar types of links, including "Bme Tattoo" and body modification, and depicted a picture of a girl with a tattoo. ( Id.) In February 2008, the site included links for body tattoo pictures, body lights, tattoo kits, airbrush tattoos, and pictures of tattoos. ( Id.) It also included a section entitled "recent topics," which included body piercing jewelry and nipple rings. ( Id.) On May 6, 2008, the bme.com landing page had a picture of a man tattooing another individual, and had links to topics such as body lights, tattoo supply, tattoo pictures, body piercing, extreme genital piercing, and body modification. ( Id.)

B. Defendant BMEzine.com, LLC

Defendant BMEzine.com, LLC ("LLC") is a Nevada limited liability company organized in January 2001. (Pl.'s Mot. Partial Summ. J. (Doc. # 55), Ex. C; Def.'s Exs., Ex. A at 15-16.) The LLC owns and operates a website, bmezine.com, which provides an online community, articles, and photos related to body modification, such as tattooing and piercing. (Def.'s Exs., Special Ex. 1, Attach. U.) The LLC used "BME" as an acronym for BMEzine, which itself meant Body Modification Ezine. (Pl.'s Mot. Partial Summ. J., Ex. E at 112-13, 152, Ex. F at 261.) "BME" also was meant to signify "Be Me," a theme on being yourself and "reflecting on the outside who you are as a person." (Pl.'s Mot. Partial Summ. J., Ex. F at 265.) BMEzine's founder, Shannon Larratt, avers that he always considered BME to be more than an acronym for a generic term. Rather, he used BME as a tradename for the business. (Def.'s Opp'n, Ex. K.)

Prior to the LLC's organization, the BMEzine website was operated by Shannon Larratt. (Def.'s Exs., Ex. A at 32.) BMEzine launched as an online publication on USENET ⁴ in 1994, and since has operated under a variety of different web addresses, always using "bme" somewhere in the web address. (Def.'s Exs., Ex. EE at 1; Pl.'s Opp'n to Mot. Summ. J., Ex. 2, Shannon Larratt Decl, Ex. A.) Since that time, it has been referenced in various newspaper articles, including a July 1995 Los Angeles Times article on body modification and body art which referred to a "zine called BME ('Body Modification Ezine'), which features beautiful graphics." (Pl.'s Mot. Partial Summ. J., Ex. G.) In 1996, the Omaha World Herald ran a column which directed readers curious about body piercing to "Body Modification Ezine at http:// www. io. org./ bme/ on the Net." ( Id.) In 1997, the Guardian in London listed various websites and their content, stating "BME is a Body Modification E-Zine (electronic magazine) devoted to decorative mutilation, piercing and tattoos. If www. bme. freeq. com isn't shocking enough, the publishers are planning to post stronger stuff in a new section, BME/hard." ( Id.) In 1999, the Tampa Tribune ran an article on body modification, and mentioned "www. bme. freeq. com-Body Modification Ezine. Has online photos of brands, testimonials and advice." ( Id.) That same year, the University of Pittsburgh's The Pitt News issued an article on body piercing, which referred readers interested in viewing pictures of body modifications to "http:// www. bme. com." ⁵ ( Id.) According to

727 F.Supp.2d 945

Shannon Larratt, within months of BMEzine's launch, it was ranked...