Ricks v. Bmezine.com, LLC

Filing 120

ORDER Denying 55 Motion for Partial Summary Judgment, Denying 56 Motion for Summary Judgment, Denying 57 Motion for Summary Judgment, Granting in Part and Denying in Part 59 Motion for Summary Judgment, and Granting in Part and Denying in Part 67 Motion to Strike. The motion to strike is granted as to the Walters declaration. Proposed Joint Pretrial Order due by 8/25/2010. Signed by Judge Philip M. Pro on 7/26/10. (Copies have been distributed pursuant to the NEF - ASB)

Ricks v. Bmezine.com, LLC

Doc. 120

1 2 3 UNITED STATES DISTRICT COURT 4 D IS T R IC T OF NEVADA 5 6 G R E G O R Y RICKS, 7 P la in tif f /C o u n te rd e f e n d a n t, 8 v. 9 B M E Z IN E .C O M , LLC, 10 Defendant/Counterclaimant. 11 BMEZINE.COM, LLC, 12 T h ird Party Plaintiff, 13 v. 14 15 16 17 18 19 20 21 22 23 24 25 26 P re se n tly before the Court is Plaintiff/CounterDefendant Gregory Ricks' (" R ic k s " ) and CounterDefendant Gee Whiz Domains, Inc.'s ("Gee Whiz") Motion for P a rtia l 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. A ls o before the Court is Third Party Defendant Gee Whiz Domains, Inc.'s M o tio n for Summary Judgment (Doc. #56), filed on December 18, 2009. Defendant filed a n Opposition (Doc. #68) on January 4, 2010. Gee Whiz filed a Reply (Doc. #107) on J a n u a ry 14, 2010. G E E WHIZ DOMAINS PRIVACY S E R V IC E , T h ird Party Defendant. *** ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) )

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ORDER

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A ls o before the Court is Defendant's Motion for Summary Judgment on Its C o u n te rc la im s (Doc. #57/Doc. #61), filed on December 18, 2009. Ricks and Gee Whiz f ile d an Opposition (Doc. #94) on January 5, 2010. Defendant filed a Reply (Doc. #112) on J a n u a ry 15, 2010. A ls o before the Court is Defendant's Motion for Summary Judgment (Doc. # 5 9 /D o c . #62), filed on December 18, 2009. Ricks and Gee Whiz filed an Opposition (Doc. # 9 5 ) on January 5, 2010. Defendant filed a Reply (Doc. #110) on January 15, 2010. A ls o before the Court is Plaintiff's Motion to Strike (Doc. #67), filed on D e c e m b e r 28, 2009. Defendant filed an Opposition (Doc. #97) on January 14, 2010. Ricks a n d Gee Whiz filed a Reply (Doc. #119) on January 25, 2010. I . BACKGROUND A . Plaintiff Ricks and bme.com P la in tif f Ricks is the owner of thousands of domain names on the Internet, in c lu d in g the domain name in dispute in this matter, bme.com. (Pl.'s Mot. Partial Summ. J. (D o c . #55), Ex. A ["Ricks Decl."] at 2; Exs. in Support of Def.'s Mots. Summ. J. (Doc. # 6 5 ) ["Def.'s Exs."], Ex. B at 123.) Beginning in approximately 1996, Ricks concluded th a t short, memorable domain names would be a valuable resource on the Internet. (Ricks D e c l. at 2.) Ricks therefore spent millions of dollars acquiring domain names. (Id.) On M a rc h 6, 2000, Ricks registered the domain name "bme.com."1 (Id. & Pl.'s Mot. Summ. J., E x . B.) Ricks avers that he never has transferred the ownership of the domain name to any o th e r person or entity since that time. (Ricks Decl. at 2.) Although ownership of the domain name was not changed, Ricks repeatedly c h a n g e d the contact information and the Registrant, Administrative, Technical, and Billing

Prior to Ricks owning the bme.com website, it was the website of a bicycle o rg a n iz a tio n . (Def.'s Exs., Ex. A at 50-51.) 2

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C o n ta c ts ("RATBC") for bme.com. For example, in April 2000, Ricks changed the email a d d re s s associated with the domain name, and changed the RATBC to motherboards.com, a s o le proprietorship Ricks owned which he used to sell computer components. (Id. at 3; D e f .'s Exs., Ex. B at 34, 112.) Ricks avers he decided to change the contact information a v a ila b le through the WHOIS2 database because he did not want his personal contact in f o rm a tio n to be publicly available. (Ricks Decl. at 3.) In 2005, Ricks considered changing the registrar of his domain names to Moniker O n lin e Services, Inc. ("Moniker"). (Id.) Moniker offered privacy services to domain name o w n e rs which would permit third parties to maintain domain names without disclosing p e rs o n a l contact information, but Ricks decided against using Moniker's privacy services d u e to the cost. (Id.) Instead, Ricks incorporated a Wyoming corporation, Mighty V e n tu re s , 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 (" C o v a n ta " ), and in March 2005, Ricks changed the RATBC for bme.com to Covanta. (Id. a t 3-4.) In April 2005, Ricks changed the registrar for many of his domain names, including b m e .c o m , to Moniker. (Id.) After changing to Moniker as the registrar, Ricks negotiated a privacy services d e a l with Moniker. (Id.) Ricks thus changed the RATBC for bme.com to Moniker Privacy S e rv ic e s in August 2005. (Id.) Ricks avers he subsequently discovered Moniker had te c h n ic a l problems associated with its privacy services, and he therefore decided to acquire T h ird Party Defendant Gee Whiz, which was a domain name registrar that also offered p riv a c y services.3 (Id.) In October 2007, Ricks changed the RATBC for bme.com to Gee

WHOIS is a database maintained by domain name registrars which identify the person who owns particular domain names. See Kremen v. Cohen, 325 F.3d 1035, 1049 n.12 (9th Cir. 2003). Ricks is the president and sole shareholder of Third Party Defendant Gee Whiz. (T h ird Party Def.'s Mot. Summ. J. (Doc. #56), Decl. of Gregory Ricks at 2.) 3
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W h iz Domains Privacy Service. (Id. at 4-5.) Ricks changed the RATBC for bme.com one la s t time, in approximately June 2008, after Defendant initiated a domain name dispute with th e World Intellectual Property Organization ("WIPO") in accordance with the Uniform D is p u te 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 a n d they share the revenue they earn" with the domain name owner. (Def.'s Exs., Ex. B at 1 2 1 .) A parking company can put up material on the website without the domain name o w n e r's prior approval. (Id. at 121-22.) However, Ricks had some control over the content th e parking company placed on his parked site. (Id. at 136.) For example, if he was c o n ta c te d by a trademark holder regarding possible infringement, he could contact the p a rk in g company and make it change the content. (Id.) T h e bme.com website content changed over time. In February 2003, it had links f o r items such as body jewelry and navel rings. (Def.'s Opp'n to Pl.'s Mot. Summ. J. (" D e f .'s Opp'n"), Ex. F (Doc. #86).) In February 2005, it had links for subjects such as b e lly rings, body lights, body jewelry, pierced body jewelry, body piercing, and tongue rin g s . (Def.'s Opp'n, Ex. G (Doc. #87).) In April 2006, it had links for tattoo designs, body je w e lry, body piercing, and body modification kits. (Def.'s Opp'n, Ex. H (Doc. #88).) In M a rc h 2007, it had links to wholesale body jewelry and tattoos. (Def.'s Opp'n, Ex. I (Doc. # 8 9 ).) In July 2007, it had tattoo designs, body jewelry, body piercings, and a picture of girl w ith a tattoo. (Def.'s Exs., Def.'s Special Ex. 1, Attach. X.) In December 2007, the b m e .c o m website contained similar types of links, including "Bme Tattoo" and body m o d if ic a tio n , and depicted a picture of a girl with a tattoo. (Id.) In February 2008, the site in c lu d e d links for body tattoo pictures, body lights, tattoo kits, airbrush tattoos, and pictures o f tattoos. (Id.) It also included a section entitled "recent topics," which included body p ie rc in g jewelry and nipple rings. (Id.) On May 6, 2008, the bme.com landing page had a 4

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p ic tu re of a man tattooing another individual, and had links to topics such as body lights, ta tto o supply, tattoo pictures, body piercing, extreme genital piercing, and body m o d if ic a tio n . (Id.) B . Defendant BMEzine.com, LLC D e f e n d a n t BMEzine.com, LLC ("LLC") is a Nevada limited liability company o rg a n iz e d 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 o n lin e community, articles, and photos related to body modification, such as tattooing and p ie rc in g . (Def.'s Exs., Special Ex. 1, Attach. U.) The LLC used "BME" as an acronym for B M E z in e , which itself meant Body Modification Ezine. (Pl.'s Mot. Partial Summ. J., Ex. E a t 112-13, 152, Ex. F at 261.) "BME" also was meant to signify "Be Me," a theme on being yo u rse lf 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 B M E to be more than an acronym for a generic term. Rather, he used BME as a tradename f o r the business. (Def.'s Opp'n, Ex. K.) P rio r to the LLC's organization, the BMEzine website was operated by Shannon L a rra tt. (Def.'s Exs., Ex. A at 32.) BMEzine launched as an online publication on U S E N E T4 in 1994, and since has operated under a variety of different web addresses, a lw a ys 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 re f e re n c e d in various newspaper articles, including a July 1995 Los Angeles Times article o n body modification and body art which referred to a "zine called BME (`Body

"USENET is an abbreviation of `user network.' This term refers to an international collection of organizations and individuals (known as `peers') whose computers connect to one another and exchange messages posted by USENET users. Ellison v. Robertson, 357 F.3d 1072, 1074 n.1 (9th Cir. 2004). 5

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M o d if ic a tio n 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 b o d y 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, p ie rc in g and tattoos. If www.bme.freeq.com isn't shocking enough, the publishers are p la n n in g to post stronger stuff in a new section, BME/hard." (Id.) In 1999, the Tampa T rib u n e ran an article on body modification, and mentioned "www.bme.freeq.com - Body M o d if ic a tio n Ezine. Has online photos of brands, testimonials and advice." (Id.) That s a m e year, the University of Pittsburgh's The Pitt News issued an article on body piercing, w h ic h referred readers interested in viewing pictures of body modifications to " h ttp ://w w w .b m e .c o m ."5 (Id.) According to Shannon Larratt, within months of BMEzine's la u n c h , it was ranked as the twenty-fifth most popular site on the Internet, and was the w o rld 's largest repository of pictures on body modification. (Pl.'s Opp'n to Mot. Summ. J., E x . 2, Shannon Larratt Decl., Ex. A.) B M E z in e has permitted users to subscribe to the site by submitting stories or p h o to g ra p h s of themselves. (Def.'s Exs., Ex. EE at 2.) The site has obtained hundreds of th o u s a n d s of subscribers through submissions. (Id.) The Body Modification Ezine website in 1997 included a link to "BMENews," solicited advertising "on BME," and set forth c o n ta c t information as "BME: Body Modification Ezine." (Pl.'s Mot. Partial Summ. J., Ex. I.) The site in 1997 included a copyright notice in favor of Shannon Larratt. (Id.) The site in 1999 included other subgroups to which a browser could navigate, including " b m e /e x tre m e ," "bme/hard," "bme/live" and "bme/store." (Pl.'s Mot. Partial Summ. J., Ex.

The Pitt News did not provide the LLC's correct website, as bme.com is the website in dispute in this action, which is owned by Plaintiff Ricks. 6

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I.) It also provided a link for browsers to "Contact BME." (Id.) The 1999 and 2000 web p a g e s included a copyright notice in favor of "Shannon Larratt/BME." (Id.) BMEzine o p e ra te s various websites with the "bme" prefix, such as bmevideo.com, bmehard.com, b m e w o rld .c o m , bmeink.com, among many others. (Def.'s Opp'n to Mot. Summ. J., Ex. E, D e c l. of Rachel Larratt.) In 1997 or 1998, BMEzine added the website bmeshop.com, w h ic h sold t-shirts, jewelry, medical supplies, and videos. (Pl.'s Opp'n to Mot. Summ. J. (D o c . #95), Ex. 2, Shannon Larratt Decl., Ex. A.) The site continued to receive mention in v a rio u s media articles which referred to the site as "BME," including articles from 2003 to 2 0 0 7 in the Daily News, the Journal of Sociology, the Houston Chronicle, the Grand Rapid P re s s , and the Phoenix New Times. (Def.'s Exs., Ex. T.) In 2004, Shannon Larratt's wife, Rachel Larratt, became the LLC's sole s h a re h o ld e r and its chief executive officer. (Def.'s Exs., Ex. A at 15, 37.) The LLC's in itia l purpose was to be a third party service provider to BME, and "was never intended to a n d never had ownership of the websites or any of the other assets of the business." (Def.'s E x s., Ex. A at 168, 200; Pl.'s Opp'n to Def.'s Mot. Summ. J., Ex. 2, Shannon Larratt Decl.) However, according to Rachel Larratt, that changed when she took over the LLC in 2004. (Id. at 168.) Previously, the website bmezine.com was registered to BME, PsyberCity or in S h a n n o n Larratt's name, and prior to 2004, the BMEzine business was owned by Shannon L a rra tt and/or his company, PsyberCity. (Def.'s Exs., Ex. A at 186, Ex. S at 262.) However, after Rachel Larratt assumed control of the LLC, she recommended the re g is tra tio n for the bmezine.com website be changed to the LLC "because the LLC owned it." (Def.'s Exs., Ex. A at 187.) Shannon Larratt denies that Rachel Larratt or the LLC had any ownership interest in the BMEZine business or its related intellectual property as of 2004. (Pl.'s Opp'n to M o t. Summ. J. (Doc. #95), Ex. 2, Shannon Larratt Decl.) According to Shannon Larratt, he a lw a ys operated BMEzine as a sole proprietorship and owned all property, including 7

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in te lle c tu a l property such as any trademark rights in BME and the BME logo. (Pl.'s Opp'n to Mot. Summ. J., Ex. 2, Shannon Larratt Decl, Ex. A.) Shannon Larratt previously lic e n s e d the rights to use the website bmeshop.com to a third party. (Id.) The Licensing A g re e m e n t identified the contracting party as "`BME (aka Shannon Larratt and Psybercity In c .).'" (Id.) No documentation exists showing a transfer of the ownership of the BMEzine a s s e ts to the LLC in 2004. (Def.'s Exs., Ex. S at 262.) The Larratts subsequently separated in January 2006 and also commenced litig a tio n to resolve whether the LCC or Shannon Larratt owned the rights to the BMEzine w e b s ite and related intellectual property. (Def.'s Exs., Ex. A at 38, 48-49.) While the L a rra tts disputed ownership, a receiver was appointed. (Id. at 86.) The receiver transferred th e domain names to itself, as ordered by the appointing court. (Id. at 86-87.) The transfer w a s not meant to effect a change in ownership, as the receiver was holding the domain n a m e s for the benefit of the owner, i.e., whoever ultimately prevailed in the litigation. (Id.) In March 2008, the LLC, under Rachel Larratt's signature, filed a trademark a p p lic a tio n with the U.S. Patent and Trademark Office ("PTO") for the mark "BME" with re s p e c t to "[p]roviding an online interactive database of photos and videos in the field of b o d y art, namely, piercing, tattoos, scarification, subincision, castration." (Def.'s Exs., Ex. A at 94, Ex. H.) The application was filed during the time the receiver was in control of the d is p u te d domain names and related intellectual property. (Def.'s Exs., Ex. A at 101.) Rachel Larratt testified she believed that the LLC had the right to the trademark. (Id. at 1 1 6 .) According to Rachel Larratt, the parties already had reached a verbal settlement in F e b ru a ry 2008, and were working on drafting formal settlement documents at the time she f ile d the trademark application on the LLC's behalf. (Id. at 100-01.) In May 2008, the Larratts entered into a formal written agreement pursuant to w h ic h the parties would settle their dispute over ownership of the BMEzine assets. (Opp'n to Def.'s Mot. Summ. J. (Doc. #95), Ex. 3.) Rachel Larratt agreed to pay Shannon Larratt a 8

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s u m of money in exchange for Shannon Larratt "releas[ing] to Rachel . . . all of his right, title and interest in the business known as BME (the BME business) and any and all of the a s s e ts of . . . the said business, including all trademarks, [and] domain names . . . ." (Id.; D e f .'s Exs., Ex. A at 66-67, Ex. S.) The transfer of ownership was to occur upon the tra n s f e r of the second installment of payment from Rachel Larratt to Shannon Larratt. (Opp'n to Def.'s Mot. Summ. J., Ex. 3.) On September 15, 2008, the Larratts and the LCC e n te re d into the final settlement agreement in which Shannon Larratt released all his right, title , and interest in the LLC, including all associated intellectual property. (Def.'s Exs., E x . A at 77-80, Def.'s Opp'n to Mot. Summ. J., Ex. 4.) On September 10, 2008, the LLC added to its trademark application use of the m a rk in "[a]dvertising and directory services, namely, promoting the services of others by p ro v id in g a web page featuring links to the websites of others." (Def.'s Exs., Ex. G.) That s a m e date, the LLC also added a use for "[c]omputer services, namely, hosting online web f a c ilitie s for others for organizing and conducting online meetings, gatherings, and in te ra c tiv e discussions; and computer services in the nature of customized web pages f e a tu rin g user-defined information, personal profiles and information, all in the field of b o d y art." (Id., Ex. I.) C . The Parties' Interactions In 2004, Shannon Larratt contacted Ricks to see if Ricks wanted to sell bme.com. (Def.'s Exs., Ex. B at 127.) Ricks responded that it was not for sale. (Id.) According to S h a n n o n Larratt, he knew about the bme.com website since 1999. (Pl.'s Opp'n to Mot. S u m m . J., Ex. 3, Shannon Larratt Decl.) However, Shannon Larratt did not consider b m e .c o m to be infringing on BMEzine's rights, as it was only a search engine or provided lin k s to other sites, and it never hosted an online photograph or video database, or provided n e w s or other content related to body modification. (Id.) Shannon Larratt did not believe th a t members of the body modification community would believe bme.com was affiliated 9

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w ith bmezine.com. (Id.) He therefore deliberately chose not to file legal action against b m e .c o m , even though he pursued others he thought were infringing on BMEzine's in te lle c tu a l property rights. (Id.) R ic k s and BMEzine did not communicate again until November 2007, when R a c h e l Laratt observed the bme.com website. (Def.'s Exs., Ex. A at 52.) Rachel testified th a t she viewed bme.com in response to emails from customers who claimed they had a tte m p te d to contact customer support at BMEzine, but in fact had sent emails to support at b m e .c o m .6 (Id. at 53.) When Rachel Larratt viewed the bme.com website in November 2 0 0 7 , it contained images of body modifications, and contained script referencing "BME ta tto o , BME piercing, Body Modification Ezine." (Id. at 56.) Rachel Larratt offered to purchase bme.com for $20,000 by communicating the o f f e r to the email address provided in the WHOIS database. (Id. at 131.) Because Moniker w a s providing privacy services to Ricks at that time, Moniker received the email and a d v is e d Ricks that a buyer was interested in bme.com. (Def.'s Exs., Ex. B at 130.) Ricks ig n o re d the initial request, and Ricks did not know from whom the original offer came. (Id.) Moniker later advised Ricks it had an offer for $50,000 to $75,000. (Id. at 134.) Ricks again ignored the request. (Id. at 134-35.) Moniker advised Rachel Larratt the w e b s ite owner wanted $100,000. (Def.'s Exs., Ex. S at 326.) Rachel Larratt responded by a s k in g if the owner would take $50,000 up front, with the rest paid out over time. (Id.) Moniker responded the owner wanted $130,000. (Id.) Moniker then advised Rachel Larratt th a t the owner wanted $160,000. (Id.) Ricks contends he only found out later that the /// ////

In addition to the misdirected emails to customer service, online chat threads show that individuals who were discussing body art and giving ideas for tattoos confused bme.com with bmezine.com. (Def.'s Exs., Exs. J, K, L, M, O, P, Q.) 10

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o f f e ro r was Rachel Larratt from the LLC, and that she had offered as much as $100,000.7 (D e f .'s Exs., Ex. B at 135; Pl.'s Opp'n to Mot. Summ. J. on Counterclaims, Ex. 5.) No e v id e n c e in the record suggests Ricks knew or approved of Moniker's increasing offers to s e ll bme.com for $100,000, $130,000, or $160,000. On June 9, 2008, the LLC initiated a domain name dispute with WIPO in a c c o rd a n c e with the UDRP. (Def.'s Exs., Ex. A at 123, Ex. C.) In support of its claim b e f o re WIPO, the LLC provided the declarations of four expert witnesses, Kevin Wimberly (" W im b e rly" ), Elayne Angel ("Angel"), David Vidra ("Vidra"), and Allen Falkner (" F a lk n e r" ). (Def.'s Exs., Exs. U, V, W, X.) Wimberly averred that he started getting ta tto o s in 1998, and as a result knows artists, shop owners, and others interested in the s u b je c t. (Def.'s Exs., Ex. W.) Wimberly considers himself a tattoo enthusiast. (Id.) Wimberly has used BMEzine for ideas for tattoos, and as inspiration for a paper he wrote d u rin g law school on copyright and tattoos. (Id.) According to Wimberly, the "entire ta tto o in g , body piercing, and body art community refers to BMEzine, LLC and various o th e r enterprises such as the BME Fest, BME Scholarship, BME News, etc., as simply `B M E .'" (Id.) Wimberly opines that if anyone else in the industry used "BME," it would b e confusing. (Id.) For example, Wimberly avers he initially was confused when directed to the bme.com website, because he thought it was BMEzine-related until he discovered it w a s a parked site. (Id.) L ik e w is e , Vidra, health and safety advisor to the Society of Permanent C o s m e tic s , averred that in the body modification market, BMEzine LLC is known as BME. (Def.'s Exs., Ex. V.) According to Vidra, BMEzine was world famous in the field as early

Ricks does not recall the time frame when he first discovered the type of content on BMEzine.com, but he testified he received questions about piercings through bme.com, and that probably prompted him to look at the BMEzine website. (Def.'s Exs., Ex. B at 135-36.) Ricks had viewed bmezine.com prior to the LLC's UDRP complaint. (Id. at 143.) 11

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a s 1994 or 1995. (Id.) To his knowledge, no other companies in the field use the letters " B M E ," and if they did so, it would be confusing. (Id.) Vidra averred that when he first v ie w e d bme.com, he thought it was an addition to the BMEzine websites because it d is p la ye d links to tattooing, piercing, body lights, and body art, and it showed an image of a m a n tattooing another person. (Id.) Upon further inspection, he realized bme.com was not a s s o c ia te d with BMEzine. (Id.) A n g e l asserts she is an expert in the field of body piercing and is registered as s u c h with the Technical Advisory Service for Attorneys. (Def.'s Exs., Ex. X.) Angel is a re g u la r contributor to Pain Magazine and is writing a forthcoming book in which she refers to bmezine.com as "BME," and directs readers to the website for an on-line community to d is c u s s body modification with like-minded individuals. (Id.) According to Angel, the m a rk e tp la c e associates "BME" with BMEzine. (Id.) Angel has known about BMEzine s in c e the mid 1990s and she avers the site was world famous by 1994 or 1995. (Id.) Angel c o n te n d s no other similar companies could use "BME" without causing confusion. (Id.) As w ith Wimberly and Vidra, Angel avers she visited bme.com and at first thought it was an a d d itio n to the BMEzine websites. (Id.) Finally, Falkner avers that he is a founding member of the Association of P ro f e s s io n a l Piercers, owns a tattoo removal company, and owns a website on body s u s p e n s io n , which is "the art of suspending one[']s body from fixed objects by placing p ie rc in g through the flesh and skin." (Def.'s Exs., Ex. U.) Falkner states he is familiar with th e marketplace which knows and refers to BMEzine as "BME." (Id.) According to F a lk n e r, BMEzine was world famous by 1994 or 1995. (Id.) When Falkner visited the b m e .c o m website, he immediately knew it was not part of BMEzine. (Id.) Based on this a n d other evidence, the arbitration panel issued a decision in the LLC's favor, and in /// /// 12

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A u g u s t 2008 ordered the bme.com domain name transferred from Ricks to the LLC.8 (D e f .'s Exs., Ex. E.) O n September 5, 2008, Ricks filed a Complaint in this Court. (Compl. (Doc. # 1 ).) Ricks asserts claims for reverse domain name hijacking under 15 U.S.C. § 1114(2)(D)(v), fraud in a domain name dispute proceeding under 15 U.S.C. § 1114(2)(D)(iv), false or fraudulent registration under 15 U.S.C. § 1120, cancellation of tra d e m a rk registration under 15 U.S.C. § 1064(3), and declaratory relief of nonin f rin g e m e n t. (Am. Compl. (Doc. #27).) Defendant LLC answered and filed counterclaims f o r cybersquatting under 15 U.S.C. § 1125(d), trademark infringement under 15 U.S.C. § 1125(a), willful trademark infringement under 15 U.S.C. § 1114(1), false designation of o rig in under 15 U.S.C. § 1125(a), unfair competition, Nevada common law trademark in f rin g e m e n t, deceptive trade practices under Nevada Revised Statutes § 598.0915, in te n tio n a l interference with prospective economic advantage, trademark infringement u n d e r Florida Statutes § 495.131, dilution under Florida Statutes § 495.151, and declaratory ju d g m e n t. The parties now cross move for summary judgment on the various claims and c o u n te rc la im s . Plaintiff Ricks also moves to strike certain declarations provided in support o f Defendant's filings. II. LEGAL STANDARDS S u m m a ry judgment is appropriate "if the pleadings, the discovery and disclosure m a te ria ls on file, and any affidavits show that there is no genuine issue as to any material f a c t and that the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c). A fact is "material" if it might affect the outcome of a suit, as determined by the governing

The WIPO panel's decision is not entitled to deference on the merits. See Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De Barcelona, 330 F.3d 617, 623 (4th Cir. 2003); Sallen v. Corinthians Licenciamentos LTDA, 273 F.3d 14, 27 (1st Cir. 2001). 13

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s u b s ta n tiv e law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). An issue is " g e n u in e " if sufficient evidence exists such that a reasonable fact finder could find for the n o n -m o v in g party. Villiarimo v. Aloha Island Air, Inc., 281 F.3d 1054, 1061 (9th Cir. 2 0 0 2 ). Initially, the moving party bears the burden of proving there is no genuine issue of m a te ria l fact. Leisek v. Brightwood Corp., 278 F.3d 895, 898 (9th Cir. 2002). After the m o v in g party meets its burden, the burden shifts to the non-moving party to produce e v id e n c e that a genuine issue of material fact remains for trial. Id. The Court views all e v id e n c e in the light most favorable to the non-moving party. Id. I I I . RICKS' MOTION TO STRIKE (Doc. #67) R ic k s moves to strike the declarations of Lawrence Walters ("Walters"), D e f e n d a n t's prior counsel in this case, and Vidra as undisclosed witnesses. Ricks also m o v e s to strike the declarations of Angel, Wimberly, and Falkner for failure to comply with th e requirements regarding the disclosure of experts and their reports. The LLC responds by admitting it did not identify Walters as a witness, but c o n te n d s it was not necessary to do so, as it was reasonably foreseeable Walters would be a w itn e s s with respect to Ricks' fraud allegations. The LLC also argues Ricks could have m o v e d for a continuance under Federal Rule of Civil Procedure 56(f) if he was surprised by W a lte rs ' addition as a witness. As to the Angel, Vidra, Wimberly, and Falkner declarations, th e LLC argues these witnesses were disclosed, and the expert reports were attached to its A n s w e r. The LLC contends any failure to comply with Federal Rule of Civil Procedure 26 w ith regard to these witnesses was harmless, as it provided the same information in the W IP O hearing. The LLC also argues Angel, Falkner, Vidra, and Wimberly are not te s tif yin g as experts in this proceeding. Finally, the LLC argues the record from the WIPO p ro c e e d in g is admissible, as Ricks alleges fraud in the WIPO proceeding. Federal Rule of Civil Procedure 26(a)(2)(B) requires the parties to disclose the id e n tity of each expert witness along with the expert's written report. The report must 14

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in c lu d e all of the witness's opinions and the bases therefore, the data the witness considered in forming those opinions, any exhibits that will be used in support, the witness's q u a lif ic a tio n s including all publications authored in the previous ten years, a list of all other c a s e s during which the witness testified as an expert in the prior four years, and the amount o f compensation paid to the expert. Rule 37(c)(1) prohibits the use at trial of any in f o rm a tio n required to be disclosed by Rule 26(a) that is not properly disclosed. Wong v. R e g e n ts of Univ. of Cal., 410 F.3d 1052, 1062 (9th Cir. 2005). The non-disclosing party m a y escape Rule 37(c)'s sanction if the failure to disclose was substantially justified or was h a rm le s s . Fed. R. Civ. P. 37(c)(1). No evidence of bad faith on the part of the nond is c lo s in g party is required to exclude expert testimony under Rule 37(c)(1). Yeti by Molly, L td . v. Deckers Outdoor Corp., 259 F.3d 1101, 1106 (9th Cir. 2001). The party facing s a n c tio n s bears the burden of proving harmlessness. Id. at 1107. Defendant LLC's initial disclosures identified as potential witnesses in the case R ic k s , the Larratts, Angel, Wimberly, and Falkner. (Def.'s Exs., Ex. T.) The initial d is c lo s u re s identified Angel, Wimberly, and Falkner as witnesses who were "expected to p ro v id e expert witness testimony," and provided their declarations, in which each witness id e n tif ie d himself or herself as an expert. (Def.'s Opp'n to Mot. to Strike, Ex. E.) Although not identified as a witness in the initial disclosures, Defendant LLC provided V id ra 's declaration as part of its initial disclosures. (Id.) Defendant LLC never identified W a lte rs as a potential witness until the LLC filed his declaration in support of its filings at th e summary judgment stage. T h e Court will strike witness Walters. Defendant LLC offers no justification for its failure to identify Walters as a witness, and instead argues Plaintiff should have a n tic ip a te d Walters would be a witness. That a party may anticipate a particular individual m a y be a witness does not excuse noncompliance with the Rules. Moreover, it is unclear h o w Plaintiff should have anticipated Defendant LLC's prior counsel in this action would 15

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b e a witness in this same action. A party's counsel is not usually a witness for that party in th e same action. Discovery has closed, and Plaintiff Ricks therefore is prejudiced in his a b ility to conduct discovery in relation to Walters' statement. A s to the other declarations, the LLC provided the declarations of Angel, W im b e rly, Falkner, and Vidra in the WIPO proceeding and as part of Defendant LLC's in itia l disclosures. None of the declarations set forth the data the witnesses considered in f o rm in g their opinions, any exhibits that will be used in support, all publications the w itn e s s e s authored in the previous ten years, a list of all other cases in which the witnesses te s tif ie d as an expert in the prior four years, or the amount of compensation paid to the e x p e rts. Defendant LLC did not comply with Rule 26 and that failure was not substantially ju s tif ie d . Defendant LLC described its witnesses as experts, but did not comply with Rule 2 6 's requirements, either initially or through supplemental disclosures. However, that failure is harmless in this case. Plaintiff Ricks has been aware of th e s e witnesses and the substance of their declarations since before he filed his Complaint in this case. Indeed, Plaintiff produced the declarations as part of his own initial d is c lo s u re s . The witnesses set forth the basis for their asserted expertise in the relevant a re a , opined on the status of BME as being associated with BMEzine in the relevant c o m m u n ity, and opined on whether bme.com would cause confusion in the relevant c o m m u n ity. Plaintiff thus has known about the critical aspects of these witnesses' te s tim o n y from the inception of this case and could have deposed these witnesses during d is c o v e ry in this case to explore any deficiencies in Defendant LLC's disclosures. Given th e nature of their alleged expertise, the lack of compliance with Rule 26 is not as p re ju d ic ia l as would be the case where the expert was giving more technical or scientific o p in io n s . While the Court is reluctant to excuse Defendant LLC's failure to comply with R u le 26, the preference for deciding matters on the merits, rather than on procedural m iss te p s , counsels in favor of exercising the Court's discretion to admit the expert witness 16

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d e c la ra tio n s . The Court therefore will grant Plaintiff Ricks' motion to strike Walters' d e c la ra tio n . The Court will deny the motion to strike the declarations of Angel, Wimberly, F a lk n e r, and Vidra. I V . RICKS' MOTION FOR PARTIAL SUMMARY JUDGMENT (Doc. #55) R ic k s moves for partial summary judgment, arguing that the mark "BME" is g e n e ric as an acronym for "body modification ezine," and therefore is not protectable as a tra d e m a rk . Ricks also argues he registered the bme.com website on March 6, 2000, and c o n tin u o u s ly has owned it ever since, regardless of his use of domain name privacy s e rv ic e s . Ricks contends that the only registration date that therefore is important for the L L C 's counterclaim for cybersquatting is the original registration date, March 2000. Ricks c o n te n d s that at the time he registered bme.com, the "BME" mark was not famous or d is tin c tiv e , Defendant did not use it as a source identifier, and it had not acquired a s e c o n d a ry meaning by the time Ricks had registered the domain name. Ricks therefore m o v e s for summary judgment on Defendant's first counterclaim for cybersquatting. D e f e n d a n t responds that the "BME" mark is not generic, and Ricks cannot o v e rc o m e the presumption of protectability to which the mark is entitled due to its re g is tra tio n . Defendant contends it has presented evidence the mark does not refer to a c la s s of goods, but in fact is a source identifier for the LLC. As to the registration date, D e f e n d a n t argues that the Anticybersquatting Consumer Protection Act ("ACPA") does not lim it liability to only the creation registration, and that each registration or re-registration, e v e n if by the same owner, may subject the registrant to liability under the Act. Defendant th u s argues that even if Ricks ultimately was the owner since 2000, his purported innocent re g is tra tio n at the very first registration does not insulate him from all future infringing b e h a v io r. Finally, Defendant argues that even if March 6, 2000 is the relevant date, D e f e n d a n t had established common law rights in the BME mark prior to that date. 17

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A . Genericness T o state an anticybersquatting claim, the plaintiff must establish that its mark u p o n which the domain name allegedly infringes was "distinctive at the time of registration o f the domain name." 15 U.S.C. § 1125(d)(1)(A)(ii)(I); Lahoti, 586 F.3d at 1197. Marks g e n e ra lly are classified in one of five categories: "(1) generic; (2) descriptive; (3) s u g g e s tiv e ; (4) arbitrary; or (5) fanciful." Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 7 6 3 , 768 (1992). Suggestive, arbitrary, and fanciful marks are inherently distinctive and th e re b y automatically are entitled to federal trademark protection because "their intrinsic n a tu re serves to identify a particular source of a product." Id. A descriptive mark is not a u to m a tic a lly entitled to trademark protection, but may become protectable if the mark has a c q u ire d distinctiveness through secondary meaning. Zobmondo Entmt., LLC v. Falls M e d ia , LLC, 602 F.3d 1108, 1113 (9th Cir. 2010) (citing 15 U.S.C. § 1052(f)). Generic m a rk s are not eligible for trademark protection, even if they acquire secondary meaning. Id.; Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1358 (11th Cir. 2007); Filipino Yellow P a g e s , Inc. v. Asian Journal Publ'ns, Inc., 198 F.3d 1143, 1147 (9th Cir. 1999). A mark is generic if it "primarily denotes a product, not the product's producer." Anti-Monopoly, Inc. v. Gen. Mills Fun Group, 611 F.2d 296, 301 (9th Cir. 1979). Generic m a rk s are not subject to trademark protection because it would grant one competitor a m o n o p o ly over the language which his competitors may use to fairly describe their own p ro d u c ts . Id. Generic marks have been described as marks which "refe[r] to the genus of w h ic h the particular product is a species." Two Pesos, Inc., 505 U.S. at 768 (quotation o m itte d ). To determine whether a mark is generic, the Court analyzes "whether consumers u n d e rs ta n d the word to refer only to a particular producer's goods or whether the consumer u n d e rs ta n d s the word to refer to the goods themselves." Yellow Cab Co. of Sacramento v. Y e llo w Cab of Elk Grove, Inc., 419 F.3d 925, 929 (9th Cir. 2005). "If buyers understand 18

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th e term as being identified with a particular producer's goods or services, it is not generic. But if the word is identified with all such goods or services, regardless of their suppliers, it is generic." Id. (quotations and internal citation omitted). Courts have framed this as the " w h o -a re -yo u /w h a t-a re -yo u " test. Id. "A mark answers the buyer's questions `Who are yo u ? ' `Where do you come from?' `Who vouches for you?' But the generic name of the p ro d u c t answers the question `What are you?'" Id. (quotation omitted). A mark that consists of an abbreviation for generic words itself may be generic, b u t it may be protectable if the abbreviation "has a meaning distinct from the underlying w o rd s in the mind of the public." Welding Servs., Inc., 509 F.3d at 1359; Nat'l Conf. of B a r Examiners v. Multistate Legal Studies, Inc., 692 F.2d 478, 488 (7th Cir. 1982). The C o u rt thus must view the mark as a whole, rather than examining its individual component p a rts . Filipino Yellow Pages, Inc., 198 F.3d at 1149-50. Additionally, "[c]ontext is critical to a distinctiveness analysis." Lahoti, 586 F.3d a t 1201. The Court evaluates the mark "as if it were seen on the goods or services" within th e relevant industry context because a term is not generic in and of itself, but only in the te rm 's use in relation to the product or service at issue. Id.; Welding Servs., Inc., 509 F.3d a t 1358. For example, the word ivory is generic in reference to an elephant tusk, but is a rb itra ry as applied to a product such as soap. Welding Servs., Inc., 509 F.3d at 1358. Further, the Court makes this inquiry from the perception of the purchasing public. Zobmondo, 602 F.3d at 1113. Ultimately, the Court inquires whether consumers who ask f o r the product by the mark are describing the type of product, or are seeking the product of a particular producer. Anti-Monopoly, Inc., 611 F.2d at 303-05. Evidence that numerous other companies in the industry actually answer the q u e s tio n "what are you" by using the terms in the mark suggests the mark is generic. Closed Loop Mktg, Inc. v. Closed Loop Mktg, LLC, 589 F. Supp. 2d 1211, 1219 (E.D. Cal. 2 0 0 8 ) (holding evidence that six other companies could identify themselves as closed loop 19

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m a rk e tin g companies was evidence that term "closed loop marketing" was generic). Additionally, the mark holder's use of words in the mark to describe its and its competitors' s e rv ic e s is evidence that the mark is generic. Welding Servs., Inc., 509 F.3d at 1359. The question of which classification applies to a particular mark is a factual d e te rm in a tio n . Lahoti, 586 F.3d at 1195. The mark holder "bears the ultimate burden of p ro o f in a trademark-infringement action that the trademark is valid and protectable." Z o b m o n d o , 602 F.3d at 1113. However, federal registration of the mark constitutes "`prima f a c ie evidence' of the mark's validity and entitles the plaintiff to a `strong presumption' that th e mark is a protectable mark," and that it is not generic. Id. (quoting 15 U.S.C. § § 1057(b), 1115(a); KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 5 9 6 , 604 (9th Cir. 2005)); see also Lahoti, 586 F.3d at 1199; Coca-Cola Co. v. Overland, In c ., 692 F.2d 1250, 1254 (9th Cir. 1982). If the mark has been properly registered, the b u rd e n shifts to the alleged infringer to show by a preponderance of the evidence that the m a rk is not protectable. Zobmondo, 602 F.3d at 1114. The alleged infringer may meet this b u rd e n by demonstrating "through law, undisputed facts, or a combination thereof that the m a rk is invalid." Id. (quotation omitted). However, the presumption of validity for a re g is te re d mark is strong, and the alleged infringer bears a heavy burden to overcome it at th e summary judgment stage. Id. Here, the LLC has obtained a registered mark from the PTO for "BME" in re la tio n to providing an online interactive database of photos and videos in the field of body m o d if ic a tio n , and advertising and directory services to provide links to others' websites. The burden thus shifts to Plaintiff Ricks to overcome the presumption of validity and p ro te c ta b ility the registration provides, including the presumption that the mark is not g e n e ric . Ricks has not done so. Ricks has presented no evidence that consumers seeking out "BME" do so as an a b b re v ia tio n for body modification ezines as a class of products, rather than as a source 20

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id e n tif ie r for the LLC. Rather, Ricks relies entirely on the argument that BME is an a b b re v ia tio n for Body Modification Ezine, and those words generically describe a class of p ro d u c ts . It is doubtful that Ricks' pure legal argument could meet his heavy burden of o v e rc o m in g the presumption of validity due to the registration of the BME mark. But even if it could, Ricks has presented no evidence that a class of products known as body m o d if ic a tio n ezines even exists. Ricks has not identified a single other entity which id e n tif ie s itself as a body modification ezine. The fact that no other competitor would a n s w e r the question "what are you" by describing itself as a body modification ezine, much le s s as "BME," weighs against a finding of genericness. Moreover, the LLC has presented evidence that the relevant community within th e purchasing public recognizes the abbreviation "BME" as a source identifier for the L L C , and not with body modification ezines generally. Vidra, Angel, Wimberly, and F a lk n e r all aver in their declarations that the tattooing, piercing, and body modification c o m m u n ity refers to the LLC's business as "BME" and has done so for many years. Further, the chat threads and newspaper articles all refer to the LLC as "BME," and do not u s e the term generically to discuss body modification ezines generally. In fact, none of the a rtic le s discuss or use the term "body modification ezine" or its abbreviation "BME" g e n e r i c a l l y. 9 T h e LLC also has presented evidence from the founder of the BMEzine business, S h a n n o n Larratt, that the "BME" mark signifies more than just an abbreviation for " B M E z in e ." Rather, the abbreviation also stands for "Be Me," a theme which was explored o n the website through self expression and articles on a person's outside reflecting who they

One article uses BME as an acronym for "Body Modification Enthusiasts." (Def.'s Special Ex. 1, Ex. G.) That single article does not establish that BME stands for "body modification ezines" generally, and in fact uses the acronym for something other than a class of goods known as body modification ezines. 21

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a re on the inside. The LLC thus has presented evidence that BME is more than just a g e n e ric abbreviation for a generic phrase, but has a meaning distinct from those words. In sum, considering the strong presumption in favor of finding the LLC's mark is v a lid and protectable, and viewing all facts and reasonable inferences therefrom in the light m o s t favorable to the LLC as the nonmoving party, genuine issues of material fact remain th a t the "BME" mark is not generic. The Court therefore will deny Ricks' motion for s u m m a ry judgment on this issue. B . Registration Date T h e Court's aim in conducting statutory construction is to discern congressional in te n t in enacting a particular statute. Cooper v. F.A.A., 596 F.3d 538, 544 (9th Cir. 2010). The Court begins the statute's plain language. Id. If the statutory language is "plain and u n a m b ig u o u s ," the Court's inquiry is at an end. Id. "To discern the text's plain meaning, w o rd s will be interpreted as taking their ordinary, contemporary, common meaning." Id. (q u o ta tio n omitted). P u rs u a n t to the ACPA, a person "shall be liable in a civil action by the owner of a m a rk " if that person "registers, traffics in, or uses a domain name" with the bad faith intent to profit from a famous or distinctive mark. 15 U.S.C. § 1125(d)(1)(A). The statute does n o t refer to an original registration or the registration that creates the domain name. See So. G ro u ts & Mortars, Inc. v. 3M Co., 575 F.3d 1235, 1239, 1245-46 (11th Cir. 2009) (c o n s id e rin g defendant's possible liability for re-registering domain name but finding no b a d faith intent to profit off the mark); Schmidheiny v. Weber, 319 F.3d 581, 582 (3d Cir. 2 0 0 3 ) (holding that ACPA section prohibiting registration of a living person's name without th e person's consent and with the intent to profit was not limited to the domain name's " `c re a tio n date'" because "the plain meaning of the word `registration' is not limited to `c re a tio n registration.'"). The Act provides no exception for re-registrations by the same o w n e r. Any registration thus may bring the registrant within the statute's purview. 22

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C o n g re s s io n a l intent would be undermined by Ricks' proposed interpretation. If a domain name was registered in good faith originally, but thereafter re-registered in bad f a ith , the cybersquatter would escape liability, a result not supportable by the statutory s c h e m e . See Lahoti v. VeriCheck, Inc., 586 F.3d 1190, 1202 (9th Cir. 2009) ("Evidence of b a d faith may arise well after registration of the domain name."); Schmidheiny, 319 F.3d at 5 8 3 ("To conclude otherwise would permit the domain names of living persons to be sold a n d purchased without the living persons' consent, ad infinitum, so long as the name was f irs t registered before the effective date of the Act. We do not believe that this is the c o rre c t construction of the Anti-cybersquatting Act."); Storey v. Cello Holdings, LLC, 347 F .3 d 370, 385 (2d Cir. 2003) ("Congress intended the cybersquatting statute to make rights to a domain-name registration contingent on ongoing conduct rather than to make them f ix e d at the time of registration."). The Court therefore will deny Ricks' motion for s u m m a ry judgment to the extent it seeks a declaration that the original registration date is th e only relevant registration date in this action. R ic k s , either himself or through intermediaries, registered the bme.com website in March and April 2005, October 2007, and June 2008. Consequently, if the LLC's " B M E " mark was distinctive or famous before any of these dates, Ricks would not be e n title d to summary judgment on the LLC's counterclaim for cybersquatting. A ll of these dates pre-date the registration of the LLC's "BME" mark with the P T O . However, the LLC has presented evidence raising a genuine issue of material fact th a t the LLC or its predecessors1 0 owned common law rights to a distinctive mark in " B M E " prior to March 2000, March and April 2005, October 2007, and June 2008. The

Ricks concedes, for purposes of this motion, that viewing the facts in the light most favorable to LLC, it or its predecessors owned any intellectual property rights associated with the BMezine business, to the extent any such intellectual property rights existed. (Pl.'s Mot. Summ. J. (Doc. #55) at 7.) 23

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L L C has presented evidence that BMEzine has been on the internet in one form or another s in c e 1994, and that it quickly thereafter gained fame in the relevant community. The LLC a ls o has presented evidence that those within the community knew of and referred to the B M E z in e as "BME," and did so as a source identifier, not merely as an abbreviation for b o d y modification ezines generally. In addition to the relevant body modification c o m m u n ity, mainstream print sources referenced readers to the BMEzine website, and re f e rre d to the business as "BME" prior to and after March 2000. None of those articles re f e re n c e d body modification ezines generally or used BME as an abbreviation for body m o d if ic a tio n ezines as a class of products. T h e LLC also has presented evidence that BMEzine used "BME" as a source id e n tif yin g mark. As discussed previously, BMEzine's founder, Shannon Larratt, described h is use of the BME mark as more than just an abbreviation for "Body Modification Ezine." The BMEzine family of websites used BME in the website addresses themselves, in the text o f various website content, and as descriptors for segments of the BMEzine websites (i.e., " b m e /h a rd " ). Moreover, the LLC has presented evidence that the BME mark was viewed a s sufficiently valuable intellectual property to be the subject of a license agreement in re la tio n to the bmeshop website. Viewing the facts in the light most favorable to the LLC, a g e n u in e issue of fact remains as to whether the LLC owned protectable rights in a d is tin c tiv e mark consisting of the letters "BME" in relation to online body modificationre la te d content as of March 2000 and later. The Court therefore will deny Plaintiff's motion f o r summary judgment on Defendant LLC's counterclaim for cybersquatting. V . GEE WHIZ'S MOTION FOR SUMMARY JUDGMENT (Doc. #56) T h ird Party Defendant Gee Whiz moves for summary judgment, arguing it never h a s owned, registered, or used the domain name bme.com, it simply acted as a domain name p riv a c y service for Ricks. Defendant responds that Gee Whiz registered, trafficked in, or u s e d bme.com because it was the registrant of the domain name, and courts have held that 24

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e n titie s providing privacy services may be liable for cybersquatting. Alternatively, D e f e n d a n t argues Gee Whiz is Ricks' alter ego. The Court will deny Gee Whiz's motion. As discussed in relation to Plaintiff R ic k s ' motion for summary judgment, the Act predicates liability on registration, use, and tra f f ic k in g . That another person may have owned the domain name does not relieve Gee W h iz of its own liability for its acts in registering, trafficking in, or using the domain name. The LLC has presented evidence that as of May 9, 2008, Gee Whiz was identified as the re g is tra n t of the bme.com website. (Def.'s Opp'n (Doc. #68), Ex. F.) Gee Whiz therefore m a y be liable if it registered the domain name in bad faith, even if Ricks was the actual o w n e r of the domain name. The Court will deny Third Party Defendant Gee Whiz's motion f o r summary judgment. V I . DEFENDANT'S MOTION FOR SUMMARY JUDGMENT ON ITS C O U N T E R C L A I M S (Doc. #57/Doc. #61) D e f e n d a n t moves for summary judgment on its counterclaims for cybersquatting a n d trademark infringement and dilution. Defendant argues it owns the "BME" trademark, a n d that mark has acquired distinctiveness in the relevant market. Defendant further argues R ic k s has demonstrated bad faith intent to profit from the BME mark, as he has been on n o tic e of potential infringement since at least 2004, he escalated his use of the mark to in c lu d e links to tattoo and piercing websites, he tried to sell the domain name at an e x o rb ita n t price, and he is a serial cybersquatter. Defendant contends there is a likelihood o f confusion, as the marks are similar, offer related content, and use the same marketing c h a n n e ls . Defendant also argues there is evidence of actual confusion in the record. Finally, Defendant asserts there is no basis for safe harbor protection for Ricks. R ic k s and Gee Whiz respond by arguing the significance of various other exhibits o r statements in Defendant's motion, including Defendant's efforts to paint Ricks as a serial c yb e rs q u a tte r. On the merits of the cybersquatting and trademark infringement claims, R ic k s and Gee Whiz argue Defendant did not own the rights to the Body Modification 25

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E z in e marks at the time Ricks and/or Gee Whiz registered bme.com or at any time during an a lle g e d infringing use. Ricks and Gee Whiz also contend issues of fact remain as to w h e th e r Ricks acted in bad faith, whether Defendant used "BME" as a source identifier, a n d whether BME acquired distinctiveness as source identifier for Defendant. Finally, R ic k s and Gee Whiz argue that issues of fact remain as to likelihood of confusion. In reply, D e f e n d a n t objects to the declaration of Shannon Larratt as unsworn. A. Shannon Larratt's Declaration D e f e n d a n t LLC objects to the use of Shannon Larratt's Declaration, attached as e x h ib it 2 to Plaintiff Ricks' opposition. Defendant LLC contends the declaration was not m a d e under penalty of perjury, and therefore cannot support Ricks' opposition. S h a n n o n Larratt's declaration states that he "declare[s] under penalty of perjury, a s follows . . . . ." (Pl.'s Opp'n to Def.'s Mot. Summ. J. (Doc. #95), Ex. 2.) Shannon L a rra tt's declaration does not indicate where it was executed, but he states that he is a re s id e n t of Ontario, Canada. (Id.) In paragraph 3, Shannon Larratt states that the " s ta te m e n ts herein are truthful." (Id.) In paragraph 13, of this declaration, Shannon Larratt a v e rs that attached to the declaration as Exhibit A is "a true and correct copy of the R e sp o n d in g Affidavit of Shannon Larratt dated October 25, 2007, including all exhibits, f ile d in the Ontario Superior Court of Justice as part of the litigation Bmezine.com LLC and R a c h e l Larratt v. Shannon Larratt, Court File NO. 07-CL-721, and all of the facts and s ta te m e n ts stated therein are truthful." (Id.) Attached to Shannon Larratt's declaration as E x h ib it A is a sworn affidavit filed by Shannon Larratt in Ontario Superior Court of Justice. (Id., Attach. A.) The affidavit states that it is made under oath, and was sworn before the C o m m is s io n e r for Taking Affidavits in Toronto, Canada. (Id.) Pursuant to 28 U.S.C. § 1746, if a matter is required or permitted to be supported b y a sworn declaration in writing, the requirement may be met by providing an unsworn d e c la ra tio n so long as the declaration is signed by the maker as true under penalty of 26

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p e rju ry, and dated, in "substantially" the form set forth in the statute. If the declaration is e x e c u te d outside the United States, the suggested language is as follows: I declare (or certify, verify, or state) under penalty of perjury under the la w s of the United States of America that the foregoing is true and c o rre c t. Executed on (date). (Signature). 2 8 U.S.C. § 1746(1). If the declaration is executed within the United States, the following la n g u a g e is suggested: I declare (or certify, verify, or state) under penalty of perjury that the f o re g o in g is true and correct. Executed on (date). (Signature). Id . § 1746(2). The purpose of the oath or affirmation is to ensure the declarant understands " th e legal significance of the declarant's statements and the potential for punishment if the d e c la ra n t lies." U.S. v. Bueno-Vargas, 383 F.3d 1104, 1111 (9th Cir. 2004). Exhibit A to Shannon Larratt's declaration is Shannon Larratt's sworn affidavit. Because that affidavit was sworn, the Court will deny the LLC's objection. However, S h a n n o n Larratt's declaration is not sworn, and does not substantially comply with § 1746. Shannon Larratt states that he is making the declaration under penalty of perjury, and he s ta te s that all statements therein are true. However, Shannon Larratt does not indicate he is s u b je c t to the penalties of perjury in the United States. Because he avers he is a Canadian c itiz e n , and the declaration does not indicate where it was executed, the Court cannot be c e rta in that the declaration meets § 1746's requirements. T h e Court nevertheless will not strike the declaration, as its admission is h a rm le s s . The critical facts which Shannon Larratt recites in the declaration regarding his a lle g e d ownership rights in the BMEzine intellectual property are repeated in the sworn a f f id a v it attached thereto. Thus, the declaration does not add any significant facts not a lre a d y set forth in the sworn affidavit. The Court therefore will consider the Shannon L a rra tt sworn affidavit and unsworn declaration. 27

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B . Ownership T o establish claims for cybersquatting under the ACPA and trademark in f rin g e m e n t or dilution under the Lanham Act, the LLC "must demonstrate that it owns a v a lid mark." Lahoti, 586 F.3d at 1196-97. A registration of a mark is prima facie evidence o f the owner's ownership of the mark. 15 U.S.C. § 1057(b). However, a trademark owner g e n e ra lly cannot sue for and recover damages for infringement that occurred prior to the o w n e r acquiring the mark. H & J Foods, Inc. v. Reeder, 477 F.2d 1053, 1056 (9th Cir. 1 9 7 3 ); George W. Luft Co. v. Zande Cosmetic Co., 142 F.2d 536, 541 (2d Cir. 1944). Where a mark owner acquires its rights in the mark through assignment, it acquires no right to sue for pre-assignment infringements unless its right to do so is expressly set forth in the a s s ig n m e n t agreement, or if the parties' contract provides for the acquisition of all the assets o f the former trademark holder. H & J Foods, Inc., 477 F.2d at 1056; George W. Luft Co., 1 4 2 F.2d at 541-42; Lanard Toys Ltd. v. Novelty Inc., 511 F. Supp. 2d 1020, 1030 (C.D. C a l. 2007). The LLC does not dispute that it had to own the marks at the time of the alleged in f rin g e m e n t to bring its claims. Instead, it argues there is no issue of fact that it always has o w n e d the BME marks. The LLC attempts to portray the dispute between the Larratts as a d is p u te over ownership of the LLC itself, rather than over the intellectual property. The L L C thus contends it always owned the intellectual property, and a dispute between the L a rra tts over who owned the LLC would not change the fact that the LLC owned the marks. T h e evidence presented demonstrates that the dispute between the Larratts was n o t over who owned the LLC. Rather, their dispute was over whether the BME business a n d its related intellectual property was owned by the LLC or by Shannon Larratt in d iv id u a lly, as a sole proprietor. Shannon Larratt never owned shares in the LLC, and n e v e r claimed to do so. Shannon Larratt contended that he owned the BMEzine business a n d its related intellectual property, including the BME trademark, individually and that the 28

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L L C never owned that property until the parties settled their dispute and he assigned his rig h ts in BME to the LLC in September 2008. The LLC has presented no evidence d e m o n s tra tin g any infringing activity after the assignment in September 2008. A genuine is su e of material fact therefore remains as to whether the LLC, as opposed to Shannon L a rra tt, owned the BME business and related intellectual property rights at the time of the a lle g e d infringing activity. The LLC makes no argument that the September 2008 assignment of whatever rig h ts Shannon Larratt had in the BME business and related intellectual property constituted e ith e r an express assignment of the right to sue for past infringement, or a sale of all of S h a n n o n Larratt's assets to the LLC, which necessarily would include the right to sue for p a s t infringements. The Court therefore will not consider the issue. G e n u in e issues of material fact remain as to whether the LLC owned the BME m a rk at the time of any alleged infringement by Ricks in this action. The Court therefore w ill deny the LLC's motion for summary judgment on its ACPA and trademark in f rin g e m e n t and dilution counterclaims. VII. DEFENDANT'S MOTION FOR SUMMARY JUDGMENT (Doc. #59/Doc. #62) D e f e n d a n t moves for summary judgment on Ricks' claims asserted in the First A m e n d e d Complaint. As to the reverse cybersquatting claim, Defendant argues Ricks will b e unable to establish legal use of the bme.com domain name. As to the second claim for re lie f , Defendant contends it has the rights to trademark protection in the BME mark, either th ro u g h its registration or through the Lanham Act, and thus made no misrepresentation re g a rd in g the domain name or its similarity to Defendant's mark. Defendant also argues th a t even if Ricks could prevail on this claim, the relevant statute provides only for in ju n c tiv e relief, not damages. As to those claims asserting fraud, Defendants argue Ricks la c k s standing to challenge the registration, the statement that Defendant owned the rights to its own marks was not fraudulent, Ricks has not been damaged, and Ricks ought to be 29

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s a n c tio n e d under Rule 11 for maintaining these claims. Defendant also requests attorney's f e e s under 15 U.S.C. § 1117(a). R ic k s responds by arguing some of the evidence on which Defendant relies is in a d m is s ib le . Ricks also argues Defendant did not acquire the rights associated with " B M E " until after the alleged infringement. As to the reverse cybersquatting claim s p e c if ic a lly, Ricks argues he must show only that his actions were not illegal under the A C P A , not the entire Lanham Act. Ricks further argues he need show only that his re g is tra tio n or use was not unlawful, not both. As to the misrepresentation claims, Ricks a rg