Clarke Douglas Walton Nevada Bar No. 9712
Case 2:08-cv-01174-PMP-GWF12345678910Walton Law Firm, PC8275 S. Eastern Ave. Suite 200Las Vegas, Nevada 89123(702) 255-9900(877) 324-1899 fax111213Document 1Filed 09/05/2008Page 1 of 27Clarke Douglas WaltonNevada Bar No. 9712Walton Law Firm, P.C.8275 S. Eastern Ave. Suite 200Las Vegas, Nevada 89123clarke.walton@waltonfirm.com(702) 255-9900Fax: (877) 324-1899Stevan LiebermanPro Hac Vice PendingGreenberg & Lieberman, LLC2141 Wisconsin Ave., NWSuite C2, Washington, DC 20007stevan@aplegal.com(202) 625-7000Fax: (202) 625-7001Attorneys for PlaintiffGreg Ricks14UNITED STATES DISTRICT COURT15DISTRICT OF NEVADA16171819222324COMPLAINT FOR DECLARATORYJUDGMENT AND INJUNCTIVERELIEFPlaintiff,2021CASE NO.Gregory Ricks4702 Johnson Creek LoopCollege Station, TX 77845v.(1) Reverse Domain Name Hijackingunder 15 U.S.C. § 1114(2)(D)(v)Bmezine.com, LLC1802 N. Carson StreetCarson City, Nevada 89701(2) Service Mark Infringementunder 15 U.S.C. § 1125(a)Defendant.25(3) Common Law TrademarkInfringement262728JURY TRIAL DEMANDED1
Case 2:08-cv-01174-PMP-GWF1Document 1Filed 09/05/2008Page 2 of 27COMPLAINT2Plaintiff, Gregory Ricks (hereinafter “Ricks”), by his undersigned counsel, Clarke3Douglas Walton of Walton Law Firm, P.C. and Stevan H. Lieberman of Greenberg &4Lieberman, LLC, for its complaint against Bmezine.com, LLC. (hereinafter “Bmezine”)567allege as follows:SUMMARY OF ACTION81. In this action, Ricks seeks injunctive and declaratory relief concerning the non-9infringement and non-dilution of Bmezine’s asserted common law trademark rights to the10mark BME arising out of a dispute over the control of the contract that controls theWalton Law Firm, PC8275 S. Eastern Ave. Suite 200Las Vegas, Nevada 89123(702) 255-9900(877) 324-1899 fax1112domain name BME.COM. Defendant Bmezine filed a World Intellectual Property13Organization (WIPO) complaint pursuant to ICANN’s Uniform Domain Name Dispute14Resolution Policy (UDRP). The WIPO panel ordered the transfer of the BME.COM15domain to Bmezine. Plaintiff disputes the results of the arbitration and seeks in this1617action to permanently enjoin Bmezine from gaining control of the BME.COM domain18pursuant to 15 U.S.C. §1114(2)(D)(v); requests that this Court declare that Ricks has19legitimate interests in and to the rights to use the mark BME.COM and the domain name20BME.COM pursuant to 28 U.S.C. §2201 and §2202; and to recover compensatory21damages that have resulted from Bmezine’s actions.22232. This is also an action for federal and common law service mark infringement,24common law tarnishment, bad faith interference with intellectual property rights and25unfair competition arising out of Defendant’s infringement of Ricks’ common law rights26to the mark BME.COM and Defendant’s bad faith attempts to interfere in Ricks27intellectual property rights. This Complaint asserts claims for service mark infringement282
Case 2:08-cv-01174-PMP-GWFDocument 1Filed 09/05/2008Page 3 of 271in violation of Section 43 of the Lanham Act, 15 U.S.C. §1125(a) and Nevada state2common law for good faith and fair dealing and for unfair competition.3THE PARTIES456783. Plaintiff, Gregory Ricks is an individual domiciled in College Station, Texas witha primary mailing address 4702 Johnson Creek Loop, College Station, TX 77845.4. Defendant, Bmezine.com, LLC is a Nevada limited liability company with aprimary business address of 1802 N. Carson Street, Carson City, Nevada 89701.9JURISDICTION OVER THE SUBJECT MATTER OF THIS ACTION10Walton Law Firm, PC8275 S. Eastern Ave. Suite 200Las Vegas, Nevada 89123(702) 255-9900(877) 324-1899 fax115. Subject matter jurisdiction of this Court is proper under 28 U.S.C. §1331 (Federal12Question), 15 U.S.C. §1121 and 28 U.S.C. §1338 (Trademark Disputes), 15 U.S.C.13§1114 (2)(D)(v) (Remedy for UDRP Suspended Domain), 15 U.S.C. §1114 (2)(D)(v)(ii)14(Reverse Domain Hijacking & Injunctive Relief), 15 U.S.C. §1125(a) (Trademark151617181920Infringement), 15 U.S.C. §1116 (Injunctive Relief) and the Declaratory Judgment Act, 28U.S.C. §2201 and §2202.6. This Court has jurisdiction over this matter pursuant to 28 U.S.C. §1332 by virtueof the diversity of the parties. The amount in controversy exceeds 75,000.7. This Court has personal jurisdiction over Defendant and venue is proper in this212223Court as Nevada is Defendant’s domicile.STATEMENT OF FACTS248. Ricks, the original registrant of the domain BME.COM, registered the domain in25the name of Motherboards.com on March 6, 2000 because it was a valuable “three-letter26.COM” domain name. Motherboards.com and other companies owned by Gregory Ricks2728are unregistered, sole proprietorships.3
Case 2:08-cv-01174-PMP-GWF123Document 1Filed 09/05/2008Page 4 of 279. Ricks was not aware of the company Bmezine or its use of the mark BME at thetime he registered the domain name BME.COM.10. Since the acquisition of the domain name BME.COM, Ricks initially used the456domain to promote his computer company Motherboards.com, which sold computerparts.711. Since as early as 2001, Ricks has used the BME.COM mark in association with8Ricks’ Internet search engine services and has established common law rights to the9BME.COM mark since that time. Ricks has a valid common law service mark with10Walton Law Firm, PC8275 S. Eastern Ave. Suite 200Las Vegas, Nevada 89123(702) 255-9900(877) 324-1899 fax11protectable rights since as early as 2000.1212. Although the actual design of the web pages changed over the years, all of the13web pages used to promote the Internet search engine services were located at14BME.COM with the BME.COM mark boldly displayed on the web pages.151613. Over a period of time Ricks used different marketing tools, which utilized17different branding opportunities, in order to promote the Internet search engine services18to the public. The current search results are derived from Yahoo .192014. On or about March 21, 2004 Ricks was contacted by Shannon Larratt, theprevious owner of Bmezine, inquiring as to whether Ricks was interested in selling the2122domain BME.COM to Mr. Larratt personally. At that time, Ricks explained that he was23not interested in selling the domain BME.COM as he was using it for his Internet search24engine services. This was the first contact Ricks had with Mr. Larratt until July 2008. In25the subsequent correspondence, Mr. Larratt related to Ricks that when he owned the26Bmezine company, he made a decision many years earlier that the company’s brand27284
Case 2:08-cv-01174-PMP-GWFDocument 1Filed 09/05/2008Page 5 of 271identity would be based on the domain BMEZINE.COM as the company was known by2its brand BM EZINE not BME.315. Upon information and belief, the assets of the Bmezine company were part of a45divorce settlement and the new owner took over in 2008.616. On March 27, 2008, Bmezine filed a federal trademark application, Application7Serial No. 77432832, to register the mark BME for the following: “Providing an online8interactive database of photos and videos in the field of body art, namely piercing,9tattoos, scarification, subincision, castration” in IC 041 and “Providing news about body10Walton Law Firm, PC8275 S. Eastern Ave. Suite 200Las Vegas, Nevada 89123(702) 255-9900(877) 324-1899 fax11art, namely, piercing, tattoos, scarification, subincision, castration through photos and12video” in IC 044. At this time, the application is still pending registration. Apparently13Bmezine is using BME for commercial Internet related services, including, but not14limited to, free email services.151617. The term BME, although originally an acronym for “Body Modification Ezine,”17has become generic and unprotectable because the term BME is commonly used to refer18to persons who go beyond body modifications and are considered “body mutilation19extremists.”2018. A review of Bmezine’s web pages located at BMEZINE.COM reveals that212223Defendant provides and distributes pornographic images of individuals with piercings,tattoos, scarification, subincisions and castrations of various sorts.2419. Upon information and belief, and according to its previous owner Mr. Larratt,25Bmezine was originally a credit card processing and hosting company and in 2004 the26company ownership changed and it began providing, among other things, the online2728database of pornographic photos and videos.5
Case 2:08-cv-01174-PMP-GWFDocument 1Filed 09/05/2008Page 6 of 27120. On or about June 9, 2008, Bmezine filed a WIPO dispute resolution complaint in2accordance with the ICANN UDRP. On or about August 21, 2008 the arbitration panel3ruled that the domain BME.COM should be transferred to Defendant.4521. On August 25, 2008 the Official Notification of the Decision was sent to all6parties and the registrar Moniker Online Services, LLC. Pursuant to the ICANN UDRP7and the August 25, 2008 Official Notification, if as a result of an unfavorable UDRP8decision a the disputed domain is ordered transferred, the registrant has ten (10) business9days after receiving the Official Notification to submit official documentation (such as a10Walton Law Firm, PC8275 S. Eastern Ave. Suite 200Las Vegas, Nevada 89123(702) 255-9900(877) 324-1899 fax11copy of a complaint, file-stamped by the clerk of a court) to the Registrar demonstrating12that it has commenced a legal proceeding against the Complainant to prevent the transfer13of the disputed domain name.1422. Bmezine’s commencing a UDRP proceeding in bad faith is an effort by Bmezine151617to interfere with Ricks intellectual property rights associated with the BME.COM markand BME.COM domain name.1823. Bmezine’s use of the mark BME for pornographic images is offensive and likely19to cause consumer confusion with Ricks’ use of the mark BME.COM for Internet search20engine services.212224. Bmezine’s use of the mark BME for pornographic images is offensive and23disparages, as well as tarnishes, Ricks common law rights to the mark BME.COM for24Internet search engine services.2526DECLARATORY JUDGMENT25. Ricks repeats and realleges Paragraph Nos. 1- 24 of this Complaint as if fully set2728forth herein.6
Case 2:08-cv-01174-PMP-GWFDocument 1Filed 09/05/2008Page 7 of 27126. A justiciable issue exists between the parties as the domain BME.COM would be2transferred to Bmezine if registrant did not file this action within ten (10) business days3of the Official Notification of the WIPO arbitration panel’s decision.4527. Ricks asserts that the registration and use of the domain BME.COM is not6unlawful because the domain was obtained under a reasonable belief that the use of7BME.COM, a random three letter domain, was fair and otherwise lawful, and without a8bad faith intent to profit from Defendant’s use of BME for an online interactive database9of pornographic photos and videos in the field of body modification.10Walton Law Firm, PC8275 S. Eastern Ave. Suite 200Las Vegas, Nevada 89123(702) 255-9900(877) 324-1899 fax1128. Additionally, Ricks asserts that the registration and use of the domain BME.COM12is not unlawful because currently, as well as on the date the domain name was registered,13Defendant’s asserted BME mark is generic, not protectable, not distinctive, and not14famous.151629. A judicial determination regarding Ricks rights is necessary and appropriate, thus17Ricks requests this Court to declare that Ricks did not register the BME.COM domain in18bad faith and that Mr. Ricks may use the domain BME.COM without restriction and to19quash the ICANN order transferring the domain BME.COM to Defendant.202122COUNT I - Reverse Domain Name Hijacking UnderThe Anticybersquatting Consumer Protection Act (ACPA),15 U.S.C. § 1114(2)(D)(v)2330. As a cause of action and ground for relief, Ricks asserts his rights pursuant to 1524U.S.C. § 1114 which allows a domain name registrant to sue an overarching trademark25owner who misuses or abuses its rights in bringing a cybersquatting action and realleges26Paragraph Nos. 1-29 of this Complaint as if fully set forth herein.27287
Case 2:08-cv-01174-PMP-GWFDocument 1Filed 09/05/2008Page 8 of 27131. On June 9, 2008, more then eight years after Ricks registration of the domain2BME.COM, Bmezine filed a WIPO complaint in accordance with ICANN UDRP3alleging that Ricks had no rights nor any legitimate interest in BME.COM, falsely45accusing Ricks of capitalizing on the alleged goodwill associated with the Bmezine’s6pornography business by driving traffic to its BME.COM site, and demanding that the7domain BME.COM be transferred to Bmezine.8932. The arbitration panel ruled that the domain BME.COM should be transferred toDefendant.10Walton Law Firm, PC8275 S. Eastern Ave. Suite 200Las Vegas, Nevada 89123(702) 255-9900(877) 324-1899 fax1133. Ricks’ registration and use of the domain name BME.COM is not unlawful. Ricks12was the original registrant of the domain BME.COM and at the time of registration, was13not aware of Defendant’s use of the term BME.1434. Ricks has a legitimate interest in the disputed domain name BME.COM because1516he uses the BME.COM mark for Internet search engine services. The web pages located17at BME.COM have never created the impression that the BME.COM domain nor the18BME.COM mark is or was affiliated or associated with Defendant.192035. Ricks asserts that his registration and use of the domain BME.COM is notunlawful because Defendant’s alleged mark is generic, not distinctive, and was not212223242526famous at the time the domain name was registered.36. Ricks requests that the Court declare that Defendants have acted in bad faith haveengaged in reverse domain name hijackers.COUNT II - Service Mark Infringement37. As a cause of action and ground for relief, Ricks alleges service mark2728infringement under Section § 43(a) of the Federal Trademark Act, 15 U.S.C. § 1125(a),8
Case 2:08-cv-01174-PMP-GWFDocument 1Filed 09/05/2008Page 9 of 271and at common law and incorporated by reference Paragraph Nos. 1- 36 of this2Complaint as if fully set forth herein.338. For many years prior to the acts complained of herein, Ricks has been456continuously engaged in the development of the BME.COM domain for Internet searchengine services through the use of various marketing opportunities.739. As a result of the extensive efforts by Ricks, the mark BME.COM has become8well known to the public as a distinctive indication of the origin of Ricks Internet search9engine services and is entitled to service mark protection and protection against10Walton Law Firm, PC8275 S. Eastern Ave. Suite 200Las Vegas, Nevada 89123(702) 255-9900(877) 324-1899 fax11infringing uses. Attached hereto as Exhibit A to Ricks Declaration (attached hereto as12Appendix 1) are examples of Ricks’ use of the mark BME.COM for Internet search13engine services.1440. Bmezine is engaged in not only providing an online interactive database of1516pornographic photos and videos in the field of piercing, tattoos, scarification, subincision,17and castration but also for commercial Internet related services, including, but not limited18to, free email services. Attached hereto as Exhibit B is an example of Bmezine’s use of19BME.2041. The use of the mark BME by Bmezine in a manner illustrated in Appendix 2 is2122likely to cause the public to believe, contrary to fact, that the services offered by Bmezine23emanate from, or are otherwise sponsored or approved by Ricks. The use of BME24infringes Ricks exclusive right in the mark BME.COM within the meaning of Section §2543(a) of the Federal Trademark Act, 15 U.S.C. § 1125(a) and at common law.2627289
Case 2:08-cv-01174-PMP-GWFDocument 1Filed 09/05/2008Page 10 of 27142. Unless enjoined by this Court, Bmezine will continue to infringe the mark2BME.COM thereby deceiving the public and causing Ricks immediate and irreparable3injury for which is has not adequate remedy at law.4567WHERFORE, Plaintiff Ricks, demands judgment against Defendant, Bmezine asfollows:8Walton Law Firm, PC8275 S. Eastern Ave. Suite 200Las Vegas, Nevada 89123(702) 255-9900(877) 324-1899 fax91.Declaring that Gregory Ricks did not register the BME.COM domain in bad faith,10that his actions do not constitute trademark infringement or dilution under United11States law, and that Ricks may use the domain BME.COM without restriction;1213142.Quashing the ICANN arbitration’s award and transfer order of the BME.COMdomain to Defendant;1516173.18Enjoin Bmezine.com LLC and any other entity, pursuant to 15 U.S.C. §1116, fromusing the BME.COM domain now and in the future;1920214.22Declare Bmezine.com LLC has infringed Ricks’ exclusive right in the markBME.COM under 15 U.S.C. 1125(a) and at common law;232425265.Award Plaintiff damages, both past and future, for interference with its contractualrights and contract expectancies relating to the domain name BME.COM;272810
Case 2:08-cv-01174-PMP-GWF16.2Document 1Filed 09/05/2008Page 11 of 27Awarding attorney's fees, pursuant to 15 U.S.C. §1117, and costs and interest toGregory Ricks; and,34567.Granting such other and further relief to Plaintiff Gregory Ricks as this Courtdeems just and proper.78Date: September 5, 2008910Walton Law Firm, PC8275 S. Eastern Ave. Suite 200Las Vegas, Nevada 89123(702) 255-9900(877) 324-1899 fax11Respectfully submitted,Greg RicksBy Counsel121314151617Clarke Douglas Walton.Walton Law Firm, P.C.8275 S. Eastern Ave. Suite 200Las Vegas, Nevada 89123(702) 255-9900fax: (877) 324-1899Stevan Lieberman, Esq.GREENBERG & LIEBERMAN2141 Wisconsin Ave., NW Suite C2Washington, D.C. 20007Telephone: (202) 625-7000Facsimile: (202) 625-70011819Attorneys for PlaintiffGreg Ricks20212223242526272811
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Motherboards.com3 of oards.com/Case 2:08-cv-01174-PMP-GWFDocument 1Filed 09/05/2008Page 18 of 27questions tosales@mssi.com Motherboards.com 2000 All rightsreserved9/3/2008 11:58 AM
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body piercing1 of www.bme.com/Case 2:08-cv-01174-PMP-GWFDocument 1Filed 09/05/2008Page 20 of 27bme.comYour Jewelry ResourceHomeJewelryDiamondsWatchesEngagement RingsRingsEarringsJewelry CategoriesFor the one you loveEngagementPromise Rings9/3/2008 12:01 PM
body piercing2 of www.bme.com/Case 2:08-cv-01174-PMP-GWFDocument 1Filed 09/05/2008Page 21 of 27Anniversary RingsTypes of JewelryRingsBraceletsNecklacesEarringsGems and StonesDiamondsSapphiresPearlsRubiesPrecious MetalsPlatinumWhite GoldYellow GoldSilver9/3/2008 12:01 PM
body piercing3 of www.bme.com/Case 2:08-cv-01174-PMP-GWFDocument 1Filed 09/05/2008Page 22 of 27Related LinksBody PiercingNavel Body JewelryBelly Ring JewelryEyebrow Body JewelryTongue JewelryNose JewelryCheap Body JewelryGold Body JewelrySexy Body JewelryPiercing JewelryGlow JewelryCeltic Body JewelryTribal Body JewelryBelly Button JewelleryCustom Made Body JewelryFavorite Categories9/3/2008 12:01 PM
body piercing4 of www.bme.com/Case 2:08-cv-01174-PMP-GWFDocument 1Filed 09/05/2008Page 23 of 27TattoosTattooTattoo FlashKid TattooTattooingTattoo SleeveMassageMassage ClassMassage Therapy CourseMassage CollegeTantric MassageMassage Therapist CollegeSpasSaunaSpa ResortSpaDay SpaNew York SpaSpa9/3/2008 12:01 PM
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body piercing6 of www.bme.com/Case 2:08-cv-01174-PMP-GWFSearch theWeb:Document 1Filed 09/05/2008Page 25 of 27Search9/3/2008 12:01 PM
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BME/World: Free homepages for BodModders1 of 2http://www.bmeworld.com/Case 2:08-cv-01174-PMP-GWFDocument 1Filed 09/05/2008Page 27 of 27Apply for a free homepage and anonymous email accountRead the rules of membershipView the HTML templateView the online helpAbout BME/World.SOME OF THE PAGES ON THIS SERVER: (Email me to be added or remove)Bert's Perforinktions Tattoos and PiercingsBonita/Christine What bodyart/body modification means to meBrad Giles' Psyko Art The Zany Crazy Mass Mindf**k WorldBrad's Piercing Photographs at BME Lots of nipples, and even some genitalsBraveone and Baby's Home Page Hardcore adult -- members only!buster current and future modsbuttrfly's bodyart pages art, wheel, and sludge the slugbuttrfly's bodyart pages art, wheel, and sludge the slugCatgirl Meat, Sex, and Meceridwen: the lady is in the building! I am an online entitiy.Claire's bodmods Massage My Ego!Cloglover's Piercing Gallery Genital Piercings and Female Nipple PiercingsCreeper's Piercing Playground Piercings, Pictures, and Aftercaredogslut's homepage Cock torture and Self-CastrationDragonfly Designs From Void and Formless Infinite: Tattoo studio specializing in tattoosDutchman Scrotal/Testicular Injection, scarification, piercing, and other body modicationsESMAN Cock & Ball Torture ScenesFemale Pumping. A woman s home Breast pumping, nipple pumping, genital pumpingfemsubmissionsex IRC channel homepageFrank's Body Art Page "Just another Body Art Page"Get My Balls! A site for gay men fond of castrationGolgotha A place of torment or torture, A hill outside ancient Jerusalem where Jesus was crucified, andMe.Gothic Tokyo Modificatio Do-It-Yourself PageHeidi Anderson's Munches I Have KnownInky's Spot Kevin's TattoosIt's my page. and jeffs. Deal With it!!! Tattoos, Piercing, and ImplantsJoeSuper's Home Page A tribute to septum pierced girlsJosh Burdette A Freak Loose on the Web: Here there be Dragons and RABbitsLet me hurt you *Girls*Kick*Ass*LoBalls! Split-ring Ball Weights and Princes WandsMarkus welcome to my worldMischa's Piercing Site Piercing in Sydney, AustraliaModified: Thy body is thy temple, thou shalt adorn it. Reasons and ThoughtsExhibit W.75/27/2008 8:58 AM
14. On or about March 21, 2004 Ricks was contacted by Shannon Larratt, the previous owner of Bmezine, inquiring as to whether Ricks was interested in selling the domain BME.COM to Mr. Larratt personally. At that time, Ricks explained that he was not interested in selling the
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2 3 2013 Our renowned faculty at the Walton College had a spectacular year when it comes to appointments, research, service, awards and recognitions. Walton College & Department News Our Faculty During 2012 Gary Peters is the Masters of Accounting Program Director. Vernon Richardson is the Department Chair and serves as a member of the Walton College of Business Executive Committee.
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The name ''Fort Walton'' was applied by Willey based on his work at the Fort Walton temple mound site (8Ok6) on the coast at Fort Walton Beach (in the far west corner of the region depicted at bottom in Figure 1). By now it is clear that this type site is not an appropriate one as it is actually affiliated with the
