Celebrity Name Domain, email received

[WhoWhere]

Hello,

I own a couple of celebrity domains in .info (FirstnameLastname.info). I've just been contacted by e-mail by a law firm who represents one of the celebrities. They claim that the domain in question, which wholly incorporates the first and last name of the celebrity may cause individuals to be confused and to mistakenly believe there is some official affiliation or endorsement between me and the celebrity. So they want written assurance that I will stop using the domain. They also want me to transfer the domain name to them and they mention they will pay the transfer fees.

The domain currently holds a small website which contains a biography and a picture of the celebrity. That's all.

This law firm holds the .com, .net, .org and .biz domains which contain the celebrity name. The .us is registered by another individual.

The law firm also holds the .com and .net *hyphen* domains containing the celebrity's first and last name (firstname-lastname.com) The .org has register.com's data in the whois and is registered since 2001 and until 2011. The .us and .biz are AVAILABLE to register.

So why do they want this domain and what do I do? I'd prefer to keep the domain and continue where I left off with it's development.

Thank you.

 

[VisualDigits]

I think you have a lost case, just give it to them or they will take it by force.

 

[WhoWhere]

I can't help wonder:

1. Why they go after registered domains BEFORE registering available domains containing the first-last name of their client.

2. Why they didn't go after the domain registered in 2000.

Out of all possible domains, the one I own is the only one that contains a small website. The others are registar parking pages and the ones they hold don't resolve at all. Maybe that's the reason?

 

[WhoDatDog]

Tell them that you do not believe there is confusion and that you have no knowledge that the person in question has registered a trademark in their name. Let them know that you will take your chances with a UDRP case (as to whether they qualify as a serivce mark).

.....and you plan to continue the unofficial "general information site", but if they really want the name they may have it for $3,000. Don't listen to people who have no experience in these types of names. Only a fool would give up an individual's name due to an email request. There is nothing wrong with having a general information site. Check out BenAffleck.com, BruceSpringsteen.com, and then type in TomCruise.com.

You may or not win the UDRP dispute, but you are a sucker if you give up the name without compensation.

 

[WhoWhere]

Great advice, WhoDatDog.

I was actually doing a little research before reading your post. Bruce Springsteen fought for BruceSpringsteen.com but a WIPO decision in 2000 favoured against him.

This celebrity also fought for the .com and won after the National Arbitration Forum Panel ruled in his favour but he initially lost in a California court.

 

[jdk]

Do you know for a fact this is a law firm that has emailed you? I would tell them whatever and then say you wish to be contacted only by registered mail.

It may be someone trying to tell you to drop the name so they can register it.

 

[denny007]

Why they go after registered domains BEFORE registering available domains containing the first-last name of their client.

Because first they need it to be registered so they can charge their client huge money.

Just find for them some cases about fan pages, they have no chance to take it - fan page at .info domain... You may ad notice at the bottom, that it is NOT official page about that celebruty...

 

[WhoWhere]

Do you know for a fact this is a law firm that has emailed you? I would tell them whatever and then say you wish to be contacted only by registered mail.

It may be someone trying to tell you to drop the name so they can register it.

The email is 100% legit, I've done all necessary checks. It contains a PDF attachment which is the scan of a printed document and I believe they appear to have sent it by regular mail as well. They've even taken a screenshot of the homepage and printed it.

Why they go after registered domains BEFORE registering available domains containing the first-last name of their client.

Because first they need it to be registered so they can charge their client huge money.

Just find for them some cases about fan pages, they have no chance to take it - fan page at .info domain... You may ad notice at the bottom, that it is NOT official page about that celebruty...

Exactly, there are hundreds of fansites built on domains that equal the celebrity's full name and that's supposed to be a "fair use" situation..

 

[DNGeeks]

So why do they want this domain

Simple, the name is someone else's property and you don't have any rights to that property in any way, shape or form for any purpose.

Some people need to stop giving advice on domain disputes. Do not request money. If you do that proves that you are using the name in bad failth which is one of the 3 items they must prove to win a UDRP. You may or may not have legitimate rights, that depends on the panelist. And the name is not only similar, it is identical (we all know extension means nothing in regards to a dispute). So now you've almost automatically lost. Yes someone could feel sorry for you and you could win, but by asking for money you kick yourself in the arse.

No, it's not the money they care about. It would be cheaper for the artist to simply pay you the 3k than to pay their lawyer to submit a UDRP. It's the principle, and it's further fuel for future cases to protect the artists name.

As for the disclaimer, it should be on the top of the page, so confusion is automatically ruled out.

 

[WhoDatDog]

One of the many goals of people in the domain business is to make money. Lets get something straight....THEY CONTACTED YOU FIRST. You have registered the name in good faith and have made plans for a general information fan site. If ANYONE wants the name from you they are welcome to make an offer.

The general trend for celebrity names is in favor of the celebrities, but that does not mean that you cannot win your case if they file a dispute. When you offer to sell the name to someone who has contacted YOU about a domain that does NOT make for a prima facie cause of Bad Faith. Now, if you registered the name on Monday and contacted the celebrity's Attorney on Tuesday about selling them the name for $3,000 then that would certainly be enough to show Bad Faith at registration. Also, if they file a UDRP dispute then any offer to mitigate the dispute (i.e. sell the name for any amount) will not be held against you at that point because it is in the context of settling a dispute. Therefore, when someone contacts you about a name that you feel you are entitled to then you should be smart, but always remember that, for the most part, the name of the game is to make money, and you will make much more money by asking for $3,000 now than you will by not asking.

Tell them the transaction will be immediate ( use Escrow.com or even transfer the name first...don't get too cute)......you need to make it as smooth a transaction as possible. Start at $3,000 and work your way down to a few hundred if you have to, but do not drop down immediately.

This law firm will likely make more money off of the client by filing a dispute, so if that is their intention then it doesn't matter anyways.

There aren't too many people who have read more domain name disputes than me, particularly individual name disputes. My goal is always to conduct a lightning quick transaction at the best price possible. Being afraid to ask for money is a surefire way to never make a profit. Granted, it gives them a little ammunition in a UDRP dispute, but not as much as you would think because they made the initial contact. If they really want the name and aren't out to run up a bill on their celebrity client then you will get paid off and everyone will be happy.

You can start off every response with "I hadn't planned on selling, and was planning on putting up a general information fan site"......fill in the blank, have fun, and make money. There are a lot greater wrongs in the world than this. I could walk into any courthouse in the country right now and change my name to any celebrity I wanted to. It all comes down to trademark/service mark law, and each case gets decided on its own facts.

Congrats on seeing value in a name that someone else wants......that's the name of the game.

 

[Dave Zan]

http://gigalaw.com/articles/2000-all/hoffman-2000-09-all.html

http://gigalaw.com/articles/2001-all/hoffman-2001-10-all.html

 

[DNQuest.com]

Tell them that you do not believe there is confusion and that you have no knowledge that the person in question has registered a trademark in their name. Let them know that you will take your chances with a UDRP case (as to whether they qualify as a serivce mark).

.....and you plan to continue the unofficial "general information site", but if they really want the name they may have it for $3,000. Don't listen to people who have no experience in these types of names. Only a fool would give up an individual's name due to an email request. There is nothing wrong with having a general information site. Check out BenAffleck.com, BruceSpringsteen.com, and then type in TomCruise.com.

You may or not win the UDRP dispute, but you are a sucker if you give up the name without compensation.

can you please stop giving out misinformation please? People, do not take this post and something good.

There are valid fan sites out there, yes you can fight it, I have. But 99% of all "fan sites" are for the sole pupose of making money. That is morally wrong. fine, you are in the business to make money, that's all well and good, but do not mis lead people thinking that being immoral and unethical is the way to go. This is the reason domainers have a bad rep, people whose only purpose is to make money off of other people's name. If you want to give advise, do to the Immoral and BS section of this site, not the legals.

As far as OP is concerned, I don't completely agree that you registered the name in good faith. You put up a single "fan site" page. Well, fan sites are interactive and keep up with the times. You give current news and have a MB setup where other fans can interact. The other names lost in WIPO because they are truely fan sites, not some BS someone put up to try to make money in the end.

As far as why the celebrity did not register the domain, who cares? What does any of that mean?

 

[WhoDatDog]

Buying the name of a celebrity in any extension is no more morally wrong than what 99 percent of Attorneys do every single day. Let's get real....business and law is rough and tumble. Attorneys represent Murderers, Rapists, Drunk Drivers and the like every day, and you can't possibly believe that they think their clients are innocent even a fraction of the time. If someone wants to buy a celebrity name because they would rather have the name than the $8 it costs to register it, then they should do it. In the world of Law and Trademark Law there is very little that is less morally wrong than buying a simple domain name and putting a parking page with a for sale sign and some general links on it. Star Magazine, The Enquirier, the Nightly News, and most every other form of media makes tons of money off of celebrities. That is the society we live in. By definition, if the person is so famous to begin with, then you probably won't be able to register the name in a valuable extension. And anyone who really confuses the public or otherwise dilutes a service mark will likely lose the name in a simple dispute that the celebrity can initiate for just over $1,000.

 

[DNGeeks]

inane rantings about what lawyers do have nothing to do with a UDRP.

As for those magazines, they have permission to take and print images of said celebrities.

Make some sense before you post and post good advice, not rantings about murderers, rapists and drunk drivers. This thread is about a C&D letter and none of your post has anything to do with it.

Read some wipo decisions. In most cases that I have seen a parked domain is almost always found to be used in bad faith. Any almost every case that i've read where someone has asked for large sums of money has again been found to be used in bad faith.

Yes the lawyers DID contact you. NOT to buy the name however. They would be total idiots if they did that then you WOULD have a defence if you asked for money. However you were contacted and told to stop using it and hand it over. By asking for money YOU are now demonstrating bad faith by trying to profit from their name simply because you own the domain with their name on it.

It's simple, register someone else mark and you will probably lose.

Lastly, you don't understand the phrase "confuse the public". It's not a deception that is necessary, only the possibility that someone could think that the site in question DOES in fact belong to, or is authorized by, the celebrity in question.

 

[WhoDatDog]

You are wrong. Star Magazine, News Programs, and everybody else use Celebrity Images without authorization. It is called Fair Use. If someone truly has a trademark or service mark then they will win the name in a dispute.

I have read every single WIPO case there is and the trend is in the celebrities favor. The rules are also contradictory. If you do nothing with the name they will hold it against you, if you put up general links they will hold it against you, and if you put up similar links they will hold it against you.

We differ as to the moral and legal ramifications to buying a simple domain name of a person who has a level of notoriety. These same people attach their names to garbage products all of the time by way of commercials, endorsements, etc. They lie about their use of these products, and only endorse them because the offer is high enough. None of this bothers me....it is the reality of our economy. If they want to change the rules then all they have to do is to require ID when buying individual names.

Trademark law is not that hard to understand. And what are the actual damages? These sites don't get that much traffic and clicks, so who really cares? Most every celebrity could just pay a thousand or two and get the names if they really wanted them. It is not enough to say: "you are not known by this name and therefore you have no right to it'.

People are free to register any name they want. Names that are obvious trademark infringers, and that have measurable detrimental impact on the trademark are transfered to the trademark owner without much effort, so I fail to see where the problem is. The system works fine and people who buy individual names can do so for whatever reason they so desire. If they are forced to argue their "good faith" intent in a dispute, then it is no different than any other legal defense in the United States. That is the system....the burden is on the accuser/complainant.

 

[GT Web]

Buying the name of a celebrity in any extension is no more morally wrong than what 99 percent of Attorneys do every single day. Let's get real....business and law is rough and tumble. Attorneys represent Murderers, Rapists, Drunk Drivers and the like every day, and you can't possibly believe that they think their clients are innocent even a fraction of the time.

Ignorant Post of the Year Award

This thread has nothing to do with the morality of lawyers.

There aren't too many people who have read more domain name disputes than me, particularly individual name disputes.

After reading your last post I find that post quite hard to believe.

The bottom line is this: you either hand it over and move on, or attempt to agree on a price with the celebrity's legal council. If that fails, try and defend yourself at WIPO and if that fails, you hand the name over.

It all depends how much time/work you want this name to potential cost you.

 

[DNGeeks]

Keep on ranting about things that don't matter, it just proves that you have nothing to base your claims on about asking for money. What do endorsements have to do with a C&D or UDRP?

Yes people are free to register almost any name they want. But read the service agreement before you say that. Require ID to register a name? You're required by the service agreement to provide your correct name/address.

That is not called fair use, that is called in plain sight. However photographers at events have permission to be there and take those images. But when someone steps over the line and invades privacy to take images they get sued.

But the whole issue here, is your suggestion of asking for money because someone was sent a C&D. Again I will repeat that a C&D is not a request for a sale and any offer of sale will hurt the owner in a UDRP.

 

[DNQuest.com]

Buying the name of a celebrity in any extension is no more morally wrong than what 99 percent of Attorneys do every single day. Let's get real....business and law is rough and tumble. Attorneys represent Murderers, Rapists, Drunk Drivers and the like every day, and you can't possibly believe that they think their clients are innocent even a fraction of the time. If someone wants to buy a celebrity name because they would rather have the name than the $8 it costs to register it, then they should do it. In the world of Law and Trademark Law there is very little that is less morally wrong than buying a simple domain name and putting a parking page with a for sale sign and some general links on it. Star Magazine, The Enquirier, the Nightly News, and most every other form of media makes tons of money off of celebrities. That is the society we live in. By definition, if the person is so famous to begin with, then you probably won't be able to register the name in a valuable extension. And anyone who really confuses the public or otherwise dilutes a service mark will likely lose the name in a simple dispute that the celebrity can initiate for just over $1,000.

so?

I have read every single WIPO case there is and the trend is in the celebrities favor.

If you actually read them, you know exaclty why the "trend" favors teh celebrities, the domains were used in bad faith.

The rules are also contradictory. If you do nothing with the name they will hold it against you, if you put up general links they will hold it against you, and if you put up similar links they will hold it against you.

You mean if you register a TM and do nothing to show your interest in a domain, it is held against you? That means you were not using it with the intent of "good faith". If you don't use it in "good faith", then you use it in "bad faith"

I have every WIPO decision on my PC (up to last month, I need to update it). I have also fought seccessfully in retaining a celebrity name (agaisnt 2 set of lawyers and a financial advisor).

As far as your rantings, please go to the "BS and immoral" area of this website to post please.

 

[WhoWhere]

I seem to have caused a bit of turbulence.. I'm sorry, that wasn't the intention. Thank you all for your replies and messages so far. My decision is to keep the domain name and fight in UDRP if necessary, regardless of my chances of winning. That because I believe in my fair use registration of the domain name. I have sent them an email reply with my arguements and decision and I did not ask for any money. I'm looking forward to their reply (although I don't expect an "ok" from them) and I will keep this thread updated.

There are THOUSANDS of FirstnameLastname.com, .net or etc fan sites out there. What would happen if one by one, all domains would be disputed? That's not where we want the Internet to go I believe.

As far as OP is concerned, I don't completely agree that you registered the name in good faith. You put up a single "fan site" page. Well, fan sites are interactive and keep up with the times. You give current news and have a MB setup where other fans can interact.

That's because I'm not done with developing the site, of course. I've just paid a writer for the biography, placed it online and generated a couple of backlinks so that Google becomes aware of the site while I develop the rest.

 

[DNQuest.com]

Just to be real, you do need to show interest. A single page with a picture won't cut it, so the sooner you get something real up, the better.