Is it TM violation to register celebrity name?

[TechMan]

Hi,

If I purchase a domain of some celebrity name like madonna.com, is it illegal?

Thanks

 

[Sonny Banks]

Yes.

 

[Stian]

If it's a generic first name then there's nothing illegal about it. It's up to the complainant to prove that the domain name is infringing, so buying Brad.com or Britney.net shouldn't get you in much trouble as long as you stay away from the respective celebrities content-wise.

If you're buying AngelinaJolie.com or BritneySpears.com then it will obviously get you in trouble.

 

[jklein]

I believe it has to do with how you use the domain. If you try to profit from someone's name or identity, you are asking for trouble. If however you registered a celebrity name and created a non-profit fan site, then the line is a bit more gray.

I've often wondered about the legalities of fan sites. Does anyone here have any experience with developing fan sites? Have you had any problems with them legal wise?

 

[dvdrip]

Really?

Yes.

Illegal is a strong word.
Things are simple and complicated at the same time.
If you have a non-profit fan website you are most likely to win a UDRP.
If you have PPC you are most likely to lose.

 

[cyberlaw]

Hi,

If I purchase a domain of some celebrity name like madonna.com, is it illegal?

Thanks

These cases can go different ways. Check out some of the situations where domain holders prevailed:

http://domains.adrforum.com/domains/decisions/220007.htm
http://domains.adrforum.com/domains/decisions/237446.htm
http://domains.adrforum.com/domains/decisions/944826.htm

But, also see this recent decision:

http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0057.html

Good luck.

 

[Gerry]

I believe it has to do with how you use the domain. If you try to profit from someone's name or identity, you are asking for trouble. If however you registered a celebrity name and created a non-profit fan site, then the line is a bit more gray.

It does not matter how you use it. Many cases have awarded the celebrity their domain purely on the basis of that domain name that someone else owns as depriving them of their birthright.

I have actually seen this wording with some judges decisions in cases involving european football (soccer) stars. It is a simple matter of someone owning someone else's name.

Very recently J Lo won two domain names.

Even dead celebrities can be an issue. Many families and heirs are entitled to lifetime rights. The two that immediately come to mind are Elvis and Houdini. Hmm, just realized these two are so famous that one is known by just his last name and the other just by his first name.

 

[TechMan]

Thanks cyberlaw and Doc Com!

 

[marcorandazza]

If I purchase a domain of some celebrity name like madonna.com, is it illegal?

Most likely - yes. If you are actually planning on launching a fan site or a criticism site, you might be able to get away with it.

Here is an incomplete list of personal name decisions that I try and keep up to date:

http://randazza.wordpress.com/2007/09/22/personal-names-and-the-udrp/

However, if you're relying on how the UDRP decisions come out on this issue, you're only doing half your homework. If it is a .com, the domain will be subject to US law as well, and 15 USC s 1125(d) applies to personal names of celebrities, and 15 USC s 1129 applies to all personal names.

Naturally, if you are in Pakistan, I would imagine that you would be able to keep your assets away from a US lawyer, or just that it would be too much of a pain in the ass to track them down. However, if you have a large .com portfolio, don't think that a good lawyer couldn't foreclose on your domain names for unpaid judgments.

 

[ecomindia]

if you talking about celebrity , all depends on his/her promoter and personal manager PR skills ;-)

so many cases now and then, if we google such cases, some are hard to believe on the judgements , few which the celebrity never thought of winning and few where celebrity never thought of loosing and had to do out of court settlements.

Every year, it is increasing 20-30% .

In India, One of the leading Legal asscoaites commented :

Ordinary consumers/users seeking to locate the functions available under one domain name may be confused if they accidentally arrived at a different but similar website which offers no such services. Such users could well conclude that the first domain name owner had misrepresented its goods and services through its promotional activities and the first domain owner would thereby lose their custom. It is apparent therefore that a domain name may have all the characteristics of a trade mark and could found an action for passing off"

In Aisan countries, such legal issues are not taken to the court and niether the celebrities do much care of that .

But, few cases of judgements were done keeping indian sentiments a major role (my personal opinion) specially when it comes to .IN and cctld (local laws was).

Commenting on the issue of passing off, the court observed that “it is an action not only to preserve the reputation of the plaintiff but also to safeguard the public.” The court held that “the appellant is the prior user and has the right to debar the respondent from eating into the goodwill that it may have built up in connection with the name.”

. please add to above post.

 

[azanmi]

How about a unique first name?

If it's a generic first name then there's nothing illegal about it. It's up to the complainant to prove that the domain name is infringing, so buying Brad.com or Britney.net shouldn't get you in much trouble as long as you stay away from the respective celebrities content-wise.

If you're buying AngelinaJolie.com or BritneySpears.com then it will obviously get you in trouble.

 

[dvdrip]

What do you mean by unique? A name that only one person has?

 

[Gerry]

I don't know why people won't just stay up to date on domain industry news.

About 2 weeks ago JLo (Jennifer Lopez) was awarded her names (jenniferlopez.net and jenniferlopez.org. - Oh look, they are not dot com's. So much for all the experts out there saying no one would want it in other extensions) Sigourney Weaver is in the process of petitioning for the same thing.

So why are people just not getting the point here? Many of these celebrities don't know a thing about WIPO and UDRP so suddenly you may find your self in a real court with real lawyers and judges and paying real fines.

 

[azanmi]

No not only one person but definitely not a common first name

 

[Jeffreyw]

Alanis.net was transferred to Alanis Morisette. The original owner was profiting from the domain by parking it using "alanis" or some music related keywords.