Musician wants my domain name - who is a good lawyer?

[jberryhill]

But only if you are a someone, at least this is what you seem to be saying. As i remain who i am, trademark or not yet you said the UDRP wouldn't apply to my legal name as its limited to trade or service mark rights.

What I am saying is that if your name functions as a trade or service mark, then you'll have a shot at making out the first element of the UDRP.

Now, let's take John Berryhill - the chef in Boise, Idaho, as an example. His website is here:

http://www.berryhillandco.com/

He is so well-known in that area, that I once got a call from someone who was trying to arrange a corporate luncheon.

There is utterly no question in my mind that "BERRYHILL" functions as a trade or service mark in the State of Idaho for a variety of culinary goods and services. If he wanted to challenge my registration johnberryhill.com, he'd have a high probability of establishing the first criterion of the UDRP - "John Berryhill" is a well-known caterer, chef and restaurant operator in Idaho.

Now, I also know John Berryhill the insurance agent in Modesto, CA. He doesn't use "John Berryhill" or "Berryhill" as a trade or service mark. He would not satisfy the first element of the UDRP.

(The reason I know these folks, btw, is I provide free email to anyone named John Berryhill. I know about ten or so.)

The thing is - it is immediately apparent that I registered johnberryhill.com because it happens to be my own name, and I happen to use it for the things that I do. These things, btw, have utterly nothing to do with preparing and serving food. I can toast Pop-Tarts, and that's about it. Most of the time, I don't even toast them.

Now if my name was Bob Dobbs, and I registered johnberryhill.com and put up a website that related to food service in Idaho then, yeah, there would be a genuine issue about whether my intent had something to do with exploiting the goodwill that John Berryhill has developed in connection with fine dining out there.

On top of all of that, there is Berryhill Baja Grill, a chain restaurant in Texas, which DOES have federally-registered rights comprising the word "BERRYHILL" as a trademark for restaurant services. Depending on how fast and far this business has spread, there may indeed someday be a trademark conflict between Berryhill & Co. in Idaho and Berryhill Baja Grill in Austin, Texas.

But none of that stuff about whether a person is a "somebody" has much to do with the situation you have here in which it is utterly clear that your motivation for registering the domain name arose from this person's celebrity or whether you knew about it. Your entire point was that you registered the person's name out of a motivation arising from your knowledge of that person's notoriety - whatever degree of notoriety that may be.

The only question is whether you would fall into the sort of "fair use" situation described in such cases as the Ninth Circuit's New Kids On The Block decision and others like it. In making that kind of determination, what is going to matter is the totality of circumstances - How many domain names like this do you have? What are you doing with them? What's going on at the website? Is it clear that this is a non-authorized fan site? And so on.

These are fact-intensive issues, and can really chew up a lot of time. There could be all sorts of factors that weigh in favor of a fair use determination. The typical situation, though, where someone has registered the name of a celebrity known to them, and has put up various revenue-generating links without so much as a pass at facilitating the kind of community building, newsletters, and other things normally associated with fan activity... in that situation, the domain registrant is going to lose. But that's also why I question in these situations - if you really liked the guy so much that you set up a fan website, then why are you so testy about being contacted by his representatives?

But seriously, you look around this board and you'll find people selling domains like cities, countries..

Geographic terms are not trade or service marks.

The "Delaware River" does not own or derive income based on its fame. It does not have rights. It is just a geographic designation.

Humans, and in particular celebrity humans, do have personality rights. You can refer to them as humans; you can report news about them; and so forth. But there is a point at which deriving income based upon their reputation is an unfair usurpation of their rights of publicity.

Things don't have rights. People do.

 

[Dave Zan]

So...did you make money out of that site, as DNQuest asked? Because if you
did, your chances of keeping the domain name has just gone down.

We may live in free countries, but certain lines have been drawn to respect all
and any aspects of parties' rights. Unfortunately you're potentially crossing it.

 

[Raider]

Many celebs, porn actors, singers and well knowns have been very successful in getting there domains from cybersqatters. I personally have not reg'd any, not because I'm afraid they will take them away, but because I have no right profiting off somebody elses fame.

Face the fact that your going to lose this domain, my advice is to try to get what you can and move one. This musician is going to spend a few grand in the legal process to get the domain back, I suggest you reply back and put forward something like a $1000 asking price and see if he bites, if he refuses and goes the legal route, then its a principal issue, and you wont get more than reg fee for it.

 

[DomainsInc]

No, I've not made any money from the site and i keep getting called a cybersquatter but how am I a cybersquatter when i have run an ad free fan site on the domain for almost 8 years? I just want something for all the work I've put into it and find it insulting that someone who is a millionaire can't dig into his deep pockets a little bit and send a little of that good fortune my way for someone who has never has had nothing but good intentions for the domain.

 

[Raider]

Unfortunately the name holder doesn't always see it that way, especially a well known where many are using there name. Whether you profited from it or not, you have no legitimate right to it, I suggest you take my advice and get what you can from it, price it below what it would cost him in legal fees, if you price it above, the risk of you getting nothing is very likely.

 

[DNQuest.com]

No, I've not made any money from the site and i keep getting called a cybersquatter but how am I a cybersquatter when i have run an ad free fan site on the domain for almost 8 years? I just want something for all the work I've put into it and find it insulting that someone who is a millionaire can't dig into his deep pockets a little bit and send a little of that good fortune my way for someone who has never has had nothing but good intentions for the domain.

The bolded statement make you a cybersquatter, at least in some eyes that could decide your fate. A true fansite has no intention of making a cent. And just to clarify, did you bring in any money (as opposed to making money as in making a profit? Some think adsense, PPCs or other forms of revenue to pay for renewal fees and hosting is not making moeny, you actually are making money, just not a profit. There is a difference), no ads, no PPC links (also deep links that do make you money), no Adsense. You do it for the love, not the big payoff at the end.

I suggest you take my advice and get what you can from it, price it below what it would cost him in legal fees, if you price it above, the risk of you getting nothing is very likely.

Just be careful how you approach this, it could be used against you. You should always maintain that it is not for sale, you should maintain you do it for the pure love of the celeb. Staet your reasons for having it and why you maintain the site. Don't seem to eager to sell and make them approach you with an offer you can't refuse.

 

[Raider]

Just be careful how you approach this, it could be used against you. You should always maintain that it is not for sale, you should maintain you do it for the pure love of the celeb. Staet your reasons for having it and why you maintain the site. Don't seem to eager to sell and make them approach you with an offer you can't refuse.

I would agree with you to let the buyer make the offer first, I wasnt thinking about a potential civil liability....I doubt it would happen in this case, but you need to cover yourself in case it does.

 

[DomainsInc]

The bolded statement make you a cybersquatter, at least in some eyes that could decide your fate. A true fansite has no intention of making a cent. And just to clarify, did you bring in any money (as opposed to making money as in making a profit? Some think adsense, PPCs or other forms of revenue to pay for renewal fees and hosting is not making moeny, you actually are making money, just not a profit. There is a difference), no ads, no PPC links (also deep links that do make you money), no Adsense. You do it for the love, not the big payoff at the end.



Just be careful how you approach this, it could be used against you. You should always maintain that it is not for sale, you should maintain you do it for the pure love of the celeb. Staet your reasons for having it and why you maintain the site. Don't seem to eager to sell and make them approach you with an offer you can't refuse.

You make some good points. No adsense, no banners, no revenue whatsoever. And yeah, you do it for the love of the music but its sucks to put all that work into it for years to have it snatched away for nothing.

 

[stuartsdomains]

Hey domainsinc.

Dont let them have the name without them giving you good money for it.

keep hold of the name until they are just about to take you to court, then offer it to them for what the court cost would be.

In the UK that would be approx £3500, they would rather give you that than go to court, of course prior to this offer them the name for £5000.

Whatever figure you get from the above options, you have made an excellent profit.

Dont worry about all the people that say its wrong and dishonest, because most would do the same, everyone is out to make quick cash.

I once had a famous name parked on a porn page and made lots of lovely money before i sold the name to the person for 50 times the reg fee.

Its a cut throat world so you gotta do what you gotta do.

I wish you good luck my friend.

 

[DNQuest.com]

You make some good points. No adsense, no banners, no revenue whatsoever. And yeah, you do it for the love of the music but its sucks to put all that work into it for years to have it snatched away for nothing.

If that is truly the case, then you could have a good case on your hands. They need to prove bad faith and satisfy all 3 criteria of a UDRP in order to be successful. If you really did not have any bad faith, chances of winning increase.

 

[Raider]

If that is truly the case, then you could have a good case on your hands. They need to prove bad faith and satisfy all 3 criteria of a UDRP in order to be successful. If you really did not have any bad faith, chances of winning increase.

There are other ways to show bad faith without showing monetary profit, they can say that his motive for the fan site was to resell it at a future date to the named person for a profit, He has NO legitimate interest in this domain what so ever, other than his claim of being a fan. He's using another persons name which is private, not a public city, state or acronym that he trys to compares it too.

Its a cut throat world so you gotta do what you gotta do

Attitudes like this is what gives us domainers a bad name....I dont think any of us want to be stereotyped this way....The majority of us dont shake down people for domains we have in there name, the ones that do are far beneath the ones that dont.

 

[Dave Zan]

Attitudes like this is what gives us domainers a bad name....I dont think any of us want to be stereotyped this way.

Personally I don't bother with that. You can't convince all Neo-Nazis that not all
Jews are out to take over the world.

I just ignore those people who insist they're right. The only time I take notice is
if they somehow force the issue down my throat, and I take it from there.

 

[DomainsInc]

There are other ways to show bad faith without showing monetary profit, they can say that his motive for the fan site was to resell it at a future date to the named person for a profit, He has NO legitimate interest in this domain what so ever, other than his claim of being a fan. He's using another persons name which is private, not a public city, state or acronym that he trys to compares it too.



Attitudes like this is what gives us domainers a bad name....I dont think any of us want to be stereotyped this way....The majority of us dont shake down people for domains we have in there name, the ones that do are far beneath the ones that dont.

Well that seems like stretching it. You'd think after 8 years i would of gave up if i was bought it to resell later. I didn't get into domaining until much later. I only wish i was buying names up in 98/99.

Also, i wasn't trying to compare them in a legal sense, just that the entire domaining business is built around selling names that the people selling them have nothing to do with their demand. Someone selling cameras.com didn't invent the camera, someone selling newyork.com didn't make the city famous, ect. i realize the law doesn't look at it the same way but its the same basic idea, like it or not.

 

[DNQuest.com]

There are other ways to show bad faith without showing monetary profit, they can say that his motive for the fan site was to resell it at a future date to the named person for a profit, He has NO legitimate interest in this domain what so ever, other than his claim of being a fan. He's using another persons name which is private, not a public city, state or acronym that he trys to compares it too.

Actually, having an active fansite used in good faith DOES give the domain owner interest or rights to the domain. If he had it for 8.5 years and actually kepted it active about the celeb with no bad faith. He did create that interest and fansites have won many times. As far as proving wanting to resell it later, the complainant must prove that and it is very hard to prove unless there was a for sale sign or offered for sale somewhere. I have dealt on this issue personally and I still have my fansites, even after 2 sets of lawyers and a financial advisor came after me. They relented and gave me pics to put up on the site. And, this celeb have won a high profile case about his name against another celeb with a very similar name.