trademark question

[princehull]

Hello

Would it be considered a trademark violation if you had a domain, for example disneyblog.com or nyyankeesforum.com, and set it up as basically a fan site for fans to blog or discuss disney or whatever?
Thanks!

 

[Deleted member 5660]

It could be, it is all very complicated. It usually boils down to whether you can afford to fight a lawsuit should they decide to file one.

 

[Delton77]

I think it is better to hang on to these types of names and wait and see if they contact you with an offer. I have several Miley Cyrus domains and have been contacted by her attorney's and at first they told me I had to surrender them. This is not true since they are not parked and making no income. Now we are trying to work some things out and we will see where it goes. There has been a huge change in their overall attitude. Keep you posted.

 

[Deleted member 5660]

This is not true since they are not parked and making no income.

Who told you that? Some cases like this have decided based on the argument that the only reason you got the names was to sell them whether they are parked, set up as web sites, or whatever. Also, an article from a domain trademark attorney:

http://www.circleid.com/posts/personal_names_politics_and_cybersquatting/

"The ACPA does provide that personal names, if protectable as marks, are covered by the cybersquatting provisions of Section 43(d). Moreover, personal names that are not protectable as marks are also protected if registered with the specific intent to profit from such name by selling the name for financial gain. 15 USC 1129."

If they file a suit a law firm may want $25K or more for a retainer.

Good luck!

 

[flamewalker]

As KF pointed out, protectable names such as "Cher" could be taken regardless. The more famous the mark the more careful you have to be. Often times if it is a fan site and not made to make money, you can get away with it. Sometimes the best way to find out is to actually ask the TM owner. Sometimes they will tell you sure, but don't do 'xyz', or they will just say no. It's really up to them what they consider ok (to a degree).

 

[EnricoSchaefer]

You would have to have a non-infringing use to even have a chance at avoiding a claim of cybersquatting. Fan sites can sometimes be a non-infringing use. But it often depends on the domain name itself (does it indicate that it is a fan site?).

Check out this index of fan site decisions. As you will see, there is some dissent. And the ACPA may find you liable even if the UDRP does not transfer.

Commercial use is only one factor under the bad faith test. We recommend to our clients that they avoid these types of domains. Some companies are taking a hard line and it will take more than transfer to get you out from under the potential liability.

 

[marcorandazza]

Enrico points out something that doesn't seem to be discussed enough - the difference between the ACPA and the UDRP. Proving a UDRP case is harder than proving an ACPA case. Under the UDRP, you need to prove bad faith use and bad faith registration. Under the ACPA you need to prove one or the other.

 

[jberryhill]

Under the ACPA you need to prove one or the other.

...plus competent jurisdiction.

 

[marcorandazza]

True... but there is always the in rem portion of the ACPA - which is pretty generous in that respect.