legal issues and private registration - DNForum - Domain Sales, Domain Forum, Domain Appraisals, Domain Registrars

**domainstrike** · 04-06-2006, 11:03 PM

What happens if someone (ie a company, lawyer, etc) wants to contact the owner of a name about a legal issue but their address is shielded behind private registration? Is there a way for them to get a message to the owner fairly quickly ?

** one more thing, how does it work if someone in the US lets say, registers a name that is possibly trademarked outside the US (ie china, japan, etc).... are the trademarks international and can legal action be pursued internationally from the other half of the globe? In my particular situation I am wondering about the name of an asian movie. Thanks !

**DNQuest.com** · 04-07-2006, 02:24 PM

Yes, lawyers can get your info fairly easily.

As far as TMs, countries do honor other counties TMs. Yes, action can be initiated. Remember, anyone can sue anyone for anything.... But it seems you registered a foreign movie title, strike one

**domainstrike** · 04-07-2006, 05:10 PM

Heh "strike one" meaning what? I remember some people here saying that book titles, movie titles, etc cannot be trademarked? Plus this is foreign.. still trouble?

**jberryhill** · 04-08-2006, 03:32 PM

Quote:

book titles, movie titles, etc cannot be trademarked?

Yes and no. (Don't you love lawyers)....

A book or movie title per se is not a trademark if it is just a book or movie title. But the term might mean more than that.

For example, take the movie "Star Wars". If it was nothing more than a movie, then it would just be the title of a movie. But "Star Wars" is licensed as a trademark for all sorts of things like action figures, video games, blah, blah, blah. So when you see "Star Wars" on a product, there is an assumption that the product originates with or is authorized by LucasFilm.

A book might be one in a series of books, such that a portion of the title operates as a trademark for the series... "Who's got my domain name? - a Nancy Drew mystery" or something like that.

The point is that the title of a book or movie is not a de facto trademark for that book or that movie, but it might take on attributes of a trademark when applied to posters, soundtrack albums, or other goods.

E.g. - FieldOfDreams.com

UNIVERSAL CITY STUDIOS, INC. V. G.A.B. ENTERPRISES
WIPO Case No. D2000-0416
http://arbiter.wipo.int/domains/deci...2000-0416.html

Complainant has shown that it owns federal registrations for the mark "FIELD OF DREAMS" for use in connection with certain articles of clothing and retail gift store services.

Notice that the trademark claim was NOT based on the fact that "Field of Dreams" was a Universal movie title.

**domainstrike** · 04-08-2006, 05:34 PM

Thanks for the explanation John, don't think it could be any clearer than that. I appreciate it.

-DS

**jberryhill** · 04-08-2006, 05:50 PM

On "private registration", check the terms of the registration contract. ICANN policy allows proxy registration, but ONLY if the identity of the registrant is disclosed in the event of a legal problem. You'll see that written into the private registration agreement, normally.