Legal Ramifications Of Trademark Use

[nicpal]

I have the domain name of a book, movie and event all which occurred in the 70's and was trademarked in the late 90's. My intent was/is to develop a web site criticizing the event/movie/book. I have been contacted by the guy who trademarked the domain who told me that he is the process of sueing the previous owner who violated the trademark. I informed him that I was a just a fan of the movie and I was to be developing a site for the domain. I asked if this was okay and he agreed as long as I would turn the domain over to his control. I attempted to transfer the domain to his possession and have not heard from him in over a month and the domain is still under my control. The guy is really freaky, and without disclosing his identity was at the center of a huge paranormal contoversy. So I don't know his mental or physical state. I really want to launch this site, but don't know if I can proceed with this.

[jberryhill]

By "event/movie/book" do you mean that these are all related, in the sense that "Woodstock" was a concert/movie/recording? Or was this name used for three totally unrelated things?

"I attempted to transfer the domain to his possession and have not heard from him in over a month"

What have you done to contact him about that?

[Jonathan]

It seems that if your site is about opinion, then you shouldn't have to turn over the domain name.

[nicpal]

Originally Posted by jberryhill

By "event/movie/book" do you mean that these are all related, in the sense that "Woodstock" was a concert/movie/recording? Or was this name used for three totally unrelated things?

Yes all 3 are directly related. Without the event the book and movie could not have been done. The event was not planned, it was occult in nature, hence named by the media and general public.

Originally Posted by jberryhill

"I attempted to transfer the domain to his possession and have not heard from him in over a month"

What have you done to contact him about that?

I have tried to contact him via phone and 2 different email addresses and even through the registrar (GoDaddy) who has record of the transfer attempts. I thought that there was sudden urgency in the domain again, because they have just begun shooting a remake of the film. It appears that this guy is very stringent about the allocation of the rights to the trademark to Hollywood and has filed several lawsuits regarding the rights to use of the events which have "allegedly" occurred to him and his family even before his trademark filing.

However, after my investigation into the alleged events and this person, it is my opinion that he is completely crazy and has fabricated all of these events to gain celebrity and profit. This is the angle I wish to pursue in the web site launch. Can my opinion be censored?

[Banned: legal]

'fan' or 'review' sites are often used in WIPO actions as a 'defense'. So when they try to use 'bad faith' to get the name from you, you can counter with 'fair use' which includes a review or opinion site.

But such use is normally a 'play' on the TM not the TM itself.

You need to get a WIPO experienced lawyer to look it over.

You could have a defensible position if you keep it to a review or opinion site. You also need to be careful of the type of links you have since they often use that a proof of a commercial intent to profit on their TM.

[nicpal]

I haven't been hit with a C & D yet, but I asked the other party why he didn't file a dispute through WIPO on the previous owner, and he stated that it was cheaper for him to file a trademark violation through federal court whatever that means.

So I guess that I can proceed with the site, with no external links to profit from and no charges for admission to the site at all.

[Banned: legal]

Originally Posted by nicpal

I haven't been hit with a C & D yet, but I asked the other party why he didn't file a dispute through WIPO on the previous owner, and he stated that it was cheaper for him to file a trademark violation through federal court whatever that means.

So I guess that I can proceed with the site, with no external links to profit from and no charges for admission to the site at all.

It means he is probably going ProSe with no attorney. It's around 150 or so to start a Fed Filing. Then 50 bucks or so to have you served if you're in the same state.