My first C&D

[beatz]

Hi,

so i received my first C&D email today.
The name in question is a female rap star's name,it's the .net version that i registered a while ago.
So far it's "Under Construction", my intention to register the name was of course to make a nonprofit fanpage about her.
Here is what they wrote:

"Ladies and Gentlemen:

This law firm represents xxxxxxx xxxxx, professionally known as “xxxxx.” As you know, xxxxx is a well-known and successful entertainer and personality, throughout the world, with significant name recognition.

It has come to our attention that you have registered the internet domain name “xxxxx.net” (the “Domain Name”).

Please be advised that your registration and/or use of the Domain Name without our client’s authorization constitutes an infringement of her rights and a violation of various laws, including, without limitation, her rights under applicable laws regarding unfair competition and trademarks.

We hereby demand that you transfer all of your rights in the Domain Name to Ms. xxxxx immediately.
Please contact me at your earliest convenience to discuss this transfer.

This e-mail is written without prejudice to all of our client’s rights and remedies in this matter, all of which are hereby expressly reserved, without limitation.

Sincerely,

xxxx xxx esq.
xxxxxxxxxxx "

Note: Their lawyer belongs to the lawfirm that i know has enforced numerous closings of fan websites on behalf of another Rockstar client of theirs, Prince.

Now my question is:

I thought in terms of freedom of speech etc. the sole registration of a celebs name would *not* violate their TM etc. rights as long as it's nonprofit like as said a fansite which again has been the sole purpose of registering that name?

Or is it me mixing up the WIPO "bad faith" part with federal law ?

Any comments are appreciated.

 

[DNQuest.com]

Intent and actual use are 2 different items. If you actually put up a fanpage and it is operational, that's ok. If you leave it "under construction", this can be viewed as "bad faith" because you registered the name and did nothing with it; therefore, you are looking to sell it. "Why register something and don't use it unless you are looking to sell at a profit" would be the lawyers arguement.

 

[mems]

Hi Beatz,

Check this site out. http://www.chillingeffects.org/
You may find some helpful info here.

MEMS

 

[namedropper]

Originally posted by beatz
I thought in terms of freedom of speech etc. the sole registration of a celebs name would *not* violate their TM etc. rights as long as it's nonprofit like as said a fansite which again has been the sole purpose of registering that name?

Some decisions have gone that way. Many others have not. I would recommend handing the domain over and avoiding celebrity names completely.

 

[timechange.com]

Funny, namedropper. You are siding with the tm owner?
I remember you threw a fit when I said I was looking into protecting my tm.

tsk tsk.

 

[namedropper]

I side with trademark law. If the owner's viewpoint is legally justified, then I support the owner. If the owner's views are a gross misinterpretation of the law (as in your example, trying to shut down anyone using "time change" in its generic sense just because they ranked higher in Google than you), I side against the owner.

I'm sorry you are still so sore about your lack of legal standing that you insist upon bringing it up in other threads.

 

[timechange.com]

Sorry, as far as I know your legal background is non-existant.
And my rights to my tm is none of your business. In fact, if you abuse my tm I reserve the right to defend it vigorously.
Have a nice day.

 

[namedropper]

I'm not going to get into the same stupid argument with you, but you *asked* people if you had a case. You didn't. You got upset at the ten different people who told you this, and now insist upon dragging it back up in an unrelated thread. Grow up.

 

[timechange.com]

Grow up?

How about you GFY?

Clueless twit.

 

[WildCard]

Timechange, regarding your line that 'if you abuse my tm I reserve the right to defend it vigorously.', I believe you have faulty logic there.

I believe it was said by a lawyer in here, that if there is an incident that shows TM infringement and you don't vigorously defend it, that lack of action dilutes your trademark. I wish I knew who said it and show you his post.

-WC-

 

[timechange.com]

WC, what I have done to defend it is not of this forum. I just commented above at the double-faced comments of mr namedropper.

He's advising someone to drop a domain on the pretext of tm infridgment, while himself is UNQUALIFIED to give legal advice. At the same time he is eager to bash tm holders like myself.

Judge for yourself.

As far as the domain that Beatz is asking for advice on:

Beatz, talk to a lawyer in private. I did.

 

[bidawinner]

Congratulations Beatz ! :laugh:

I was under the same impression "mear registration is not bad faith" in fact I have read that in many UDRP decisions..IF that is the case it would appear this attorney must be breaking a law himself..

It would be nice to see a few of the lawyers adivse instead of just us lay peoples opinions..

that aside..

You need to decide for yourself the reason you bought the name and if it's worth the hassle to defend...

 

[DNS Kidd]

Beatz - Unless you anticipate making some $$$ from it soon, then dump it.

Not worth the aggrivation, unless you enjoy and can afford the legal war.

 

[HOWARD]

Good advice from DNS Kidd.

 

[pam]

I registered a 'celebrity' name website a few years back and actually put up a fan website, which is what it was for. He's not well known to most people, only those in bodybuilding.

An attorney representing the company who owns that name contacted me, claimed a trademark on the name, and asked for the domain back.

I agree to do so, and they paid me $500 for the domain name and costs associated with setting it up, bandwidth, etc. I asked for $500 which they felt was reasonable.

I was told by the general manager of the company that in a few months they would lease the site to me so I could put back the fan site. When I emailed a few months later about it, they accused me of 'cybersquatting' and told me to get lost.

I was told later I could have fought it and kept the domain and kept the fan site, but it would not have been worth the aggravation or legal costs.

The site I put up, btw, had no photos, just content, because I did not want to break copyright laws

 

[timechange.com]

If it were about Cory Everson, I'd put pictures

 

[pam]

lol

The funny part is there are tons of sites with this guy's pics, and they go after almost all of them. The manager did tell me that he allows a few sites to get away with it since they link to their website which sells videos, calendars, etc

 

[hiOsilver]

Beatz,

First of all, I am surprised it took you this long to get your 1st C&D. And, I am not an attorney, so I will only tell you my experience, and not give you "legal" advice. One attorney on the thread already suggested you might do well to forfeit the name.

If you have significant time and money invested in the name, then you can let the attorney know that and perhaps they will agree to a reimbursement (like $200 or so). I have had this happen (and I have also had attorneys refuse). Be VERY careful how you handle this, as you don't want to be accused of demanding money.

From your original post, it is hard to know how generic the name might be. For example, I recently picked up Lauri.net. Well, there could be a performer who just goes by that name, but so do a lot of other people have the first name of Lauri. I think you were indicating a single name. It would be helpful if you could post the actual name, or at least give a better idea of what the name is. The more unusual the name, the less chance you have to hold on to it. Look at NetIdentity and their biz model. They own thousands of Name domains (Lauri.com, for example).

One other point: if you set the name up right now on servers and point to Fabulous.com or NameSponsor.com (both advertise on DNF) search engine page, then you will start getting revenue from the name. If you transfer the name to the lawyer or the performer, they may leave the name generating traffic and revenue in your account. I am still getting traffic from wwwcocacola.com, which I quickly gave back to Coke. I regged wwwcocacola.com after someone else let it drop. I actually enjoyed getting that C&D. So, Coke pays the annual reg and I get the traffic.

Take your time, but I don't recommend a prolonged battle under any circumstances. There are too many other better uses of your time and $.

If you are not already signed on with NameSponsor, then please go to my site, http://www.dn4s.com and sign up from there.

 

[DNbuy]

Mediation is always an option. In case like this I have defended the domain owner in a simple yet effective fashion. I will outline the super abbreviated version here:

I contact the legal rep on the TM holders side and explain how expensive and burdensome a lawsuit would be. I then proceed to tell them that I can get the name for them without a fight. Depending on the name, I will explain that I charge the domain holder a certain fee to mediate the dispute. I also explain that it cost the domain holder money to reg and hold the name. I then propose a nominal fee to settle out of court ($500.00 usually works). I facilitate the transfer and collect and forward the payment (minus my fee).

There are obviousl some key ingredients in making this work but I can tell you it has worked on more occasions that it has failed on. If you are interested Frank feel free to give me a ring.

Thank you.

 

[jberryhill]

Folks, Jim Kerr is not an attorney. Your correspondence and discussions with him are not privileged against disclosure nor subject to the attorney-client privilege. He is not qualified to interpret or settle legal claims, and if he were in the United States would be subject to prosecution for the unlicensed practice of law.

What any of his "services" have to do with mediation, is something of a mystery. Under mediation, two sides to a dispute appoint a neutral third party to facilitate settlement discussions. What Jim is doing is some sort of cybersquatting agency representation.

"I have defended the domain owner in a simple yet effective fashion. "

Jim, you have defended nothing, and you are not licensed to defend anyone against any legal claim.

I will say one good thing about Jim Kerr. At least he stopped spamming usenet, and pretending to be one of his own customers, after he got enough complaints.