I own a domain name of a famous latin actor for at least 8 years. No one has even requested it nor even inquired about it. It has been just sitting doing nothing.
I would like to know if I can sell it and not be accused of trademark infringement. I was advised the best way to sell it was to build a small website with the actors photos and biography.
If I am contacted by say, an attorney or the actor (which I know it won't be him), do I have to give it back (they never had it to begin with) or just not use it?....Can I sell it to them? Thank you.
First of all, using a domain name in itself cannot give rise to a traditional infringement claim. That is because "using" a domain name is not a use in commerce that can give rise to consumer confusion. However, the Lanham act was amended in the recent past to include a claim of "cybersquatting." Cybersquatting is the act of registering a domain name that is confusingly similar to another's trademark with the bad faith intent to profit from the trademark holder's goodwill. Additionally, when you registered the domain name, you agreed to arbitration under the Uniform Domain-Name Dispute-Resolution Policy ("UDRP"). So if a trademark holder believes that you have registered a domain name that is confusingly similar to their trademark, they do not need to find you and file in federal court. Instead they can file a UDRP dispute with any of the approved mediation services.
Additionally, you say that the domain name is "of a famous latin actor." I assume that you mean that the domain name is identical to the name of this actor. It is unclear whether this actor has trademark right in his name. Famous people such as Hillary Clinton have successfully established in UDRP mediation that they have common-law rights (i.e. not through a registered trademark) in their name.
Finally, even if you are not using the domain name, any attempt to sell the domain name for an amount in excess of your out-of-pocket costs may constitute bad faith and give rise to cybersquatting or violation of the UDRP. One trick that savvy attorneys use is to contact the holder of the domain name, solicit an offer, and upon receipt of an offer of a large amount, file a UDRP complaint. Therefore, you should be careful to never response to a solicitation for an offer.
If you do indeed want to sell the domain name, you can either sell it for what you paid for it, or contact an attorney if you want more money.
Q: "I would like to know if I can sell it and not be accused of trademark infringement."
R: Not trademark infringement, but very likely accused of cybersquatting. It is, generally, unlawful to register as a domain name the name of a well-known person. You can read the relevant federal law via the link below.
Moreover, if the famous actor is a California resident you could be sued in California under the analogous California anticybersquatting statute -- which is more broad than the federal law and, therefore, is the one used by California victims of personal name cybersquatting. That law is California Business and Professions Code section 17525(a).
The proper legal course is to voluntarily surrender your registration. Only you and your own trademark attorney, however, can decide what you should you after discussing the matter in private.
You are engaging in a form of illegal cybersquatting. Further, you could be violating the right of publicity of the actor insofar as you try to profit commercially by using his name without his consent. Finally, if the name has become a trademark from either use in commerce or registration, your use could violate trademark law. It is irrelevant that no one complained. Your scheme to profit by trying to sell this domain name is illegal---it represents a bad faith attempt to profit by purchasing a domain name with no intent to use it for genuine business purposes. This is a form of extortion that can land you in big trouble. Your best approach would be to surrender the domain name and move on to commercial endeavors that are legitimate.
Generally speaking, anytime someone tries to profit commercially by associating himself with a famous celebrity, company or trademark without a license to do so, this person will violate various statutory and common intellectual property law rights. Our IP laws reward people who do the hard work of developing original inventions or works of science, art, music, film, theater. This actor devoted his career to developing his reputation----he has the right to the fruits of his hard work, and you cannot exploit his work for personal gain, which would be an injustice.
Ooops you just here in public admitted to being a cybersquatter. You have no right squatting on that domain. You are headed for expensive legal trouble. You should disclaim it. If you don't expect to be eventually contacted by an attorney for the actor and given an opportunity to should not refuse.
The true test will be if you accept a good faith offer to relinquish control of the domain name. If you plan to request an unreasonably large sum of money for the domain than it is likely the famous actor, and a powerful legal team, will take legal action to enforce any trademark associated with the actor. Personally, I would not develop the website with photos of the actor as that would more likely cause the actor to take legal action against you, especially if you make profit from the website. Perhaps just approach the management team for the actor and offer to sell the domain to them directly if your goal is to avoid litigation and turn a reasonable profit.
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